Lista Int'l. Corp.

Trademark Trial and Appeal Board

Jan 30, 2003

No. 76108371 (T.T.A.B. Jan. 30, 2003)

Mailed: January 30, 2003
Paper No. 9
PTH
UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Lista International Corporation
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Serial No. 76/108,371
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George W. Neuner and Andrea A. Jacobs of Edwards & Angell,
LLP for Lista International Corporation.
Todd Hardy, Trademark Examining Attorney, Law Office 113
(Odette Bonnet, Managing Attorney).
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Before Simms, Hairston and Chapman, Administrative
Trademark Judges.
Opinion by Hairston, Administrative Trademark Judge:
On August 11, 2000 Lista International Corporation
filed an application to register the mark E-LOCK on the
Principal Register for goods which were identified as
“furniture, drawer and cabinet security systems, and
components.”1 Applicant classified the goods in Classes 6
and 20 and paid the fee for two classes.
1 Serial No. 76/108,371, based on applicant’s allegation that it
has a bona fide intention to use the mark in commerce.
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF
THE TTAB
Ser No. 76/108,371
2
The Trademark Examining Attorney issued a first office
action refusing registration of applicant’s mark on the
ground that the mark, if used in connection with
applicant’s goods, would be merely descriptive of them.
In addition, the Examining Attorney advised applicant that
the identification of goods was unacceptable as indefinite
and overly broad, and required applicant to submit an
acceptable identification of goods.
In response to the refusal, applicant argued that the
mark was not merely descriptive. However, applicant
requested that the application be amended to seek
registration on the Supplemental Register. Further,
applicant proposed to amend the identification of goods as
follows:
“metal locks and keys therefor, for use with
furniture, drawer, and cabinet security systems
in class 6;” and
“furniture, drawer, and cabinet security systems
comprised of self-locking drawers and cabinets,
electronic controllers, programmable hand-held
transmitters and programming key, and components
parts therefor in class 9.”
The Examining Attorney, in the next office action,
maintained the refusal to register under Section 2(e)(1)
and advised applicant that it could not amend the
application to seek registration on the Supplemental
Register in the absence of an amendment to allege use or a
Ser No. 76/108,371
3
statement of use. In addition, with respect to the
identification of goods, the Examining Attorney found the
proposed identification of goods for class 6 to be
acceptable, but held that the proposed identification of
goods for class 9 was not acceptable and covered goods in
classes 9 and 20.
Applicant then filed a notice of appeal.2 Applicant
and the Examining Attorney have filed briefs, but no oral
hearing was requested.3
2 We note that applicant submitted a total amount of $300.00 in
connection with its appeal. Presumably, this amount was to cover
the fees for classes 6, 9, and 20.
3 Applicant, for the first time in its brief, makes reference to
a third-party registration, namely, Registration No. 2,030,580
for the mark E-LOC for “electronic door locks for motor
vehicles.” The Examining Attorney, in his brief, has objected to
applicant’s reference to this registration as untimely. We note
that applicant did not submit a copy of the registration and the
Board does not take judicial notice of registrations residing in
the Patent and Trademark Office. However, even if applicant had
submitted a copy of the registration, it would have been untimely
because Trademark Rule 2.142(d) requires that the record in an
application be complete prior to appeal. Under the
circumstances, the Examining Attorney’s objection is well taken
and we will not consider the registration. We should add that
third-party registrations are of limited value in a case such as
this because each case must be decided on its own merits. See In
re Nett Designs Inc., 236 F.3d 1339, 57 USPQ2d 1564, 1655 (Fed.
Cir. 2001) [“Even if some prior registrations had some
characteristics similar to [applicant’s application], the PTO’s
allowance of such prior registrations does not bind the Board or
this court.”].
Ser No. 76/108,371
4
We turn first to the issue of whether the proposed
class 9 identification of goods set forth below is
acceptable.
“furniture, drawer, and cabinet security systems
comprised of self-locking drawers and cabinets,
electronic controllers, programmable hand-held
transmitters and programming key, and components
parts therefor.”
It is the Examining Attorney’s position that the
identification is overly broad and that:
In particular, the wording identifies goods
classified in both International Class 9 and
International Class 20. Furniture is properly
classified in International Class 20 whereas
electronic locks are properly classified in
International Class 9. As the identification
is currently written, it is not known whether
applicant intends to register the mark for
furniture, electronic security systems or
both.
(Brief, p. 7).
Applicant, in its appeal brief, simply states
“Applicant will agree with the Examining Attorney to a
satisfactory description of the goods.” (Brief, p. 3).
Thus, it appears that applicant does not dispute that the
proposed class 9 identification of goods is unacceptable.
In view thereof, and for the reasons set forth by the
Examining Attorney, we find that the proposed class 9
identification of goods is not sufficiently specific and
the Examining Attorney’s refusal to register the mark in
Ser No. 76/108,371
5
the absence of an acceptable identification of goods is
affirmed.
We turn next to the refusal to register under Section
2(e)(1). The Examining Attorney argues that the term E-
LOCK merely describes the primary feature of applicant’s
goods. According to the Examining Attorney, the letter “e”
is a commonly used abbreviation for the word “electronic,”
and that when joined with the word “lock,” the combined
mark E-LOCK “is merely descriptive of characteristics,
functions and uses of applicant’s locking security systems
in that the goods are electronic locks.” (Brief, p. 4).
In support of the refusal, the Examining Attorney submitted
an excerpt from the on-line version of Merriam-Webster’s
Collegiate Dictionary which shows that “e-” is a prefix for
“electronic” and an excerpt from the on-line Acronym Finder
which includes a listing of “E” as an initial for, inter
alia, “Electronic/Electronics.” Also, the Examining
Attorney submitted several web pages downloaded from the
Internet which refer to “electronic locks.”
Applicant, in urging reversal of the refusal to
register, maintains that the mark E-LOCK does not
immediately describe a characteristic or feature of the
goods and that a multi-stage reasoning process is required
before a purchaser would associate the mark with
Ser No. 76/108,371
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applicant’s furniture, drawer, and cabinet security systems
and components. Applicant points out that the Acronym
Finder web site shows that “E” is an initial for many other
terms. Further, applicant argues that the Examining
Attorney has failed to furnish any evidence that shows that
E-LOCK is in general use. In particular, there is no
dictionary entry for the term E-LOCK and the web pages
submitted by the Examining Attorney do not show use of E-
LOCK, but rather “electronic locks.” Finally, applicant
requests that we resolve any doubt as to whether E-LOCK is
merely descriptive in its favor.
A term is considered to be merely descriptive of goods
within the meaning of Section 2(e)(1) of the Trademark Act
if it immediately describes an ingredient, quality,
characteristic or feature thereof, or if it directly
conveys information regarding the nature, function, purpose
or use of the goods. In re Abcor Development Corp., 588
F.2d 811, 200 USPQ 215 (CCPA 1978). It is not necessary
that a term describe all of the properties or functions of
the goods in order for it to be descriptive thereof;
rather, it is sufficient if the term describes a single
significant attribute or idea about them. In re Venture
Associates, 226 USPQ 285 (TTAB 1985). Moreover, the
question of whether a mark is merely descriptive must be
Ser No. 76/108,371
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determined not in the abstract, that is, not by asking
whether one who sees the mark alone can guess what the
applicant’s goods are, but rather in relation to the goods
for which registration is sought, that is, by asking
whether, when the mark is applied to the goods, it
immediately conveys information about their nature. In re
Bright-Crest, Ltd., 204 USPQ 591 (TTAB 1979).
In this case, applicant’s proposed class 6 and 9
identifications of goods are clearly broad enough to
encompass all types of metal locks including electronic
locks, and furniture, drawer and cabinet security systems,
and components which feature electronic locks. The web
pages submitted by the Examining Attorney show that the
term “electronic lock” is used to describe a lock which is
electronic in nature or has electronic features. Moreover,
the dictionary and Acronym Finder excerpts show that “e-”
is a prefix or initial for “electronic.” That “e-” is also
a prefix or initial for other terms is of no consequence
because, as previously noted, the question of whether a
term is merely descriptive must be determined in relation
to the identified goods. Thus, when “e-” is joined with
the descriptive word “lock” to form E-LOCK, we have no
doubt that the relevant purchasers of the identified goods
would readily understand that they are electronic locks,
Ser No. 76/108,371
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and drawer, and cabinet security systems, and components
which feature electronic locks. Contrary to applicant’s
contention, no amount of imagination, mental processing or
gathering of further information would be necessary in
order for purchasers and prospective customers of the
identified goods to readily perceive the merely descriptive
significance of the term E-LOCK as it pertains to the
goods. Further, as the Examining Attorney has pointed out,
applicant’s proposed class 9 identification of goods
states, in particular, that such goods are comprised of
“. . . electronic controllers, programmable hand-held
transmitters and programming key . . .” (emphasis added).
It would certainly appear from this that such goods will
feature electronic locks.
Finally, it is not dispositive that the term E-LOCK
does not appear in the dictionary, or that applicant may be
the first or only user of the term. See, e.g., In re
National Shooting Sports Foundation, Inc., 219 USPQ 1018
(TTAB 1983).
In sum, we find that E-LOCK is merely descriptive of
applicant’s goods.
Decision: The requirement for an acceptable
identification of goods and the refusal to register in the
absence thereof is affirmed, and the refusal to register
Ser No. 76/108,371
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under Section 2(e)(1) is affirmed as to the proposed
identification of goods in classes 6 and 9.