Nevin Wayne Fouts

Trademark Trial and Appeal Board

Mar 13, 2002

No. 75559420 (T.T.A.B. Mar. 13, 2002)

3/13/02

Paper No. 16
TJQ

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Nevin Wayne Fouts
________

Serial Nos. 75/559,419 and 75/559,420
_______

Steven John Hultquist and Marianne Fuierer of Intellectual
Property/Technology Law for applicant.

John C. Tingley, Trademark Examining Attorney, Law Office
106 (Mary I. Sparrow, Managing Attorney).
_______

Before Cissel, Quinn and Chapman, Administrative Trademark
Judges.

Opinion by Quinn, Administrative Trademark Judge:

Applications have been filed by Nevin Wayne Fouts to
register the marks E-NOTE and ENOTE for “portable wireless
modem-equipped digital processing and display apparatus
linkable to a local area network, and corresponding local
area network equipment, namely such portable apparatus.”1

1 Application Serial Nos. 75/559,419 and 75/559,420,
respectively, filed September 24, 1998, each based on an
allegation of a bona fide intention to use the mark in commerce.
In a response filed October 4, 1999 in connection with
application Serial No. 75/559,419, applicant amended the
identification of goods to that shown above. In a response filed
THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Ser Nos. 75/559,419 and 75/559,420
2
The Trademark Examining Attorney has refused
registration under Section 2(e)(1) of the Trademark Act on
the ground that applicant’s mark, if applied to applicant’s
goods, would be merely descriptive thereof.
When the refusal was made final, applicant appealed.
Applicant and the Examining Attorney have filed briefs. An
oral hearing was not requested. Because of the essentially
identical issues involved in these appeals, the Board shall
decide them in one opinion.
Applicant argues, in urging that the refusals be
reversed, that the Examining Attorney has improperly
dissected the marks into their component parts.2 Applicant

October 27, 1999 in connection with the other application, Serial
No. 75/559,420, applicant amended the identification to read
“portable wireless modem-equipped digital processing and display
apparatus linkable to a local area network.” Although the
terminology “and corresponding local area network equipment,
namely such portable apparatus” was not included in the amendment
filed in application Serial No. 75/559,420, both applicant and
the Examining Attorney have treated the identification of goods
as if such terminology were included. In fact, the Examining
Attorney, in his brief at page 1, footnote 1, made the
observation that the co-pending applications involved identical
identifications of goods. Given that applicant agrees, we assume
that the omission in application Serial No. 75/559,420 was an
oversight. In deciding the present appeal, we have considered
mere descriptiveness based on the identification set forth in the
first paragraph of this decision.
2 During prosecution, applicant submitted a voluntary disclaimer
of the letter “E” apart from its marks. See: TMEP § 1213.01(c).
Given that the involved marks are compound terms and, thus, are
considered unitary, Office policy would not require a disclaimer.
TMEP § 1213.04. Although TMEP § 1213.01(c) indicates that in
such a situation the Examining Attorney should offer the
applicant the opportunity to withdraw the disclaimer, the
Examining Attorney merely noted but did not enter the disclaimer.
Ser Nos. 75/559,419 and 75/559,420
3
also contends that there are a multiplicity of possible
meanings of the letter “e” and the term “note,” such that
the combined terms are not merely descriptive.3 Applicant
states that imagination is needed to perceive the merely
descriptive significance of the marks, and that there is no
need for competitors to use E-NOTE or ENOTE in connection
with their goods. Applicant has furnished a copy of its
provisional patent application covering the goods
identified herein, and excerpts of web pages retrieved from
the Internet.
The Examining Attorney maintains that the letter “e”
is a commonly understood abbreviation of the word
“electronic,” and that, when combined with the term “note,”
the marks sought to be registered are merely descriptive of
applicant’s goods. The Examining Attorney points out that
applicant’s contentions would suggest that mere
descriptiveness is determined in a vacuum, whereas the
proper test involves a consideration of the marks as
applied to the goods. In this connection, the Examining
Attorney asserts that the marks are merely descriptive of
applicant’s goods, namely that “the apparatus can take

3 Applicant did not submit the dictionary pages in support of the
definitions set forth in its brief. Nonetheless, such evidence
is proper subject matter for judicial notice and, accordingly, we
have considered the dictionary definitions in reaching our
decision.
Ser Nos. 75/559,419 and 75/559,420
4
notes on a pad of paper, which inputs the notes into its
memory and that the ‘note’ can also be transmitted via a
wireless modem.” (brief, p. 4). The Examining Attorney
has submitted dictionary definitions of the prefix “e-” and
the word “note.”4
It is well settled that 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, 217-18 (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
considered to be merely descriptive thereof; rather, it is
sufficient if the term describes a significant attribute or
feature about them. Moreover, whether a term is merely
descriptive is determined not in the abstract but in
relation to the goods for which registration is sought. In
re Bright-Crest, Ltd., 204 USPQ 591, 593 (TTAB 1979).
In order to better understand the nature of
applicant’s goods, we refer to the provisional patent

4 The Board takes judicial notice of the dictionary definition of
“note” which accompanied the Examining Attorney’s brief.
Ser Nos. 75/559,419 and 75/559,420
5
application covering the goods which indicates that the
“present invention relates to a unitary, hand-held
information accessory, wirelessly linkable to a digital
information network” and that the “invention also relates
to a network system comprising at least one such
information accessory, and preferably a plurality of such
information accessories, wirelessly linked for
communication with the network and to one another.” The
patent application recognizes that computer and information
communication systems have proliferated in educational
environments and that the advances in technology “point up
the need for an information appliance having utility in
educational and academic applications, that will
effectively provide the computational abilities of a
personal computer or personal digital assistant, in
integration with means for note taking and assimilation of
presentational material from lectures, reading, seminars,
workshops, laboratory work, etc.” The patent application
goes on, in pertinent part, as follows:
The network system of the present
invention has particular utility in
educational usage. In the educational
setting, the information accessory
device network system can be used for
distributing notes, lectures, outlines,
sharing notes between students, taking
tests and electronically grading tests,
and conducting competitive activities
Ser Nos. 75/559,419 and 75/559,420
6
as described hereinafter. Such network
system can also improve classroom
interaction by enabling instructors to
view the notes taken and problems being
solved by students...

*****

[T]here may be provided a pen-based
input element operationally coupled
with the CPU or the computational
module of the device. Such pen may for
example be configured to enable the
user to take notes on the pad of paper
retained on one of the half-sections of
the device, while simultaneously
inputting those notes into the memory
of the information accessory device.
The notes may for example be further
concurrently transmitted via wireless
modem to a storage component, database,
server, etc., of the local network.

The prefix “e-” is defined as follows: “(Electronic-)
The ‘e-dash’ prefix may be attached to anything that has
moved from paper to its electronic alternative, such as e-
mail, e-cash, etc.” The Computer Glossary (9th ed. 1999).
Another definition of “e-” submitted by the Examining
Attorney shows the following: “combining form, e-, for
electronic, has been used to form words relating to the
publication or exchange of information in an electronic
format.” The Oxford Dictionary of New Words (1997). The
word “note” is defined, in pertinent part, as “memorandum;
a condensed or informal record; a brief comment or
explanation.” Merriam Webster’s Collegiate Dictionary.
Ser Nos. 75/559,419 and 75/559,420
7
Applicant’s patent application along with the
dictionary definitions of the individual components clearly
indicate that, if applied to applicant’s goods, the terms
E-NOTE and ENOTE would immediately describe, without
conjecture or speculation, a significant feature or
function of applicant’s goods, namely that the goods enable
the user to exchange or share notes (as, for example, a
student’s notes from a lecture) by electronic means.
Essentially the paper notes become “e-notes.” As explained
in the patent application, a pen-based input element may be
used to take notes which are simultaneously inputted into
memory, and the notes can then be transmitted via a
wireless modem. Nothing requires the exercise of
imagination, cogitation, mental processing or gathering of
further information in order for purchasers and prospective
purchasers for applicant’s goods to readily perceive the
merely descriptive significance of the terms E-NOTE and
ENOTE as they pertain to applicant’s goods.
To the extent that applicant points to other meanings
of “e” and “note,” it should be remembered that such
meanings are not relevant as we must consider the mark in
relation to the goods. When the compound term is
considered as applied to applicant’s specific goods, which
involve the electronic transmission of notes, the term is
Ser Nos. 75/559,419 and 75/559,420
8
merely descriptive. In re Styleclick.com Inc., 57 USPQ2d
1445 (TTAB 2000). Further, the fact that others have not
used the term in a descriptive manner is not persuasive of
a different result. In re National Shooting Sports
Foundation, Inc., 219 USPQ 1018 (TTAB 1983).
Decision: The refusal to register is affirmed in each
application.