Oldcastle Glass, Inc.

Trademark Trial and Appeal Board

Apr 29, 2004

No. 76372028 (T.T.A.B. Apr. 29, 2004)

Hearing: File Entry
March 18, 2004 No. 13
Mailed:
April 29, 2004
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Oldcastle Glass, Inc.
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Serial No. 76372028
_______
John F.A. Earley III of Harding, Earley, Follmer & Frailey
for Oldcastle Glass, Inc.
Zhaleh S. Delaney, Trademark Examining Attorney, Law Office
116 (Meryl Hershkowitz, Managing Attorney).
_______
Before Simms, Bottorff and Rogers,
Administrative Trademark Judges.
Opinion by Rogers, Administrative Trademark Judge:
Oldcastle Glass, Inc. has filed an application to
register E•FAB on the Principal Register as a trademark for
goods ultimately identified as “glass, namely, glass
panels; tempered glass panels for building purposes,” in
Class 19. Applicant asserts that it has a bona fide
intention to use the mark in commerce on or in connection
with the identified goods. The examining attorney,
This Opinion is Not
Citable as Precedent
of the TTAB
Ser No. 76372028
2
however, has refused registration under Section 2(e)(1) of
the Lanham Act, on the ground that the designation is
merely descriptive of the identified goods.
When the refusal of registration was made final,
applicant filed this appeal. Both applicant and the
examining attorney have filed briefs. In addition,
applicant, through counsel, and the examining attorney
presented arguments at an oral hearing.
As a preliminary matter, we address the nature of the
mark. Applicant, in its application, responses to office
actions, and its briefing of this appeal, has consistently
presented its mark as E•FAB, i.e., with a bold, raised
period. The office, however, when it processed applicant's
application and input data on the application into office
databases, characterized the mark as E.FAB, i.e., as a mark
in typed rather than stylized form. The examining
attorney, in her office actions, did not attempt to clarify
the issue and has alternately referred to the mark as E.FAB
or E-FAB, apparently accepting the office's initial coding
or characterization of precisely what mark it is that the
application covers. In her brief, she refers to the mark
as "E-FAB in typed form." We note that the Trademark
Manual of Examining Procedure states the following about
marks employing a raised period:
Ser No. 76372028
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The applicant may not use a typed drawing if the
mark contains foreign characters or punctuation
marks other than those listed above. The degree
symbol (o), raised or “rolled” periods,
superscripts, subscripts and exponents are not
permitted in typed drawings. In re AFG Industries
Inc., 17 USPQ2d 1162 (TTAB 1990) (special form
drawing required for raised numeral). Underlining
and bold print are not permitted in a typed
drawing.
A special form drawing is required to show a
raised period. However, if otherwise appropriate,
the mark may be represented by a typed drawing by
substituting a hyphen for the raised period.
TMEP 807.06(a) (3rd ed., rev. 2, May 2003)
Because we are, by this order, reversing the refusal
of registration, the involved application shall go forward
and applicant will receive a notice of allowance. If
applicant later makes use of its mark and files an
allegation of use, it should also clarify the nature of its
mark by either stating that the original drawing was
submitted in special form (albeit no larger than the usual
typed mark) and should be scanned into the Office's
databases, to accurately reflect the nature of the mark, or
by stating that it seeks registration in typed form and
amending the drawing to E-FAB, as permitted by the practice
set forth in the TMEP.1
1 In the text of this decision, we have set forth the mark in
bold with a large, raised period symbol, to indicate our
conclusion that, pending clarification by the applicant, the
application appears to seek registration in stylized form.
Ser No. 76372028
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As for the refusal of registration, the question
whether a term is merely descriptive is determined not in
the abstract, but in relation to the goods or services for
which registration is sought, the context in which it is
being used, or will be used, on or in connection with those
goods or services and the possible significance that the
term would have to the average purchaser or user of the
goods or services. See In re Bright-Crest, Ltd., 204 USPQ
591, 593 (TTAB 1979), and In re Recovery, 196 USPQ 830, 831
(TTAB 1977).
A proposed mark is considered merely descriptive of
goods or services, within the meaning of Section 2(e)(1) of
the Lanham 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 or services. In re
Gyulay, 820 F.2d 1216, 3 USPQ2d 1009 (Fed. Cir. 1987), In
re Abcor Development Corp., 588 F.2d 811, 200 USPQ 215,
217-218 (CCPA 1978). It is not necessary that a term
describe all of the properties or functions of the goods or
services in order for it to be merely descriptive thereof;
rather, it is sufficient if the term describes a
significant attribute or idea about them. In re Venture
Lending Associates, 226 USPQ 285 (TTAB 1985).
Ser No. 76372028
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The examining attorney bears the burden of
establishing a prima facie case in support of a
descriptiveness refusal. See In re Gyulay, supra. The
examining attorney is not required to prove that the public
would actually view a proposed mark as descriptive, but
must at least establish a reasonable predicate for the
refusal, based on substantial evidence, i.e., more than a
scintilla of evidence. In re Pacer Technology, 338 F.3d
1348, 67 USPQ2d 1629 (Fed. Cir. 2003).
The examining attorney relies on the following
materials to carry her burden of proof: a dictionary
definition of "fab" as an "informal" noun, meaning
"Fabrication: building a shed of metal fab"; various on-
line or "hard copy" dictionaries, acronym finders, or
encyclopedias, all to establish that E can mean
"electrical" or "electronic" and that "e-" is a prefix that
"may be attached to anything that has moved from paper to
its electronic alternative"; and various excerpts of
articles retrieved from the NEXIS database to show that "e"
and "e-" when used as a prefix meaning electronic generally
are so used to show that the product or service is
available via the internet.2 The examining attorney also
2 For example, one excerpt, under the headline "To e or not to e;
A certain letter of the alphabet is running e-mok" reads as
Ser No. 76372028
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introduced a list of "search results" or "hits" obtained
when searching the internet, using the Google search
engine, by typing in "fabrication glass 'efab.'" However,
none of the webpages represented by the search results have
been provided and we therefore have little, if any, context
within which to assess the use of EFAB on these websites.
All we can note is that the excerpts appear to use EFAB as
shorthand for "Electrochemical Fabrication."
With her action denying applicant's request for
reconsideration, the examining attorney introduced a
reprint from an on-line "acronym finder" showing that FAB
means "fabrication," and certain reprints of what the
examining attorney states is "evidence from the world wide
web" showing use by entities other than applicant of "efab"
and "electronic fabrication." Office action of July 25,
2003. The reprints of these pages do not, however, reveal
the web addresses where they can be found and the examining
attorney's office action does not report the addresses.
Finally, in her brief, the examining attorney asks that we
take judicial notice of an entry from the "Acronyms,
Initialisms & Abbreviations Dictionary" that FAB can mean
follows: "Unsatisfied with being the most popular letter in the
English language, 'e' has become a real Jabba the Hut of jargon,
coasting its way to the front of the line of Internetspeak just
because it makes a handy abbreviation for 'electronic.'" Star
Tribune (Minneapolis, MN), December 5, 1999.
Ser No. 76372028
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"fabricate" (in addition to "fabrication"). We grant the
request that we take judicial notice of this entry.
Applicant did not offer any exhibits or evidence into
the record.
In her initial office action, the examining attorney
argued that "[a] feature of the applicant's goods appears
to be fabricated glass products made all, or in part, via
electronic means, or electronically fabricated glass
products." Action of May 7, 2002, p. 2. In her second
office action, which made the refusal of registration final
and ripe for appeal, the examining attorney explained that
applicant's products must be viewed as being produced "at
least in part, electronically" because orders are placed by
customers via the internet. As an alternative theory, and
in apparent reliance on the "Google" search that returned a
list of websites discussing "electrochemical fabrication"
of certain products, the examining attorney asserted that
"if the proposed goods are produced or fabricated via
electromechnical [sic] means, the proposed mark is still
merely descriptive." Action of December 11, 2002, p. 2.
Given the introduction by this action of the Google search
results, we presume the examining attorney meant to use the
term "electrochemical," and read the argument as if it used
that term. Finally, in her action denying applicant's
Ser No. 76372028
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request for reconsideration, the examining attorney raised
still a third possible rationale for refusing registration,
asserting that if applicant's goods were "not produced at
least in part, electronically, the proposed mark is
deceptively misdescriptive." Action of July 25, 2003, p.
2.
In its response to the initial office action,
applicant stated that it "tempers and fabricates glass"
used in a wide variety of applications and that its
products "are produced using information (e.g.,
specifications) transmitted over the Internet from
applicant's customers." Response of November 7, 2002, p.
2. In addition, applicant argued that its goods are not
customarily described by its competitors using the term
E•FAB. In its request for reconsideration, applicant argued
that its goods are not made electronically but are made by
passing the goods through heated ovens, and asserted that
its mark does not describe either "how the goods are made"
or "what goods are made."
In briefing the appeal, neither applicant nor the
examining attorney discusses the Google search results
attached to the second office action (i.e., the final
refusal) and the examining attorney's once-stated theory
that EFAB (the term appearing in the list of Google search
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results) means "electrochemical fabrication" and that this
is the meaning that consumers would ascribe to applicant's
mark. The absence of any arguments on this theory signals
that neither applicant nor the examining attorney considers
it an issue on appeal. Even if the examining attorney
expected that it would be preserved for appeal merely
because it was mentioned in one office action, we have
already noted that the Google search results are not
probative evidence because we have not been provided with
reprints of the webpages themselves and we therefore have
no understanding of the context within which EFAB may mean
"electrochemical fabrication." In addition, applicant has
stated that its goods are merely tempered glass heated in
ovens, rather than a product of a more specialized
electrochemical process. Accordingly, we discern no prima
facie case in the record for refusing registration of
applicant's mark on the theory that it stands for
"electrochemical fabrication" and that it is descriptive
because applicant's products are made by such a process.
In addition, neither applicant nor the examining
attorney discussed in the briefs the examining attorney's
alternative theory that unless applicant's goods are
"produced at least in part, electronically, the proposed
mark is deceptively misdescriptive." Accordingly, we do
Ser No. 76372028
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not consider any theory of deceptive misdescriptiveness
before us on appeal.
In essence, the examining attorney's theory of this
case is that E-FAB or EFAB is shorthand for "electronic
fabrication," and that applicant's goods must be viewed as
produced by an electronic fabrication process because
applicant's customers transmit to applicant, via the
internet, specifications for the glass products they seek.
The only alternative theory for the refusal that we believe
has been preserved for consideration on appeal is the
theory that applicant actually uses an "electronic
fabrication" production process of some type.
As for the latter theory, the record does not support
a prima facie case that glass products generally, or
applicant's glass products in particular, are made by an
electronic fabrication process. In this regard, the
examining attorney's Google search results are
inconclusive, for the evidence consists only of a list of
web sites, with a few words from each site appearing in an
excerpt. As we have noted, this evidence is not probative
of how EFAB is used in the websites themselves. Moreover,
as we have also noted, the only two excerpts on the list
that indicate what EFAB stands for do not indicate that it
stands for electronic fabrication but, rather, indicate
Ser No. 76372028
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that it stands for electrochemical fabrication. The only
other evidence tending to draw an association between EFAB
or E-FAB and electronic fabrication are the purported
webpages introduced by the examining attorney with her
order denying applicant's request for reconsideration.
These were not properly introduced because nothing in the
record or the examining attorney's action reveals the
addresses for the webpages. Even if the pages had been
properly introduced, we would not find them probative on
the question whether electronic fabrication is a term
utilized in the industry to describe a process for making
glass products, for the content of these pages focuses on,
respectively, a software product for managing a
manufacturing operation and "electronic fabrication of
micro and nanoscale devices."
We are left, then, to consider what appears to be the
primary theory for the examining attorney's refusal of
registration, i.e., that applicant's "fabricated" products
must be considered to be produced or fabricated
electronically because customers' specifications are
transmitted via the internet. We do not disagree that,
under these circumstances, applicant's products might
reasonably be said to be "electronically ordered fabricated
glass products" or "electronically ordered glass
Ser No. 76372028
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fabrications." However, implicit in the examining
attorney's theory is not only the assumption that
applicant's customers would shorten such phrases to
"electronic fabrication" but also the assumption that they
also would equate E•FAB with that term. See Modern Optics,
Inc. v. Univis Lens Co., 234 F.2d 504, 110 USPQ 293, 295
(CCPA 1956); Racine Industries Inc. v. Bane-Clene Corp., 35
USPQ2d 1832 (TTAB 1995).
We find the examining attorney’s reasoning a bit too
strained. In addition, as the record reveals, FAB can be
taken as shorthand for the laudatory word "fabulous." The
record does not reveal whether applicant's customers would
be more likely to consider FAB to mean "fabrication" or
"fabulous." In sum, we find that the examining attorney
has not presented a prima facie case for refusal and there
is some doubt as to how customers would perceive
applicant's proposed mark.
When there is doubt about whether a term is
descriptive or suggestive when used on or in connection
with an identified product, doubt must be resolved in favor
of the applicant and publication of the designation for
potential opposition. See In re Gourmet Bakers, Inc., 173
USPQ 565 (TTAB 1972). See also, In re Bel Paese Sales Co.,
Ser No. 76372028
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1 USPQ2d 1233 (TTAB 1986). In this case, we resolve such
doubt in favor of applicant.
Decision: The refusal of registration under Section
2(e)(1) of the Lanham Act is reversed.