Regal Discount Securities, Inc.

Trademark Trial and Appeal Board

Nov 14, 2000

No. 75329304 (T.T.A.B. Nov. 14, 2000)

Hearing: Paper No. 17
May 25, 2000 Bottorff
11/14/00
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Regal Discount Securities, Inc.
________
Serial No. 75/329,304
_______
Richard D. Harris of Dick and Harris for Regal Discount
Securities, Inc.
Ronald E. Aikens, Trademark Examining Attorney, Law Office
103 (Michael Szoke, Managing Attorney)
_______
Before Simms, Cissel and Bottorff, Administrative Trademark
Judges.
Opinion by Bottorff, Administrative Trademark Judge:
Applicant seeks registration on the Principal Register
of the mark E-OPTION, in typed form, for “stock brokerage
services in securities, including the buying and selling of
stocks, options and mutual funds.”1 Registration has been
finally refused on the ground that applicant’s mark is

1 Serial No. 75/329,304, filed July 23, 1997. The application is
based on intent-to-use, under Trademark Act Section 1(b).
THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Ser. No. 75/329,304
2
merely descriptive of the recited services. See Trademark
Act Section 2(e)(1), 15 U.S.C. §1052(e)(1).
Applicant has appealed the final refusal. Applicant
and the Trademark Examining Attorney filed main briefs on
appeal, and applicant filed a reply brief. An oral hearing
was held at which applicant’s counsel and the Trademark
Examining Attorney were present. After careful
consideration of the evidence of record and the arguments
presented by applicant and the Trademark Examining
Attorney, we reverse the refusal to register.
A term is merely descriptive of goods or services,
within the meaning of Trademark Act Section 2(e)(1), if it
forthwith conveys an immediate idea of an ingredient,
quality, characteristic, feature, function, purpose or use
of the goods or services. See, e.g., In re Gyulay, 820
F.2d 1216, 3 USPQ2d 1009 (Fed. Cir. 1987), and In re Abcor
Development Corp., 588 F.2d 811, 200 USPQ 215, 217-18 (CCPA
1978). A term need not immediately convey an idea of each
and every specific feature of the applicant's goods or
services in order to be considered merely descriptive; it
is enough that the term describes one significant
attribute, function or property of the goods or services.
In re H.U.D.D.L.E., 216 USPQ 358 (TTAB 1982); In re
MBAssociates, 180 USPQ 338 (TTAB 1973). Whether a term is
Ser. No. 75/329,304
3
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 on or in
connection with those goods or services, and the possible
significance that the term would have to the average
purchaser of the goods or services because of the manner of
its use. In re Bright-Crest, Ltd., 204 USPQ 591, 593 (TTAB
1979).
The Trademark Examining Attorney has presented
evidence showing that the prefix “E-” is commonly
understood to be an abbreviated form of the prefix
“Electronic-.” “When you see a technological term that
starts with the letter ‘e’ and a hyphen, it most likely is
an e-commerce-driven term. And nine times out of ten, the
‘e’ means electronic.” (USA Today, July 8, 1998.) “[T]he
‘e-dash’ prefix may be attached to anything that has moved
from paper to its electronic alternative, such as e-mail,
e-cash, etc.” (Freedman, Alan, The Computer Glossary, 131
(8th ed. 1998).) Applicant indeed has acknowledged that the
“E-” in its mark is intended to suggest “electronic,” and
that E-OPTION “suggests an ‘E-Commerce’ mark.”
(Applicant’s Brief at 6.)
The evidence of record also establishes that an
“option” is “a security that represents the right to buy or
Ser. No. 75/329,304
4
sell a specified amount of an underlying security stock,
bond, futures contract, etc. at a specified price with a
specified time.”2 We likewise take judicial notice that
“option” is defined as “a contract that provides the right,
but not the obligation, to buy or sell a specific amount of
a specific security within a predetermined time period.”
R.J. Shook, Wall Street Dictionary 314 (The Career Press
1999). Applicant does not dispute that the “options” to
which its recitation of services refers are financial
instruments of the type identified in the foregoing
definitions. Applicant also has acknowledged that its
recited brokerage services will include the buying and
selling of options by electronic means, i.e., the
electronic trading of options.
Based on these facts, the Trademark Examining Attorney
argues that
the average user who seeks to purchase stock
options via a global communication information
network or some other electronic means and
encounters the mark “E-OPTION” in the
marketplace, would perceive the applicant’s
mark as the apt descriptive name of the service
of providing options electronically. That is,
the mark ‘E-OPTION’ used in relation to the
buying and selling of stock options would
immediately convey to the purchaser the

2 Invest-O-Rama [online] Glossary, printout attached to the
Trademark Examining Attorney’s June 7, 1999 office action denying
applicant’s request for reconsideration.
Ser. No. 75/329,304
5
information that applicant sells or buys
options via electronic means.
(Brief, at 6.)3
Applicant, in turn, argues that E-OPTION is not merely
descriptive of the recited services. Applicant notes that
there is no evidence in the record that the term E-OPTION
has been used by others, descriptively or otherwise, and
that the Office in the past has registered numerous “E-”
prefix marks on the Principal Register, presumably because
such marks were deemed to be inherently distinctive.
Applicant contends that the “E-” prefix in its mark does
not immediately inform purchasers that applicant’s
brokerage services may be rendered electronically, because
“E-” could be viewed as an abbreviation for a multitude of
words other than “electronic.”
Applicant also argues that its mark is not merely
descriptive because the presence of the word “option” in
the mark creates a double entendre, as applied to
applicant’s services. Applicant contends that, in its E-
OPTION mark, the word “option” might refer to the financial

3 Although the Trademark Examining Attorney, in the quoted
excerpt from his brief, asserts that E-OPTION is the “apt
descriptive name” for applicant’s services, we note that the
issue raised by the Trademark Examining Attorney’s refusal in
this case is whether applicant’s mark is “merely descriptive” of
the recited services.
Ser. No. 75/329,304
6
securities known as “options,” but it also refers to the
fact that applicant offers its customers the “option” of
utilizing applicant’s brokerage services either by
conventional means, i.e., by in-person visits or by
telephone, or by electronic means, i.e., via the Internet
or other online method. That is, the mark conveys the
double meaning that applicant’s customers who wish to trade
in “options” (or other types of financial instruments) have
the “option” of trading conventionally or electronically.
We agree with the Trademark Examining Attorney’s
contention that applicant’s mark E-OPTION immediately
informs customers that applicant’s services are offered or
rendered electronically (the prefix “E-”) and that they
involve the trading of financial securities known as
options (the word OPTION). To this extent, and to the
extent that applicant’s services involve electronic option
trading, E-OPTION has a merely descriptive significance.
Applicant’s arguments to the contrary are not persuasive.
However, we also agree with applicant’s contention
that E-OPTION has an additional meaning which is not merely
descriptive of applicant’s services. The word “option,” in
addition to the specific meaning it has in connection with
applicant’s services (as the name of a species of financial
security in which applicant deals), also has a more
Ser. No. 75/329,304
7
generalized meaning which suggests the concept of “choice.”
Likewise, E-OPTION suggests that applicant’s customers are
free to choose to trade by conventional means (by telephone
or in-person contacts) or to trade by electronic means.
Significantly, we note that applicant’s customer need not
even be trading in options to exercise his or her E-OPTION,
or electronic option; the customer who trades only in
stocks, mutual funds or other types of securities is free
to exercise his or her “electronic option” when utilizing
applicant’s services.
In connection with applicant’s services, this second
meaning of E-OPTION would be understood by customers, but
only after they had undertaken a multi-stage reasoning
process. That is, the purchaser must recognize that
“option” has a general meaning (“choice”) in addition to
its specific meaning in the financial securities field,
that applicant renders its services via both electronic and
conventional means, and that the customer has the option of
choosing either of those means in his or her dealings with
applicant. The necessity of this multi-stage reasoning
process makes applicant’s mark suggestive rather than
merely descriptive.
In summary, we find that applicant’s mark E-OPTION,
when viewed in connection with applicant’s services, has
Ser. No. 75/329,304
8
two meanings, one of which is suggestive rather than merely
descriptive of applicant’s services. In view thereof, we
find that the mark is not merely descriptive of the
services. See Henry Siegel Co. v. M&R International Mfg.
Co., 4 USPQ2d 1154 (TTAB 1987); In re Computer Business
Systems Group, 229 USPQ 859 (TTAB 1985); and No Nonsense
Fashions, Inc. v. Consolidated Foods Corp., 226 USPQ 502
(TTAB 1985). Any doubt as to this conclusion must be
resolved in applicant’s favor. In re Atavio, 25 USPQ2d
1363 (TTAB 1992).
Decision: The refusal to register is reversed.
R. L. Simms
R. F. Cissel
C. M. Bottorff
Administrative Trademark Judges
Trademark Trial and Appeal Board