Rocketship Consulting, LLC

Trademark Trial and Appeal Board

Aug 7, 2012

No. 85024101 (T.T.A.B. Aug. 7, 2012)

THIS OPINION IS NOT A
PRECEDENT OF
THE T.T.A.B.

Mailed: August 7, 2012

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Rocketship Consulting, LLC
________

Serial No. 85024101
_______

Neil M. Batavia of Dorrity & Manning PA for Rocketship
Consulting, LLC.

Michael J. Souders, Trademark Examining Attorney, Law
Office 115 (John Lincoski, Managing Attorney).
_______

Before Seeherman, Cataldo and Wolfson,
Administrative Trademark Judges.

Opinion by Cataldo, Administrative Trademark Judge:

Rocketship Consulting, LLC has applied to register on
the Principal Register the mark ENVOICER in standard
characters for goods identified as “computer software for
facilitation and automation of electronic invoicing” in
International Class 9.1

1 Application Serial No. 85024101 was filed on April 27, 2010,
based on applicant’s assertion of its bona fide intent to use the
mark in commerce on the recited goods.

Ser. No. 85024101
2
The trademark examining attorney has refused
registration under Section 2(e)(1) of the Trademark Act, 15
U.S.C. § 1052(e)(1), on the ground that applicant’s mark is
merely descriptive of a feature or quality of applicant’s
goods.
When the refusal was made final, applicant appealed.
Applicant and the examining attorney filed main briefs on
the issue under appeal.
The issue on appeal in this case is whether
applicant’s mark, ENVOICER, merely describes a function,
feature or characteristic of the goods recited in the
involved application. In support of his refusal to
register, the examining attorney made of record articles
and advertisements retrieved from commercial and
informational Internet web sites in which the term
“invoicer” appears in connection with software used for
electronic invoicing. The following examples are
illustrative (emphasis added):
Stone Hill Invoicer
You didn’t start your business because you love
paperwork. Keep it simple.
Quick and Easy
Just click “New” to get started filling out an
invoice or a quote.
Print, Email, or PDF to get them to your
customers.
Ser. No. 85024101
3
Get stuck? Read the help pages or email tech
support.2

CG Invoicer
Designed for independent business owners, CG
Invoicer helps with your administrative needs so
you can focus on driving the growth of your
business. Anyone in his or her own business can
benefit from this product, from personal trainers
to wedding planners to online auctioneers.
CG Invoicer generates invoices with the click of
a button and keeps them for later reference, so
you will always be on top of your outstanding
invoices. It has reporting features to show all
open invoices or just ones that have been open
thirty days or longer.3

Free Downloads Center
free invoicer at Free Downloads Center
Invoicer Mobile is a program available through a
web browser.
CG Invoicer creates professional invoices quickly
and easily.4

Citrusware invoicer
Invoicer 11.0
Invoicer makes it possible and easy for you to
create and print invoices.5

In addition, the examining attorney made of record the
following example in which an individual or company engaged
in producing invoices is referred to as an “invoicer.”
Emergis Electronic Payment Systems Patent
Narrowly Construed
… One important aspect of the ‘362 Patent is its
requirement that a customer send payment
instructions “directly” to an invoicer. Emergis
had proposed a broad construction of that
requirement, arguing that even systems in which
the invoicer uses a third-party service provider

2 Codehackers.net
3 Versiontracker.com
4 Freedownloadscenter.com
5 Wareseeker.com
Ser. No. 85024101
4
fall within the scope of the claim. In the
Kansas claim, Emergis argued that the “directly”
requirement should be interpreted to mean that
“the customer communicates payment instructions
to the invoicer without reliance upon a third
party acting independently from the invoicer.”
The defendant argued that the “directly”
requirement should be construed to mean that “the
customer communicates payment instructions to the
invoicer without reliance upon or through a third
party service provider.” …6

The examining attorney further made of record the following
dictionary definition of invoice – “request for payment: a
written record of goods or services provided and the amount
charged for them, sent to a customer or employer as a
request for payment;”7 and –er – “somebody or something that
performs or undergoes a particular action; adjuster,
fryer.”8
Applicant, for its part, argues that its ENVOICER mark
suggests, rather than merely describes, its goods or a
feature thereof. In support of its position, applicant
made of record its searches of the Merriam Webster online
dictionary9 and Google® online dictionary showing no
definitions of the term invoicer.10 Applicant further
argues that “even if ‘invoicer’ was a descriptive term,
Appellant’s mark is ENVOICER, which is not a phonetic

6 Dorsey.com
7 Encarta.msn.com.
8 Id.
9 M-w.com.
10 Google.com.
Ser. No. 85024101
5
equivalent of such term.”11
It is well-settled that a term is considered to be
merely descriptive of goods and/or services, within the
meaning of Section 2(e)(1) of the Trademark Act, if it
immediately describes an ingredient, quality, feature or
characteristic thereof or if it directly conveys
information regarding the nature, function, purpose or use
of the goods and/or services. See Section 2(e)(1) of the
Trademark Act, 15 U.S.C. § 1052. See also 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 and/or services 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 and/or services
for which registration is sought. See In re Bright-Crest,
Ltd., 204 USPQ 591 (TTAB 1979). Thus, “[w]hether consumers
could guess what the product is from consideration of the
mark alone is not the test.” In re American Greetings
Corp., 226 USPQ 365 (TTAB 1985).

11 Applicant’s brief, p. 7.

Ser. No. 85024101
6
While there is no evidence that “envoicer” is a word
found in a dictionary, we find on this record that the term
ENVOICER would be immediately understood as a novel
spelling or misspelling of “invoicer” because of the close
resemblance in appearance and near identity in
pronunciation. The mere substitution of the letter “E” for
the letter “I” as the first letter thereof is not a
significant difference. Fleetwood Co. v. Mende, 298 F.2d
797, 132 USPQ 458, 460 (CCPA 1962) (“TINTZ [is] a phonetic
spelling of ‘tints’”). As such, we are not persuaded by
applicant’s argument that ENVOICER is not a novel spelling
or phonetic equivalent of “invoicer.”
It is settled that a slight misspelling does not
convert an otherwise descriptive term into a suggestive
one. In re Quik-Print Copy Shops, 616 F.2d 523, 205 USPQ
505, 507 n.9 (CCPA 1980) (QUIK-PRINT held descriptive;
“There is no legally significant difference here between
‘quik’ and ‘quick’”). Thus, we look to the evidence of
record to determine whether the examining attorney has made
a prima facie case that ENVOICER merely describes a
function, feature or characteristic of applicant’s goods.
In the instant case, the evidence made of record by
the examining attorney supports a finding that, as applied
to applicant’s “computer software for facilitation and
Ser. No. 85024101
7
automation of electronic invoicing,” the term ENVOICER
would immediately describe, without conjecture or
speculation, a significant characteristic or feature of
such goods, namely, that they are “invoicer” software used
to facilitate and automate invoicing. The above-referenced
dictionary definitions establish that “invoicer” merely
describes someone or something that performs the function
of producing a “written record of goods or services
provided and the amount charged for them, sent to a
customer or employer as a request for payment,” i.e., an
invoice. Thus, as defined, ENVOICER merely describes a
central function, feature or characteristic of the recited
goods. Furthermore, the article excerpted above regarding
the Emergis patent suggests that “invoicer” is a recognized
term for a person or thing that creates or produces
invoices.
In addition, the Internet advertisements and articles
submitted by the examining attorney establish that various
entities use the term “Invoicer” or “invoicer” to describe
their software used for invoicing. As such, this evidence
shows both that companies describe their software by using
the term “invoicer” and that consumers may encounter the
term used to describe invoicing software. Material
obtained from the Internet is acceptable in ex parte
Ser. No. 85024101
8
proceedings as evidence of potential public exposure to a
term. See In re Fitch IBCA, Inc., 64 USPQ2d 1058 (TTAB
2002). As discussed above, ENVOICER would be regarded as a
misspelling of “invoicer.” We are not persuaded by
applicant’s argument that prospective consumers would need
to engage in multi-step reasoning in order to understand
that ENVOICER merely describes software that functions as
an “invoicer.” Rather, we find that ENVOICER immediately
describes the invoicing function, feature or characteristic
of applicant’s goods.
Moreover, we are not persuaded by applicant’s argument
that because neither ENVOICER nor “invoicer” has a
recognized, dictionary definition, consumers are unlikely
to view the designation as merely describing such goods.
The above evidence demonstrates that the term “invoicer”
merely describes applicant’s goods, and that consumers
would immediately recognize ENVOICER as a misspelling of
the descriptive term, and also having descriptive
significance. Thus, even if applicant is the first and/or
at present the only user of the term ENVOICER in connection
with its invoicing software, it is well settled that such
use does not entitle applicant to the registration thereof
where, as here, it is a misspelling of a term that has been
shown to immediately convey only a merely descriptive
Ser. No. 85024101
9
significance in the context of applicant’s goods. See,
e.g., In re National Shooting Sports Foundation, Inc., 219
USPQ 1018, 1020 (TTAB 1983); and In re Mark A. Gould, M.D.,
173 USPQ 243, 245 (TTAB 1972). For the same reasons, we
are not persuaded that the absence in the record of
Internet evidence showing descriptive use of ENVOICER
compels a finding that the mark is suggestive of
applicant’s goods. As noted above, applicant is not
entitled to registration of a merely descriptive term
simply by virtue of being the first intended user thereof.
See Id.
Accordingly, we find that applicant’s mark is merely
descriptive as contemplated by Section 2(e)(1) of the Act.
Decision: The refusal to register is affirmed.