SMTP, Inc.

Trademark Trial and Appeal Board

Jun 14, 2013

No. 85476538 (T.T.A.B. Jun. 14, 2013)

Mailed: 6/14/2013

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re SMTP, Inc.
________

Serial No. 85476538
_______

Matthew H. Swyers of The Trademark Company for SMTP, Inc.

Marilyn D. Izzi, Trademark Examining Attorney, Law Office 112
(Angela Bishop Wilson, Managing Attorney).
_______

Before Quinn, Holtzman and Wellington,
Administrative Trademark Judges.

Opinion by Quinn, Administrative Trademark Judge:
SMTP, Inc. filed, on November 18, 2011, an application
under Section 1(a) of the Trademark Act, 15 U.S.C. § 1051(a), to
register the mark SMTP (in standard characters) for “providing
e-mail services, namely, providing cloud-based management
services for e-mail deliverability and reputation management
including bulk and transactional sending, compliance auditing,
abuse processing and diagnostics” in International Class 38.
Applicant claims first use anywhere and first use in commerce of
the applied-for mark in January 2002.
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Ser. No. 85476538

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The trademark examining attorney refused registration under
Section 2(e)(1) of the Trademark Act, 15 U.S.C. § 1052(e)(1), on
the ground that applicant’s proposed mark, when used in
connection with applicant’s services, is merely descriptive
thereof.
When the refusal was made final, applicant appealed.
Applicant and the examining attorney filed briefs.
The examining attorney maintains that “SMTP” is an
abbreviation for and substantially synonymous with the merely
descriptive term “Simple Mail Transport Protocol.” Thus, the
examining attorney concludes, the abbreviation is merely
descriptive of the protocol used by applicant in rendering its
email services. In support of the refusal the examining
attorney introduced dictionary entries, excerpts of applicant’s
website and of third-party websites, and excerpts of articles
retrieved from the NEXIS/LEXIS database.
Applicant argues that its mark is just suggestive.
Consumers would require a degree of imagination, applicant
contends, to draw a connection between the letters “SMTP” and
applicant’s services because there is no immediate meaning of
“SMTP,” given that the abbreviation stands for a number of
different terms. In urging that the refusal be reversed,
applicant relies upon dictionary entries, and third-party
registrations of purportedly “suggestive” marks, while applicant
Ser. No. 85476538

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also refers to prior Board decisions finding certain marks to be
suggestive.
As a general rule, an abbreviation, initialism or acronym
cannot be considered merely descriptive unless the wording it
stands for is merely descriptive of the goods or services, and
the abbreviation, initialism or acronym is readily understood by
relevant purchasers to be "substantially synonymous" with the
merely descriptive wording it represents. See Modern Optics
Inc. v. The Univis Lens Co., 234 F.2d 504, 506, 110 USPQ 293,
295 (CCPA 1956); Baroness Small Estates, Inc. v. Am. Wine Trade,
Inc., 104 USPQ2d 1224, 1230-31 (TTAB 2012) (holding CMS not
substantially synonymous with the grape varietals cabernet,
merlot, and syrah and therefore not merely descriptive for
wine); and In re Thomas Nelson, Inc., 97 USPQ2d 1712, 1715 (TTAB
2011) (holding NKJV substantially synonymous with merely
descriptive term “New King James Version” and thus merely
descriptive of bibles). A mark consisting of an abbreviation,
initialism, or acronym will be considered substantially
synonymous with descriptive wording if: (1) the applied-for mark
is an abbreviation, initialism, or acronym for specific wording;
(2) the specific wording is merely descriptive of applicant’s
goods and/or services; and (3) a relevant consumer viewing the
abbreviation, initialism, or acronym in connection with
applicant’s goods and/or services will recognize it as an
Ser. No. 85476538

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abbreviation, initialism, or acronym of the merely descriptive
wording that it represents. See In re Thomas Nelson, Inc., 97
USPQ2d at 1715-16 (citing In re Harco Corp., 220 USPQ 1075, 1076
(TTAB 1984)). See also In re BetaBatt Inc., 89 USPQ2d 1152
(TTAB 2008) (DEC found to be routinely used as an abbreviation
for “direct energy conversion”); Capital Project Mgmt. Inc. v.
IMDISI Inc., 70 USPQ2d 1172 (TTAB 2003) (TIA found to be
substantially synonymous with “time impact analysis”); and In re
The Yacht Exch., Inc., 214 USPQ 406 (TTAB 1982) (MLS held
descriptive for multiple listing services for yachts and boats).
The entry “Simple Mail Transport Protocol (SMTP)” is
defined in Hargrave’s Communications Dictionary (accessed at
www.credoreference.com) as follows:
A Transmission Control Protocol/Internet
Protocol (TCP/IP) standard protocol that
specifies how two systems are to interact
and the format of messages used to control
the transfer of electronic mail on the
Internet. It has become a de facto standard
e-mail transfer protocol. SMTP is defined
by the Internet standard STD10 and Request
for Comment RFC821. Eudora, for example,
uses SMTP to send e-mail. SMTP describes
messages as a rather limiting plain ASCII
text message.

Reference to applicant’s website reveals that applicant’s
email services feature a “dedicated SMTP server.” Applicant
further states on its website:
SMTP.com is an independent service provider
exclusively focused upon the execution of
Ser. No. 85476538

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email delivery for applications in marketing
and enterprise web applications requiring
bulk email or high volume transactional
email delivery...As our name implies, we
provide SMTP server relay services to send
your mail from your application server,
through the web network of ISPs to your
recipient’s inbox. (emphasis added).

The examining attorney also introduced excerpts of third-
party websites showing use of “SMTP” in a highly descriptive or
generic manner. These uses include the following examples:
Free SMTP Server
Free SMTP Server supports all email programs
The program is freeware.
Free SMTP Server is useful for laptop PC
users.
Free SMTP Server is a SMTP server program
for Windows that lets you send email
messages directly from your computer. It’s
very simple but very useful for laptop users
traveling around the world and connecting
their PCs to different Internet Service
Providers in different countries. You can
use it instead of ISP’s SMTP server to
increase your security and privacy. Free
SMTP Server supports all email programs like
Outlook Express and Eudora....The email
program you already use for sending and
receiving messages can be connected to the
server in a very easy way by using the word
“localhost” instead of your current SMTP
host. Having done so, you can send messages
in a usual manner. Free SMTP Server is very
fast, while sending, it establishes dozens
of SMTP connections, and gets the most out
of your Internet connection.
(softstack.com)

List of the Top 5 Best Free POP3 & SMTP
Email providers.
We list the few remaining email providers
that offer at least a basic FREE POP/SMTP
account.
Ser. No. 85476538

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GMail offers POP/SMTP/IMAP access to its
email and is extremely fast and reliable.
(iopus.com)

Email SMTP Education and Training
Learn how to follow email SMTP protocol

Simple Mail Transfer Protocol, or SMTP, is
the network used to send email over the
Internet. SMTP is the email’s first stop
when you send it out. As a business owner,
you need to know about SMTP email services
when setting up email software on business
computers.
There are many different aspects of Simple
Mail Transfer Protocol you’ll need to know
when working with email SMTP providers.
Therefore, you’ll want some basic email SMTP
education and training to get started.
Consider three options:
1. Find out how to configure your email to
support SMTP and POP email (Post Office
Protocol).
2. Find out who the email SMTP providers are.
3. Find out where to find SMTP email
solutions.
*****
Tips and Advice to help you make your
decision on Email SMTP.

SMTP or Simple Mail Transfer Protocol is the
Internet standard for electronic mail (e-
mail) transmission across Internet Protocol
(IP) networks. It comes into play when a
person sends an email only. Receipt of
emails is handled by another protocol. It
works at the user level for client mail
applications typically. These situations
only use SMTP for sending messages to a mail
server for relaying to the recipient.
Email SMTP is what most people use when
sending emails from home.

Once you use a SMTP email provider, you’ll
want to know how to fix problems that can
come up. Like any Internet or email
provider, SMTP can experience problems that
Ser. No. 85476538

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you’ll need to troubleshoot, identify and
fix.
(business.com)

The examining attorney made of record numerous articles
retrieved from printed publications dating back to 2004. In
each, the letters “SMTP” are used as an abbreviation for “Simple
Mail Transfer Protocol” to describe a significant feature of
email services. The following examples are representative of
this evidence:
Synology, in particular, stands out in that
it includes an optional web server and MySQL
database in its Diskstation software and, in
the latest release, a simple SMTP mail
server.
(Personal Computer World, May 14, 2009)

Developed in Sweden, hMailServer is a
totally free, open-source, SMTP (Simple Mail
Transfer Protocol) mail server for Windows
that can be obtained from
www.hmailserver.com.
(Personal Computer World, February 19, 2009)

You’ll also need to make some changes on
your router to allow SMTP traffic through.
(Personal Computer World, November 27, 2008)

Now FARA can make DNS changes to redirect
SMTP-type traffic to the second server.
(Computer World, March 31, 2008)

Based on the above, we find that there is substantial
evidence to establish that the designation SMTP is, at the very
least, merely descriptive when used in connection with email
services of the type identified in applicant’s application.
More specifically, the evidence shows that the letters “SMTP”
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comprise a shortened form of the terminology “Simple Mail
Transfer Protocol.” Further, the terminology “Simple Mail
Transfer Protocol” is merely descriptive of a significant
feature or characteristic of applicant’s email services, namely
that the email services are provided via simple mail transfer
protocol. Because of the common use and well recognized meaning
of “SMTP”, as the examining attorney demonstrated, consumers
will immediately view the letters “SMTP” for applicant’s
services as the equivalent of the terminology “Simple Mail
Transfer Protocol.” That is to say, no imagination is required
by a prospective purchaser or user to discern that applicant’s
email services utilize SMTP or Simple Mail Transfer Protocol.
Applicant makes reference to alternative meanings of SMTP,
including “Strategic Medium Term Plan,” “Shift Manager Training
Program,” “Source-Model Technique Package,” and “Speculative
Multithreaded Processor.” These meanings are irrelevant in this
case inasmuch as the determination of whether a mark is merely
descriptive must be made in relation to the services for which
registration is sought, not in the abstract. In re Chamber of
Commerce of the U.S., 675 F.3d 1297, 102 USPQ2d 1217, 1219 (Fed.
Cir. 2012); and In re Bayer Aktiengesellschaft, 488 F.3d 960, 82
USPQ2d 1828, 1831 (Fed. Cir. 2007). The fact that a term may
have different a different meaning in a different context is not
controlling. In re RiseSmart Inc., 104 USPQ2d 1931, 1933 (TTAB
Ser. No. 85476538

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2012). The meanings pointed to by applicant appear to have no
connection to email services of the type identified in the
application and, moreover, applicant failed to suggest any
connection.
Applicant’s citation to prior Board decisions wherein
certain third-party marks were found to be only suggestive, not
merely descriptive, is of little relevance. Likewise, the
third-party registrations of “suggestive” marks relied upon by
applicant is entitled to limited probative weight. See In re
Nett Designs Inc., 236 F.3d 1339, 57 USPQ2d 1564, 1566 (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.”). For the same reason, the examining attorney’s
reliance on a third-party registration showing a disclaimer of
“CLOUDSMTP” is of little probative value.
We conclude that the mark sought to be registered, when
used in connection with applicant’s services, is merely
descriptive thereof.
Decision: The refusal to register is affirmed.