Style-click.com Inc.

Trademark Trial and Appeal Board

Nov 29, 2000

No. 75459910 (T.T.A.B. Nov. 29, 2000)

Paper No. 10
JQ
THIS OPINION IS CITABLE
AS PRECEDENT OF THE TTAB 11/29/00
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Styleclick.com Inc.
________
Serial No. 75/459,910
_______
George W. Hoover of Blakely, Sokoloff, Taylor & Zafman for
applicant.
Heather D. Thompson, Trademark Examining Attorney, Law
Office 103 (Michael A. Szoke, Managing Attorney).
_______
Before Cissel, Seeherman and Quinn, Administrative
Trademark Judges.
Opinion by Quinn, Administrative Trademark Judge:
An application has been filed by Styleclick.com Inc.
to register the mark E FASHION for, as amended, “computer
software for consumer use in shopping via a global computer
network and computer software for providing fashion, beauty
and shopping advice” (in International Class 9) and
“electronic retailing services via a global computer
network featuring apparel, fashion, accessories, personal
Ser No. 75/459,910
2
care items, jewelry and cosmetics” (in International Class
35).1
The Trademark Examining Attorney has refused
registration under Section 2(e)(1) of the Trademark Act on
the ground that applicant’s mark, if used in connection
with applicant’s goods and/or services, would be merely
descriptive of them.
When the refusal was made final, applicant appealed.
Applicant and the Examining Attorney have filed briefs. An
oral hearing was not requested.
Applicant contends that while its mark “may have a
shade of descriptive meaning,” (brief, p. 4) the mark is,
at worst, only suggestive as applied to the goods and/or
services. In this connection, applicant argues that when
the mark E FASHION is considered as a whole, thought and
deliberation are required to glean its significance in
relation to the goods and services. Applicant specifically
argues as follows:
First of all, one must discern that “E”
connotes “electronic.” Next, one must
ponder the question: What is
“electronic fashion”? One would then
have to deduce that the phrase refers

1 Application Serial No. 75/459,910, filed March 31, 1998, based
on applicant’s assertion of a bona fide intention to use the mark
in commerce. The original application was filed in the name of
MonaCad, Inc. The records of the Assignment Branch of the Office
reflect recordation of applicant’s change of name to
Styleclick.com Inc.
Ser No. 75/459,910
3
to the goods and/or services identified
by Applicant and not to fashions that
are, in some sense, electronic or to
electronics that are fashionable.
(brief, p. 3)
Applicant critiques the Examining Attorney’s NEXIS evidence
by pointing out that there is not a single use of “e-
fashion” or “e fashion”, and that the articles merely
indicate that it is possible to purchase fashion products
on-line. In urging that the refusal be reversed, applicant
relies on several third-party registrations of marks issued
by the Office which, in applicant’s view, are similarly
constructed to applicant’s mark, that is, the letter “E”
followed by a word that is descriptive of the goods and/or
services.2 Lastly, applicant urges that any doubt on the
issue of mere descriptiveness must be resolved in its
favor.

2 Attached to applicant’s June 7, 1999 response are copies of
several third-party registrations retrieved from the database of
the Office. Applicant’s appeal brief shows a list of these
registrations. The list includes, however, additional third-
party registrations and applications, copies of which were not
timely submitted. The Examining Attorney, in her brief, made no
comment whatsoever regarding the third-party registration
evidence and applicant’s argument relating thereto. See:
Trademark Trial and Appeal Board Manual of Procedure (TBMP),
§1207.03.
To the extent that applicant timely submitted copies of third-
party registrations with its June 7, 1999 response, these
registrations are properly of record and have been considered.
The additional listings in applicant’s appeal brief, however,
have not been considered in reaching our decision. In re Duofold
Inc., 184 USPQ 638, 640 (TTAB 1974). Even if the evidence were
considered, the same result would be reached in this appeal
inasmuch as the evidence is merely cumulative in nature.
Ser No. 75/459,910
4
The Examining Attorney maintains that the mark
immediately describes a significant feature of the goods
and/or services, namely “that the applicant intends to
provide fashion information and fashion shopping
electronically via software and retail websites.” (brief,
p. 3) In support of her refusal, the Examining Attorney
submitted dictionary definitions of the prefix “e-” and the
word “fashion.” The Examining Attorney also relied upon
excerpts retrieved from the NEXIS database which show,
according to the Examining Attorney, that online retailing
featuring fashion is thriving and that, therefore,
prospective purchasers would view the term E FASHION as
merely descriptive when encountered in that context. Also
of record are portions of applicant’s Web page which
indicate that applicant provides “online fashion
consultations” and “fashion recommendations.”
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,
characteristic or feature thereof or if it directly conveys
information regarding the nature, function, purpose or use
of the goods and/or services. In re Abcor Development
Corp., 588 F.2d 811, 200 USPQ 215, 217-18 (CCPA 1978). It
Ser No. 75/459,910
5
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 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, the context in which it is being
used on or in connection with those goods and/or services,
and the possible significance that the term would have to
the average purchaser of the goods and/or services because
of the manner of its use. In re Bright-Crest, Ltd., 204
USPQ 591, 593 (TTAB 1979). Accordingly, whether consumers
could guess what the product and/or service is from
consideration of the mark alone is not the test. In re
American Greetings Corp., 226 USPQ 365, 366 (TTAB 1985).
The dictionary evidence shows the prefix “e-” 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 (8th ed. 1998). An online resource shows,
in pertinent part, the letter “e” to be an abbreviation for
the term “electronic.” The Acronym Finder (1999). The
term “fashion” is defined as “the prevailing style (as in
Ser No. 75/459,910
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dress) during a particular time; a garment in such a
style.” WWWebster Dictionary (1998).3
Also of record are several excerpts retrieved from the
NEXIS database which show, not surprisingly, that one can
access the Internet to buy clothing and/or to get
information or advice regarding fashion. While there are
uses of the term “online fashion,” the record does not
include any third-party uses of the term “e-fashion.”
In the present case, it is our view that, when used in
connection with applicant’s “computer software for consumer
use in shopping via a global computer network and computer
software for providing fashion, beauty and shopping advice”
and “electronic retailing services via a global computer
network featuring apparel, fashion, accessories, personal
care items, jewelry and cosmetics,” the term E FASHION
immediately describes, without conjecture or speculation, a
significant characteristic or feature of the goods and/or
services, namely, that they involve retrieving fashion
information and/or shopping for fashions electronically via
software and retail websites on the Internet. To consumers
for applicant’s goods and/or services, there is nothing in

3 This definition, retrieved from an on-line dictionary, was
properly made of record during the prosecution of the
application. Cf.: In re Total Quality Group Inc., 51 USPQ2d
1474, 1476 (TTAB 1999).
Ser No. 75/459,910
7
the term E FASHION which, in the context of such goods
and/or services, would be ambiguous, incongruous or
susceptible to any other plausible meaning.
We have reviewed the numerous third-party
registrations of record which issued on the Principal
Register. The marks which are most analogous to
applicant’s include the following: E-STAMP for “postage
and mailing system computer software”; E-TRAVEL for “travel
information services, namely providing travel information
by means of computer data base”; E-MORTGAGE for
“computerized loan approval services, namely, on-line
financing and mortgage banking services wherein a borrower
submits an application for a mortgage loan via a computer
on-line service or a global computer network”; E-FARES for
“providing computerized travel information, namely, airline
information retrieval services”; and E-INSURE for
“providing insurance information concerning insurance
products and services.”
These registrations offer little help in making a
determination of the merits in this appeal. While uniform
treatment under the Trademark Act is an administrative
goal, our task in this appeal is to determine, based on the
record before us, whether applicant’s mark is merely
descriptive. As often noted by the Board, each case must
Ser No. 75/459,910
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be decided on its own merits. We are not privy to the
records in the files of the cited registrations and,
moreover, the determination of registrability of particular
marks by the Trademark Examining Groups cannot control the
result in another case involving a different mark for
different goods and/or services.
Having said the above, it certainly does appear that
the Office has in the past not always taken the same
position with respect to marks of the nature of applicant’s
as the Examining Attorney urges in the present case.
Office practice has resulted in inconsistent treatment of
“e-” prefix marks which are similar in nature to
applicant’s. In trying to understand this situation, we
would make the point that, with each passing day, the
Internet becomes more pervasive in American daily life.
Many Internet words, such as “e-mail” and “e-commerce,”
have made their way into the general language. See:
Continental Airlines Inc. v. United Air Lines Inc., 53
USPQ2d 1385 (TTAB 1999)[E-TICKET is generic for
computerized reservation and ticketing of transportation
services]; and In re Putnam Publishing Co., 39 USPQ2d 2021
(TTAB 1996)[FOOD & BEVERAGE ONLINE is merely descriptive
when used in connection with a news and information service
updated daily for the food processing industry, contained
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in a database]. We note that most of the third-party
registrations relied upon by applicant were issued in 1997-
1998, with a few issuing in 1999.4 While, by most
standards, one to three years in the past would be viewed
as “recent,” a year or two is an eternity in “Internet
time,” given the rapid advancement of the Internet into
every facet of daily life (most especially, e-mail). Only
“recently,” the Internet meaning of the “e-” prefix may
have been known only by those few who were then accessing
the Internet. We have no doubt that in the year 2000, the
meaning of the “e-” prefix is commonly recognized and
understood by virtually everyone as a designation for the
Internet.5 See: In re Cryomedical Sciences Inc., 32 USPQ2d
1377 (TTAB 1994)[SMARTPROBE is merely descriptive for
cryosurgical probes having electronic or microprocessor
components due to meaning of “smart” as a computer term].

4 We also note that some of the underlying applications were
filed two years or more before the registration date. The lag
time between the initial examination of the application and the
issuance of the registration may have contributed to this
situation.
5 In this connection, we analogize to another situation
influenced by the proliferation of computers. At one time, the
Office accepted “computer programs” as a sufficient
identification of goods in International Class 9. Over time,
however, this identification was rendered indefinite “[d]ue to
the proliferation of computer programs over recent years and the
degree of specialization that these programs have.” Trademark
Manual of Examining Procedure, §804.03(b). Now, any
identification of goods fo computer programs or comparable goods
“must be sufficiently specific to permit determinations with
respect to likelihood of confusion.”
Ser No. 75/459,910
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Cf. In re Packaging Specialists, Inc., 221 USPQ 917 (TTAB
1984)[the entity designation “INC.” in a trademark has no
source indication or distinguishing capacity].
In sum, “e-,” when used as a prefix in the manner of
applicant’s mark, has the generally recognized meaning of
“electronic” in terms of computers and the Internet. When
this non-source-identifying prefix is coupled with the
descriptive word “fashion,” the mark E FASHION, as a whole,
is merely descriptive for applicant’s goods and/or
services. That applicant may be the first or only entity
using E FASHION is not dispositive. See: In re Central
Sprinkler Co., 49 USPQ2d 1194 (TTAB 1998).
The intent of Section 2(e)(1) is to protect the
competitive needs of others, that is, “descriptive words
must be left free for public use.” In re Colonial Stores,
Inc., 394 F.2d 549, 157 USPQ 382, 383 (CCPA 1968). As the
Internet continues to grow, merely descriptive “e-” prefix
terms for Internet-related goods and/or services must be
kept available for competitive use by others.
In view of the above, we conclude that E FASHION, if
used in connection with “computer software for consumer use
in shopping via a global computer network and computer
software for providing fashion, beauty and shopping advice”
and “electronic retailing services via a global computer
Ser No. 75/459,910
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network featuring apparel, fashion, accessories, personal
care items, jewelry and cosmetics,” would be merely
descriptive under Section 2(e)(1) of the Trademark Act.
Decision: The refusal to register is affirmed.
R. F. Cissel
E. J. Seeherman
T. J. Quinn
Administrative Trademark
Judges, Trademark Trial
and Appeal Board
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