The Iconic Deo Volente Corporation

Trademark Trial and Appeal Board

Jun 21, 2019

87528729 (T.T.A.B. Jun. 21, 2019)

This Opinion is Not a
Precedent of the TTAB

Mailed: June 21, 2019

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re The Iconic Deo Volente Corporation
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Serial No. 87528729
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Darren Heitner of Heitner Legal PLLC,
for The Iconic Deo Volente Corporation.
David C. Mayer, Trademark Examining Attorney, Law Office 121,
Richard F. White, Acting Managing Attorney.
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Before Taylor, Hightower and Hudis,
Administrative Trademark Judges.

Opinion by Taylor, Administrative Trademark Judge:
The Iconic Deo Volente Corporation (“Applicant”) seeks registration on the
Principal Register of the term I COINS (in standard characters, COINS disclaimed)
as a mark for the following services, as amended during prosecution:
financial services, namely, providing a virtual currency
with no real-world value for use by members of an on-line
community for purpose of participating in peer to peer
sports challenges, online games, skill games, and/or other
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gaming activities via a global computer network in
International Class 36.1
The Trademark Examining Attorney refused registration of Applicant’s applied-
for mark under Trademark Act Section 2(e)(1), 15 U.S.C. § 1051(e)(1), because it
merely describes a feature and characteristic of Applicant’s services.2
After the Trademark Examining Attorney made the refusal final, Applicant
appealed to the Board. Both Applicant and the Examining Attorney filed briefs.3 We
affirm the refusal to register.
I. Issues Presented
Before proceeding to the merits of the appeal, we clarify the ground of refusal.
From a reading of Applicant’s brief, it is apparent that Applicant is under the
mistaken belief its applied-for I COINS mark has been refused registration on the
grounds that it is generic for the identified services. Applicant reiterates in its brief
that “[i]n its reply to the Office Actions … Applicant conceded to the Examining

1 Application Serial No. 87528729 was filed on July 14, 2017, based upon Applicant’s
allegation of a bona fide intention to use the mark in commerce under Section 1(b) of the
Trademark Act, 15 U.S.C. § 1051(b).

2 The Examining Attorney also refused registration under Section 2(d) of the Trademark Act,
15 U.S.C. § 1052(d), on the ground of likelihood of confusion with the marks in Registration
Nos. 3897766 and 5001633. The Examining Attorney withdrew the refusal as to the mark in
Registration No. 3897766 (May 15, 2018 Final Office Action) and, because Registration
No. 5001633 was cancelled on February 6, 2019 after entry of default judgment in a
cancellation proceeding with Applicant, the refusal of registration on that basis is moot.
3 We note that the Examining Attorney submitted its brief in single-spaced format. While we
have exercised our discretion and considered the filing, we remind the Examining Attorney
that under Trademark Rule 2.126(a)(1), 37 C.F.R. § 2.126(a)(1), “[t]ext in an electronic
submission must be filed in at least 11-point type and double-spaced.” See also Trademark
Rule 2.124(b)(2), 37 C.F.R. § 2.142(2), which states in part: “Briefs must meet the
requirements prescribed in §2.126, except examining attorney submissions need not be filed
through ESTTA.”
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Attorney that its Mark is merely descriptive in that it describes a feature and/or
function of Applicant’s Goods and Services,”4 and asserts that it should be allowed an
opportunity to register I COINS on the Supplemental Register. The refusal, however,
is based solely on the ground that the term I COINS is merely descriptive of
Applicant’s services. While both the initial and final office actions include an
“advisory” that Applicant’s applied-for mark “appears to be generic” and therefore an
amendment to the Supplemental Register cannot be recommended,5 the Examining
Attorney never issued a genericness refusal. In fact, in his Final Office Action, the
Examining Attorney notes:
The applicant further argues that the examining attorney
should not find the applied-for mark generic and that the
application may be registrable on the Supplemental
Register. The applicant has not amended the application to
seek registration on the Supplemental Register, and the
examining attorney declines to preemptively address such
an argument.
At this time, the application is not even entitled to
registration on the Supplemental Register because the
application was filed under Trademark Action Section 1(b);
applications so-filed are not entitled to registration on the
Supplemental Register until an acceptable amendment to
allege use meeting the requirements of 37 C.F.R. §2.76 has
been timely filed. (Citations omitted).

4 4 TTABVUE 10.
5 In the initial Office Action, the Examining Attorney also advised Applicant that an
amendment to seek registration under Section 2(f) could not be recommended.
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May 15, 2018 Final Office Action; TSDR 9. To be clear, the only issue on appeal is
whether Applicant’s applied-for mark is merely descriptive under Section 2(e)(1) and
thus entitled to the Principal Register registration sought in the application.6
Notwithstanding Applicant’s concession that its mark is merely descriptive of its
services, for sake of completeness, we address the mere descriptiveness refusal on the
merits.
II. Discussion
A. Applicable Law
The test for determining whether a mark is merely descriptive is whether it
immediately conveys information concerning a significant quality, characteristic,
function, ingredient, attribute or feature of the product or service in connection with
which it is used, or intended to be used. See, e.g., In re Chamber of Commerce of the
U.S., 675 F.3d 1297, 102 USPQ2d 1217, 1219 (Fed. Cir. 2012) (internal citations
omitted); see also In re Oppedahl & Larson LLP, 373 F.3d 1171, 71 USPQ2d 1370,
1371 (Fed. Cir. 2004) (quoting Estate of P.D. Beckwith, Inc. v. Comm’r, 252 U.S. 538,
543 (1920) (“A mark is merely descriptive if it ‘consist[s] merely of words descriptive
of the qualities, ingredients or characteristics of the goods or services related to the

6 Even if the application was eligible for registration on the Supplemental Register and, in
the absence of an allegation of use in commerce by the filing of an Amendment to Allege Use
it is not, Applicant’s request that the application “be returned to the Examining Attorney so
that Applicant may submit use in commerce in order to be amended to the Supplemental
Registration” (4 TTABVUE 11) is untimely and will not be further considered. “An
application which has been considered and decided on appeal will not be reopened except for
the entry of a disclaimer . . . .” Trademark Rule 2.142(g); 37 C.F.R. § 2.142(g); see also In re
Phillips-Van Heusen Corp., 63 USPQ2d 1047, 1047 n.2. (TTAB 2002) (denying a request in
applicant’s brief that if the refusal is maintained the application be amended to the
Supplemental Register).
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mark.”)). The determination of whether a mark is merely descriptive must be made
in relation to the goods or services for which registration is sought. Chamber of
Commerce of the U.S., 102 USPQ2d at 1219. It is not necessary, in order to find a
mark merely descriptive, that the mark describe each feature of the goods or services,
only that it describe a single, significant ingredient, quality, characteristic, function,
feature, purpose or use of the goods or services. Id.; In re Gyulay, 820 F.2d 1216, 3
USPQ2d 1009, 1010 (Fed. Cir. 1987).
Where a mark consists of multiple words, the mere combination of descriptive
words does not necessarily create a non-descriptive word or phrase. In re Phoseon
Tech., Inc., 103 UPQ2d 1822, 1823 (TTAB 2012); In re Associated Theatre Clubs Co.,
9 USPQ2d 1660, 1662 (TTAB 1988). A mark comprising a combination of merely
descriptive components is registrable if the combination of terms creates a unitary
mark with a unique, suggestive, or otherwise non-descriptive meaning, or if the
composite has a bizarre or incongruous meaning as applied to the goods or services.
See In re Colonial Stores Inc., 394 F.2d 549, 157 USPQ 382 (CCPA 1968); In re Shutts,
217 USPQ 363 (TTAB 1983), However, if each component retains its merely
descriptive significance in relation to the goods, the combination results in a
composite that is itself merely descriptive. Oppedahl & Larson LLP, 71 USPQ2d at
1371.
Lastly, a mark comprising more than one element must be considered as a whole
and should not be dissected; however, we may consider the significance of each
element separately in the course of evaluating the mark as a whole. See DuoProSS
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Meditech Corp. v. Inviro Med. Devices, Ltd., 695 F.3d 1247, 103 USPQ2d 1753, 1756-
57 (Fed. Cir. 2012) (reversing the Board’s denial of cancellation for for
medical devices as not merely descriptive, but noting that “[t]he Board to be sure, can
ascertain the meaning and weight of each of the components that makes up the
mark”).
B. Arguments and Evidence
The Examining Attorney maintains that the term I COINS immediately describes
a feature or characteristic of Applicant’s identified financial services. In support of
his position, the Examining Attorney introduced the following to show that, “[w]hen
considered in connection with services offered to an ‘on-line community’ via a ‘global
computer network,” the prefix ‘I’ immediately conveys to consumers that the services
are ‘Internet-enabled’ or ‘Internet-based’”7:
1. Definitions of “I”
Newton’s Telecom Dictionary, 30th ed., states: “[u]ppercase
I and lowercase i are used as a prefix in some words and
product names to signify that they are Internet-enabled or
Internet based”;8
The Computer Desktop Encyclopedia defines “i” as “a
prefix for technical terms that may connote … the Internet
or information”;9

7 10 TTABVUE 4. The TTABVUE and Trademark Status and Document Retrieval (“TSDR”)
citations refer to the docket and electronic file database for the involved application. All
citations to the TSDR database are to the downloadable .pdf version of the documents.
8 October 18, 2017 Office Action; TSDR 66-68.
9 May 15, 2018 Final Office Action; TSDR 25-26.
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Acronym Finder.com indicates “I” is a common
abbreviation for “Internet”;10 and
Wikipedia.org indicates consumer recognition of “I” as an
“Internet-related prefix,” that has been widely used by
companies to stand for “Internet.”11
2. Third-party registrations for marks with the letter “I” (combined with other
matter) that are used on or in connection with Internet-based goods and/or services,
where the term was either disclaimed, registered pursuant to Section 2(f) of the
Trademark Act, 15 U.S.C. 1052(f), or registered on the Supplemental Register.12
Third-party registrations featuring goods and/or services the same or similar to the
applicant’s goods and/or services may be probative evidence on the issue of
descriptiveness where the relevant word or term is disclaimed, registered under
Trademark Act Section 2(f), or registered on the Supplemental Register. See In re
Morinaga Nyugyo Kabuskiki Kasiha, 120 USPQ2d 1738, 1745 (TTAB 2016) (citing
Inst. Nat’l des Appellations D’Origine v. Vintners Int’l Co., 958 F.2d 1574, 1581-28, 22
USPQ2d 1190, 1196 (Fed. Cir. 1992)). The registrations include, by way of example:
Supplemental Register Registration No. 4200289 for the
mark IPARIS for “providing fashion information regarding
Paris fashion in the field of durability, fit and style of
lingerie products via the Internet”;
Registration No. 4244502 (2(f)) for the mark IMESSAGE
for “communication services, namely, transmission of text,
data, images, and video by wireless communication
networks and the Internet”; and

10 October 18, 2017 Office Action; TSDR 69-70.
11 May 15, 2018 Final Office Action; TSDR 20-22.
12 Id. at TSDR 27-52.
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Registration No. 5289971 for the mark IHOME and design,
( , IHOME disclaimed) for “providing real estate
listings and real estate information via the Internet.”
To show that the word COINS is descriptive when used in connection with
Applicant’s services, the Examining Attorney also made of record:
1. Relevant definitions of “COIN”13
Oxford English Dictionary (US) defines “coin” as “money”;14
and
Merriam-Webster Online Dictionary defines “coin” as
“something used as if it were money.”15
2. Articles from Investopedia.com and Wikipedia.org and
CoinMarketCap.com’s “Cryptocurrency Market Capitalizations” list of showing the
use of the word COIN (in combination with other matter) to identify various virtual
currencies, i.e., “Bitcoin,” “Litecoin,” “Bytecoin,” “FirstCoin,” “Monacoin,” “Dogecoin,”
“Regalcoin,” “Vertcoin,” and “Altcoin.”16
C. Analysis/Conclusion
In view of the evidence submitted by the Examining Attorney, we find that the
individual components of I COINS have descriptive significance as used in connection

13 The deletion of the plural “s” from the word “coin” does not diminish the probative value of
the evidence. “It is well established that trademarks consisting of singular and plural form
of the same term are essentially the same mark.” Weider Publ’ns, LLC v. D&D Beauty Care
Co., 109 USPQ2d 1347, 1355 (TTAB 2014) (citing Wilson v. Delaunay, 245 F.2d 877, 114
USPQ 339, 341 (CCPA 1957) (finding no material difference between the singular and plural
forms of ZOMBIE such that the marks were considered the same mark)).
14 Id. at TSDR 53.
15 Id. at TSDR 59.
16 October 18, 2017 Office Action; TSDR 71-97.
Serial No. 87528729
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with the identified “financial services, namely, providing a virtual currency with no
real-world value for use by members of an on-line community for purpose of
participating in peer to peer sports challenges, online games, skill games, and/or
other gaming activities via a global computer network.” We find that the “i-,” a prefix
for “internet,” a word synonymous with the phrase “global computer network”17
immediately informs Applicant’s targeted on-line consumers the internet-based
nature of Applicant’s services. This conclusion is consistent with Board precedent, in
which we have recognized the prefix “i” or “I” is understood by purchasers to signify
“internet.” See In re Zanova, Inc., 59 USPQ2d 1300 (TTAB 2001) (ITOOL found
merely descriptive of computer software for use in creating web pages, and custom
design of websites for others). In addition, the word “coin” and its plural “coins,”
defined as “money” or “something used as money,” is often used as part of the names
of virtual currencies, and clearly describes the virtual currency provided by
Applicant’s financial services. Indeed, Applicant’s application, as filed, included a
disclaimer of the word COINS, which is, of course, an admission of the descriptiveness

17 We take judicial notice of the following definitions of the word “internet”: (1) “[a] global
computer network providing a variety of information and communication facilities…”
retrieved from the LEXICO website (www.lexico.com), powered by the Oxford Dictionaries;
and (2) “an electronic communications network that connects computer networks and
organizational computer facilities around the world,” retrieved from the Merriam-Webster
Online Dictionary (www.merriam-webster.com). The Board may take judicial notice of
dictionary definitions, including online dictionaries that exist in printed format or have
regular fixed editions. In re Cordua Rests. LP, 110 USPQ2d 1227, 1229 n.4 (TTAB
2014), aff'd, 823 F.3d 594, 118 USPQ2d 1632 (Fed. Cir. 2016); Threshold.TV Inc. v.
Metronome Enters. Inc., 96 USPQ2d 1031, 1038 n.14 (TTAB 2010); In re Red Bull GmbH, 78
USPQ2d 1375, 1377 (TTAB 2006).

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of the word. See Plus Products v. Star-Kist Foods, Inc., 220 USPQ 541, 543 (TTAB
1983).
We further find that the record establishes that the designation I COINS, as a
whole, is merely descriptive of the identified services. When I COINS is viewed in
connection with the recited “financial services, namely providing a virtual currency
with no real-world value for use by members of an on-line community for purpose of
participating in peer to peer sports challenges, online games, skill games, and/or
other gaming activities via a global computer network”, it immediately conveys that
a feature those services, namely that Applicant provides internet-based money or
currency. The combination of terms is not incongruous, and no additional information
is needed for the merely descriptive significance thereof to be readily apparent to
prospective consumers of the services. See, e.g., In re Abcor Dev. Corp., Inc., 588 F.2d
811, 200 USPQ 215 (CCPA 1978) (Rich, J., concurring) (GASBADGE described as a
shortening of the name “gas monitoring badge”); Cummins Engine Co., Inc. v.
Continental Motors Corp., 359 F.2d 892, 149 USPQ 559 (CCPA 1966)
(TURBODIESEL held generically descriptive of engines having exhaust driven
turbine super-chargers).
To the extent that Applicant, during prosecution, relied on the principle that when
there is doubt on the issue of whether a mark is merely descriptive (as opposed to its
inapposite genericness arguments), that doubt should be resolved in favor of the
Serial No. 87528729
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applicant,18 the reliance is misplaced. In the present case, we have no doubt that
Applicant’s mark is merely descriptive.
For the reasons discussed, we conclude that when applied to Applicant’s services,
the term I COINS, as a whole, immediately describes a feature of the identified
services, namely that Applicant provides internet-based virtual currency to its
targeted on-line customer.
Decision: The refusal to register ICOINS as merely descriptive under Section
2(e)(1) is affirmed.

18 See In re Merrill Lynch, Pierce, Fenner, and Smith Inc., 828 F.2d 1567, 4 USPQ2d 1141,
1144 (Fed. Cir. 1987) (on issue of mere descriptiveness, reasonable doubts are resolved in
favor of the applicant).