IP: Do the "I"s have it? Perhaps so

One Trademark Trial and Appeal Board opinion reveals that some “i” formative marks are protectable

Prior to the Trademark Trial and Appeal Board’s opinion in In re Tofasco of America, Inc., it appeared obvious that adding “i” to a generic term was not registrable (at least to everyone but Apple).

These so-called "i-" marks—think iRADIO for an Internet radio—were often rejected as being merely descriptive—that is, conveying an immediate idea of the ingredients, qualities or characteristics of the goods or services applied-for. The issue is whether someone who knows what the goods or services are will understand the mark to convey information about them.

However, if a multistage reasoning process or resort to imagination is required when the goods or services are encountered under a mark, in order to determine the attributes or characteristics of the product or services, then the mark is considered suggestive rather than merely descriptive. So, suggestive marks are registrable; merely descriptive ones are not. This conclusion was based primarily on USPTO practice and Trademark Trial and Appeal  Board case law.

For USPTO practice, the Trademark Manual of Examining Procedure, Section 1209.03(d), states, “The prefix "i" or "I" would be understood by purchasers to signify Internet, when used in relation to Internet-related products or services.” Based on this, many an examiner had rejected as merely descriptive any “i” – generic mark.

Case law seemed to agree. Both In re PSI Systems, Inc. and In re Zanova Inc. held similar “i” formative marks generic. Did all of this change with the TTAB’s recent In re Tofasco of America, Inc. decision? Probably not.

In Tofasco, the examiner had refused to register IPEN for digital pens and online retail store services featuring digital pens. The board found that IPEN is an abbreviation for "Internet pen," and that a "digital pen" is an electronic input device that may be used with a computer in the manner of a traditional ink pen. The question, then, according to the board, was whether IPEN or "Internet pen" merely describes a function, feature or characteristic of digital pens or online retail store services featuring digital pens.

The examining attorney argued that the applicant had merely taken the 'I' prefix, which signifies the Internet, and added to it the generic term pen. According to the examiner, when the "I" prefix is coupled with a descriptive term for Internet-related goods or services, the resulting mark should be considered merely descriptive.

The board disagreed and reversed the refusal to register. In so doing, the board distinguished this case from both Zanova and PSI Systems. In distinguishing Zanova, the board explained that the evidence the examiner conclusively proved that “itool” was synonymous with “Internet tool” and that prospective purchasers of applicant's goods or services, if confronted with ITOOL used in conjunction therewith, would without need of thought, imagination or perception be immediately apprised of the nature of applicant's goods and services, i.e., that its software is an “Internet tool” that allows users to create a web page and its services involve using such tool to design web pages for others.

In distinguishing PSI, the board explained that there, too, the examiner’s evidence clearly established that IPOSTAGE was the equivalent of “Internet Postage.” In reversing the examiner’s decision here, the board held that while the evidence indicates that IPEN is the equivalent of "Internet pen," the examiner failed to demonstrate that such a term merely describes a function, feature or characteristics of the recited goods or services. In other words, the  Board held that while the evidence did support a finding that IPEN is the equivalent of "Internet pen," there was not enough evidence that such term is synonymous with the term “digital pen” or merely describes an attribute of the recited goods and services.

The board’s distinction makes sense. As it held in PSI, it is reasonable to assume that users who confront IPOSTAGE would immediately perceive that a significant feature of characteristics of its goods and services is to enable users to convert and transfer digital data into tangible media for the generation of Internet postage.

By analogy, what would reasonable users of IPEN immediately perceive the feature or characteristic of IPEN to be? What does an Internet pen do? The applicant sells digital pens and it offers online retail store services. It does not, for example, provide a service of allowing users to write on the Internet or draw on it, as one might assume from the term IPEN. The term IPEN does, arguably, suggest characteristics but not necessarily merely describe them.

As noted at the outset, trademarks that suggest characteristics are registrable. Companies seeking to register trademarks that merely describe characteristics will fail. Maybe the board got this one right. But I am not optimistic that the board is going to employ such flexible reasoning in the future. Unless you are Apple, the better plan is still to proceed under the belief that adding “i” to a generic term for the generic term has a much better chance of getting rejected than it does of getting “iSigned”—that is, approved.

Contributing Author

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Scott Slavick

Scott Slavick is a shareholder at Brinks Gilson & Lione, where his practice focuses primarily on trademark prosecution and trademark litigation. Scott maintains all aspects...

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