American International Group, Inc.

Trademark Trial and Appeal Board

Jul 1, 2002

No. 75737853 (T.T.A.B. Jul. 1, 2002)

Paper No. 13
TJQ
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re American International Group, Inc.
________
Serial No. 75/737,853
_______
Mark J. Liss and Tamara A. Miller of Leydig, Voit & Mayer
for applicant.
Allison E. Hall, Trademark Examining Attorney, Law Office
103 (Michael Hamilton, Managing Attorney).
_______
Before Cissel, Quinn and Hairston, Administrative Trademark
Judges.
Opinion by Quinn, Administrative Trademark Judge:
An application has been filed by American
International Group, Inc. to register the mark AIG EWRITER
for “insurance services, namely, insurance administration
and underwriting in the fields of management liability,
directors and officers liability, corporate liability and
employment practices liability; providing information in
the field of insurance underwriting, namely, insurance rate
calculations, insurance rate quotations, account
THIS DECISION IS NOT
CITABLE AS PRECEDENT
OF THE TTAB
Ser No. 75/737,853
2
reservations, and issuing insurance policies via a global
computer network.”1
The Trademark Examining Attorney has made final the
requirement to disclaim the term “EWRITER” apart from the
mark because, according to the Examining Attorney, it is
merely descriptive when used in connection with applicant’s
services.
When the refusal was made final, applicant appealed.
Applicant and the Examining Attorney filed briefs.2 An oral
hearing was not requested.
The Examining Attorney maintains that the term
“EWRITER” describes characteristics or features of
applicant’s services, namely, that applicant’s services are
offered electronically over the Internet and that the
services involve insurance underwriting services. The
Examining Attorney asserts that two descriptive terms, “e”
1 Application Serial No. 75/737,853, filed June 28, 1999,
alleging a bona fide intention to use the mark in commerce.
Applicant subsequently filed an amendment to allege use setting
forth a date of first use anywhere and a date of first use in
commerce of June 1999. Applicant claims ownership Of
Registration No. 1,294,898 and others.
2 Attached to the Examining Attorney’s appeal brief are
dictionary definitions, of which the Examining Attorney requests
the Board to take judicial notice. Applicant has objected to the
evidence as untimely. Although applicant is correct as to the
untimeliness of the submission(see Trademark Rule 2.142(d)), this
evidence is proper subject matter for judicial notice. Thus, we
have considered this evidence in making our determination. We
hasten to add, however, that even if these definitions were not
considered, we would reach the same result in this case.
Ser No. 75/737,853
3
and “writer,” have been combined to form a composite term
that remains equally descriptive of applicant’s services.
In this connection, the Examining Attorney points to the
manner in which the mark is actually used as shown by the
specimens of record, “eWriter,” as evidence that consumers
encountering the term would easily see it as comprising the
descriptive elements “e” and “writer.” In support of the
refusal, the Examining Attorney has submitted dictionary
definitions, and excerpts retrieved from the NEXIS
database.
Applicant, in urging that the refusal be reversed,
argues that the mark sought to be registered is only
suggestive because “it requires a consumer to exercise
imagination, thought or perception to reach a conclusion as
to the exact nature of the Applicant’s services.” (brief,
p. 3) Applicant maintains that even if the individual
words of a mark are descriptive, the combination of such
elements as a composite mark may result in a composite
which is not descriptive. Applicant goes on to state
(brief, pp. 4-5):
Applicant does not dispute that
when an “E” is added to the beginning
of a common word, consumers generally
view that “E” as signifying
“electronic.” The resulting term in
some cases is merely descriptive of the
services, such as “e-commerce” for
Ser No. 75/737,853
4
electronic commerce, or “e-ticket” for
tickets purchased electronically. But
this in itself does not make “EWRITER”
merely descriptive of Applicant’s
services.
While the term “write” may have
some meaning in relation to insurance,
in this case Applicant submits that
consumers, upon viewing the term
“EWRITER,” will not immediately know
the nature of the services offered
under Applicant’s composite mark “AIG
EWRITER.” Unlike the term “e-ticket,”
which has a very clear meaning to
consumers, the word “EWRITER” does not.
Because “EWRITER” appears as one word,
rather than a hyphenated word (like e-
ticket), consumers will be less likely
to dissect it. Even if consumers view
the “E” as signifying “electronic,” the
meaning of the term “EWRITER” will
still not be clearly and immediately
apparent to consumers. Consumers will
have to stop and think about what the
term “EWRITER” could mean. In other
words, consumers will have to make a
mental leap, and use “imagination,
thought or perception to reach a
conclusion as to the nature of the
goods or services.” [citations
omitted]
Applicant maintains that with so many different definitions
of the word “writer,” consumers will have no way to know
the nature of the services offered under the mark. To the
extent that “writer” is a term of art in the insurance
industry, ordinary consumers, according to applicant, are
not familiar with this specialized meaning. Applicant also
points to the absence of any evidence that the term
Ser No. 75/737,853
5
“EWRITER” is being used by others in the insurance
industry. In this connection, applicant submitted the
affidavit of one of its attorneys and the results of
searches of the NEXIS and WESTLAW databases showing that
the only uses (five) of “EWRITER” in insurance publications
are in relation to applicant’s insurance services. The
other uses revealed by the searches show the term used to
describe authors who write letters, stories or books
specifically for publication or transmission on the
Internet.
It is well settled that a term is considered to be
merely descriptive of goods, 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 services. In re Abcor
Development Corp., 588 F.2d 811, 200 USPQ 215, 217-18 (CCPA
1978). It is not necessary that a term describe all of the
properties or functions of the 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, contrary to the gist of
some of applicant’s remarks, whether a term is merely
descriptive is determined not in the abstract but in
Ser No. 75/737,853
6
relation to the services for which registration is sought.
In re Bright-Crest, Ltd., 204 USPQ 591, 593 (TTAB 1979).
The prefix “e-” is 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 (9th ed. 1999).
The NEXIS evidence of record makes it crystal clear that
the prefix “e-” means electronic and refers to the
publication or exchange of information in an electronic
format as over the Internet. In point of fact, applicant’s
specimen indicates that applicant offers its services,
under the mark AIG EWRITER, via a “new web-based system” to
those who log on to access.aig.com.
The word “writer” has a variety of meanings, including
“to underwrite, as an insurance policy.” The American
Heritage Dictionary of the English Language (3rd ed. 1992).
The NEXIS evidence shows uses of the word in connection
with insurance companies, of which the following are
representative: “the nation’s second-largest auto writer
based on 1998 net premiums written”; “reinsurers and direct
writers will need to reflect this in pricing”; “analysts
have long been expecting Allstate to become a direct
writer--through phone, Internet or other direct channels”;
and “Sirius America is a direct insurance writer.” The
Ser No. 75/737,853
7
evidence shows that, among both ordinary consumers and
individuals in the insurance industry, the term “writer” is
a commonly used and understood term relating to insurance
products and services.
Applicant, as noted above, “does not dispute that the
initial ‘e’ is commonly used and known as an acronym for
‘electronic’” and “that when the letter ‘e’ is added as a
prefix to a generic or descriptive word, the resulting term
is sometimes merely descriptive or generic for the goods or
services it is used to identify.” Further, applicant
concedes that “the term ‘write’ may have some meaning in
relation to insurance.” We do not share applicant’s view,
however, that the combination of the terms results in a
composite mark that is only suggestive.
The evidence of record establishes that the term
“EWRITER,” when used in connection with applicant’s
insurance and insurance-related services, immediately
describes, without conjecture or speculation, a significant
feature of the services, namely, that the services involve
the underwriting of insurance by electronic means over the
Internet. Contrary to applicant’s arguments, nothing
requires the exercise of imagination, cogitation, mental
processing or gathering of further information in order for
consumers and prospective purchasers to readily perceive
Ser No. 75/737,853
8
this merely descriptive significance of “EWRITER” as it
pertains to applicant’s specific services.
Applicant repeatedly makes the point that the term
“writer” has a variety of meanings and that consumers, upon
encountering “EWRITER,” will not immediately know the
nature of the services offered under the proposed mark. It
should be remembered, however, that the other meanings of
“writer” or even “e-writer” (referring to an author who
writes for distribution on the Internet) are largely
irrelevant as we must consider the mark in relation to the
services recited in the application. See: In re The
Officers’ Organization For Economic Benefits, Limited, 221
USPQ 184 (TTAB 1983); and In re Bright-Crest, Ltd., supra.
The term “EWRITER” takes on a specific, merely descriptive
meaning when used in connection with insurance writing
services offered over the Internet. See: In re
Styleclick.com Inc., 57 USPQ2d 1445 (TTAB 2000) [E FASHION
is merely descriptive of, inter alia, electronic retailing
services via a global computer network featuring apparel
and fashions]. This is especially the case given that
applicant actually uses the term in its specimen as
“eWriter.”
The fact that applicant may be the first or only
entity using “EWRITER” in the industry is not dispositive.
Ser No. 75/737,853
9
In re Helena Rubinstein, Inc., 410 F.2d 438, 161 USPQ 606,
609 (CCPA 1969); and In re Central Sprinkler Co., 49 USPQ2d
1194, 1199 (TTAB 1998).
Decision: The refusal to register is affirmed in the
absence of a disclaimer of the descriptive term “EWRITER.”
Applicant is allowed thirty days from the date of this
decision to submit a disclaimer of “EWRITER” apart from the
mark. If the disclaimer should be submitted, this decision
will be set aside. Trademark Rule 2.142(g).