E* Prescription, Inc.

Trademark Trial and Appeal Board

Aug 9, 2001

No. 75589909 (T.T.A.B. Aug. 9, 2001)

8/9/01

Hearing: Paper No. 17
April 5, 2001 GFR

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re E* Prescription, Inc.1
________

Serial No. 75/589,909
_______

Paul E. Fahrenkopf of Barnes & Thornburg for
E* Prescription, Inc.

Tonja M. Gaskins, Trademark Examining Attorney, Law Office
112 (Janice O’Lear, Managing Attorney).
_______

Before Cissel, Hanak and Rogers, Administrative Trademark
Judges.

Opinion by Rogers, Administrative Trademark Judge:

An application has been filed by E* Prescription, Inc.
to register the mark EPHYSICIAN for goods and services
identified, following amendment, as:

1 The caption for each of applicant’s briefs in this appeal
identifies ePhysician, Inc. as applicant. Records of the
Office’s Assignment Branch, however, reveal recordation only of a
grant of a security interest in the involved application, by
EPHYSICIAN, Inc. to COMISCO, Inc. If applicant has assigned or
otherwise transferred the involved application to EPHYSICIAN,
Inc., recordation of the document(s) is recommended. See Patent
and Trademark Rules in Part Three of Title 37 of the Code of
Federal Regulations.
THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Ser No. 75/589,909
2
“Computer hardware and software for the online
delivery of drug prescriptions and for the
dissemination of patient information and drug
interaction information; hand-held and desktop
computers used to record, process, and transmit
patient information and drug prescriptions;
computer software program for use in physician
practice management, including appointment
scheduling, patient information, and drug
information,” in International Class 9; and

“Providing patient medical information, drug
interaction information, and drug prescription
information,” in International Class 42.

The Trademark Examining Attorney has refused
registration under Section 2(e)(1) of the Lanham Act, 15
U.S.C. §1052(e)(1), on the ground that applicant’s mark, if
used in connection with the identified goods and services,
would be merely descriptive of them. When the refusal was
made final, applicant appealed. Applicant and the
Examining Attorney have filed briefs, and there was an oral
hearing at which both applicant’s counsel and the Examining
Attorney appeared.

The Record

The record for this appeal consists of dictionary
definitions of the “E-” prefix and of “physician”; web
pages introduced by the Examining Attorney to show that use
of “the prefix ‘e-’ means ‘electronic’”; numerous excerpts
retrieved by the Examining Attorney from the NEXIS
Ser No. 75/589,909
3
database, almost all of which are offered as evidence of
the asserted descriptiveness of the phrase “electronic
physician”; reprints introduced by applicant of web pages
accessible via applicant’s web site and which concern
applicant and its products and services; web pages
introduced by the Examining Attorney which contain articles
on the merits, or lack thereof, of protecting “‘e’ words”
as trademarks; and a copy of an unpublished Board decision
specifically designated not to be cited as precedent.
Before turning to the arguments that have been
presented, we attend to objections applicant has made to
the material introduced into the record by the Examining
Attorney. Because applicant filed a brief, a supplemental
brief following remand, and a reply brief, the various
objections were raised at different times, but it is clear
that applicant maintains them all.
First, applicant argues that the Examining Attorney
did not state that the NEXIS excerpts retrieved from her
various searches of the database are “representative
samples” and we must, therefore, draw the conclusion that
the introduced excerpts were the only relevant ones, in the
Examining Attorney’s view. Applicant argues, therefore,
that the percentage of “hits” is very small and this fact
alone is probative of the lack of descriptiveness of both
Ser No. 75/589,909
4
“ephysician” and “electronic physician.” Second, applicant
argues that the Examining Attorney did not discuss certain
web pages made of record with the Examining Attorney’s
final refusal and, therefore, we should not consider them
because they do not have a proper foundation. Third,
applicant argues that the Examining Attorney has not
complied with proper Office practice, as set forth in the
Trademark Manual of Examining Procedure, governing
introduction of material from printed publications and
governing introduction of material retrieved from research
databases.2 Based on these arguments, applicant urges us to
“deem all of the evidence submitted by the Examining
Attorney as inadmissible.” In the alternative, applicant
argues that, at a minimum, NEXIS excerpts or articles
retrieved from the Internet and which are derived from
foreign publications or wire services are not relevant and
should not be considered. Finally, applicant argues that
the Board’s prior, unpublished decision should not be
considered.

2 Though this argument was not articulated in the response to the
NEXIS article excerpts introduced by the initial Office Action,
we consider it in regard to all evidence that can be
characterized as publications, whether derived from NEXIS or the
Internet, and regardless of the Office Action by which it was
introduced.

Ser No. 75/589,909
5
We agree with applicant that the Examining Attorney
must be presumed to have made the best available NEXIS
evidence of record, but we do not agree that the arguably
small percentage of the total search results made of record
should somehow reflect negatively on this evidence.
Searches of the Internet and of research databases,
including, for example, the LEXIS database employed by many
attorneys, can be cast broadly or narrowly. There is
nothing inherently wrong in casting a broad search, unless,
perhaps, it is the possible waste of the searcher’s time
and resources. Under applicant’s theory, searches by
Examining Attorneys for the most relevant evidence might be
undermined if Office policy placed a premium on searches
which were narrowly tailored to result in a high percentage
of usable excerpts, rather than a thorough search which
might happen to retrieve both usable and unusable evidence.
Also, such policy might encourage Examining Attorneys to
make of record a high percentage of their search results,
even though individual excerpts might be of dubious
relevance. We see nothing to recommend a policy that
encourages either approach. In short, we see nothing wrong
with casting a broad search and then carefully reviewing
the results to ensure that only the best evidence is made
of record. Nonetheless, in circumstances such as these, an
Ser No. 75/589,909
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applicant remains free to argue, as the instant applicant
has done, that when a small percentage of a search’s
results are made of record, this may be viewed as probative
that a term or terms which otherwise appear in widespread
use are not widely used in connection with an applicant’s
goods or services.
In regard to the web pages made of record with the
final refusal, we agree that we can find no discussion of
these in the refusal. Accordingly, we have not considered
these pages.3
As to applicant’s argument that the Examining Attorney
has not complied with Office practice in her introduction
of NEXIS excerpts and articles retrieved from the Internet,
we disagree. There is sufficient information to allow
applicant to determine the source of these articles.
Indeed, applicant has had no difficulty determining which
are relevant and which are not (e.g., wire service reports
and reports from foreign publications). Also, we believe
there is sufficient information of record to allow the

3 We observe, however, that exclusion of these items has had
little influence on this case. It appears that these materials
were introduced either to show that the “e” prefix is equivalent
to “electronic” or that there is a proliferation of words
featuring an “e” prefix. Applicant, as discussed infra, has
expressly conceded the former point and implicitly conceded the
latter by virtue of its argument that consumers are accustomed to
differentiating between “e” prefixed marks and “e” prefixed
descriptive or generic terms.
Ser No. 75/589,909
7
applicant to discern the Examining Attorney’s approach to
searching for these articles.
We agree, however, that the various wire service
reports and articles from foreign publications are not
relevant, and the Board’s prior, unpublished decision,
cannot be relied on. Accordingly, these have not
influenced our decision.

The Arguments

The elements of the Examining Attorney’s argument all
are set out in her brief. First, she contends that the “E”
prefix means “electronic” and, with or without a following
hyphen, would be understood by applicant’s customers to
indicate the electronic nature of applicant’s goods and
services. Second, she contends that “physician” also is
descriptive, because it designates the intended user or
purchaser of applicant’s goods or services. The composite
EPHYSICIAN is descriptive, according to the argument,
because the individual components are; because the
combination “does not result in a term so incongruous or
unusual” that its only significance could be as identifying
mark for the applicant’s goods and services; and the
composite’s primary significance is the same as that of
Ser No. 75/589,909
8
each of its components, i.e., to reveal “a feature and/or
function” of the goods and services.
In regard to perception of the mark by customers, the
Examining Attorney contends, there is no need for a
prospective customer of applicant to use “imagination,
effort, thought or an extra mental step” to understand the
import of EPHYSICIAN; rather, it “immediately conveys
information regarding the goods and services, namely, that
they involve the electronic delivery of information for
physicians….”
In regard to the need for any competitor of applicant
to use EPHYSICIAN, the Examining Attorney argues that even
if applicant is the first or only user of the term, it must
still be kept free for others to use as the Internet and
use thereof grows; that there is significant use of
“electronic physician,” a phrase for which EPHYSICIAN is
the equivalent; and there is evidence of at least one
apparent competitive use, i.e., the use by “MD net guide”
on its home page, as described in a NEXIS excerpt from the
Philadelphia Business Journal of February 11, 2000.
Applicant explains that its goods are “essentially a
computer-based patient management system for use by
healthcare professionals to better and more accurately
treat patients and to keep records related to such
Ser No. 75/589,909
9
treatments.” Brief, p. 2. Applicant concedes that “‘E’ is
frequently used to mean ‘electronic’ and that certain words
with an ‘E’ prefix have become common, generic terms (e.g.
e-mail and e-commerce).” Brief, p. 4. At the oral
hearing, applicant’s counsel further conceded that both E
and PHYSICIAN would, used individually, be descriptive for
applicant’s goods.4 Nonetheless, applicant argues, the
Examining Attorney has not paid enough attention to the
fact that applicant’s mark is not E or PHYSICIAN but,
rather, is EPHYSICIAN, and that this composite is “more
than the sum of its parts” and “requires an analysis of
both the effect of the combination on the minds of
prospective consumers and the competitive need for others
to use that particular combination.”
In regard to the “effect of the combination,”
applicant asserts that “hearing or seeing EPHYSICIAN,” a
prospective consumer of applicant’s goods and services
“would not understand what was meant by this term.”
Response to initial Office Action, p. 4. Moreover,
applicant argues, if “ephysician” is taken to mean
“electronic physician” then it would describe “a robot, or

4 Applicant “could not stop another in the same field from using
an E-prefix in its mark, nor could it stop another from using
PHYSICIAN for goods or services directed to physicians.” Reply
brief, p. 6.

Ser No. 75/589,909
10
at least a device which takes the place of a physician in
some fashion (e.g., a diagnostic tool).” But, applicant
hastens to add; its goods and services do not involve
“robotic doctoring.” Applicant asserts the composite
EPHYSICIAN is, therefore, incongruous. Brief, p. 5.
In regard to “competitive need,” applicant argues in
its briefs that it is clear applicant’s use of EPHYSICIAN
would not inhibit competition; that, if there were a need
for competitors to use it, the Examining Attorney would
have discovered evidence of its use; that there are only
two NEXIS excerpts revealing use of “ephysician” and one of
these is inadmissible; and that there are myriad other
terms that could be used by offerors of competitive patient
management systems. At the oral argument, applicant’s
counsel asserted that the one admissible NEXIS excerpt
showing use of “ephysician,” which may appear to be a use
by a competitor, in fact “may” be a use referring to
applicant or to a client. In addition, counsel asserted
that there are other marks being used by competitors of
applicant which are “doing better” than applicant.

Decision

It is, of course, well settled that the question
whether a term is merely descriptive is determined not in
Ser No. 75/589,909
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the abstract but, rather, in relation to the goods or
services for which registration is sought, the context in
which it is being used on or in connection with those goods
or services and the possible significance that the term
would have to the average purchaser or user of the goods or
services. See In re Bright-Crest, Ltd., 204 USPQ 591, 593
(TTAB 1979) and In re Recovery, 196 USPQ 830 (TTAB 1977).
A proposed mark is considered merely descriptive of
goods or services, within the meaning of Section 2(e)(1) of
the Trademark Act, if it immediately conveys information
about an ingredient, quality, characteristic, feature,
function, purpose or use of the goods or services. In re
Abcor Development Corp., 588 F.2d 811, 200 USPQ 215, 217-
218 (CCPA 1978); see also In re Gyulay, 820 F.2d 1216, 3
USPQ2d 1009 (Fed. Cir. 1987). It is not necessary that a
term describe all of the properties or functions of the
goods or services in order for it to be merely descriptive
thereof; rather, it is sufficient if the term describes a
significant attribute or idea about them. In re Venture
Lending Associates, 226 USPQ 285 (TTAB 1985). Thus, it is
not necessary, in this instance, that a prospective
purchaser of applicant's goods or services be immediately
apprised of the full panoply of features of applicant's
Ser No. 75/589,909
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goods or services for the term EPHYSICIAN to be found
merely descriptive.
Applicant concedes that the prefix “E” means
electronic and concedes that it has no exclusive right to
use the “E” prefix for its goods and services, which
utilize the Internet.5 Further, applicant concedes that it
has no exclusive right to use “physician,” because
applicant’s goods and services are targeted to physicians.
Applicant argues, however, that a physician, hearing or
seeing the composite EPHYSICIAN would not know what it
meant. That, of course, is not the question. Rather, the
question is whether a physician, as the targeted
prospective purchaser or user of applicant’s goods or
services, would, when contemplating EPHYSICIAN in
conjunction with applicant’s Internet-based patient
management system and services, immediately derive some
descriptive meaning from the use of the term, or would the
physician have to cogitate or wonder what significance the
term has for such goods and services.

5 Even had applicant not conceded this, the record clearly
establishes that “E” as a prefix, whether with or without a
hyphen, is an accepted shorthand reference for “electronic” and
is widely coupled with other terms to indicate that goods or
services are provided by, or available via, the Internet. See
also, in this regard, In re Styleclick.com Inc., 57 USPQ2d 1445,
1448 (TTAB 2000) (“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.”).
Ser No. 75/589,909
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We believe the prospective customer physician would
immediately perceive that use of the goods and services
would further the physician’s effort to be an “electronic
physician,” i.e., an Internet- or web-savvy physician
utilizing the most up to date technology for dealing with
patients, pharmacies and laboratories. We agree with
applicant that most of the Examining Attorney’s NEXIS
evidence of use of the phrase “electronic physician” does
not show use in this manner. We disagree, however, that
the evidence suggests that most individuals, when
confronted with the phrase “electronic physician” would
unerringly think of “robotic doctors” or diagnostic tools.
Quite frankly, most of the NEXIS evidence supports neither
the applicant’s nor the Examining Attorney’s view of this
case.6
We note, in particular, the following NEXIS
references:
HEADLINE: “Doctor Dean” has had practice talking
to masses

In a world where psychological counseling has
become a radio staple, it seems to follow that

6 Most of the NEXIS excerpts do not illustrate use of “electronic
physician” as a unitary phrase and are, therefore, of little aid.
There are a handful of references that refer to so-called robotic
doctors or computers engaged in diagnosing patient conditions; or
to an electronics technician as an “electronic physician”; and,
as discussed herein, to flesh and blood physicians who have an
electronic aspect to their practice.
Ser No. 75/589,909
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medical advice should be as close as your
television set.
Welcome Dr. Dean Edell, poised to emerge as
America[’s] latest electronic physician—a man who
makes house calls over a living room picture tube
via his new NBC weekday series….

--The Houston Chronicle, June 28, 1992.

HEADLINE: A dot.com aimed at health care
providers

MD net guide’s niche is that of a directory
that organizes information efficiently for
doctors, not a primary source of information.
This makes staffing and expenditures lighter
than what other medical Web sites may require,
Higgins said.
MD net guide’s marketing pitch plays on what
may be a physician’s handicap when it comes to
technology.
“Are you an ePhysician?” MD net guide’s home
page recently asked. “The use of technology and
information to improve patient care is what sets
an ePhysician apart from other healthcare
professionals.” (Read: are you savvy or aren’t
you?)
And those savvy docs who scroll down the page
find they may be eligible to receive one of
10,000 handheld computers which use office
management software. The software, among other
things, allows doctors to place pharmacy orders
electronically, promising to reduce errors
associated with illegible handwriting.
The ePhysician image may be one doctors
themselves would like to market to their
patients. Increasingly, said Higgins, patients
are bringing print-outs of Web sites into the
exam room.
A doctor who is comfortable with technology can
respond to that information or, better yet,
provide the patient with links to more
information about a specific condition.

--Philadelphia Business Journal, February 11,
2000.
Ser No. 75/589,909
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The Houston Chronicle excerpt suggests that the notion
of a technology-empowered physician is not a phenomenon
given birth by the advent of the Internet. Instead, it
suggests that physicians who used other, more “primitive”
forms of electronic technology could be thought of as
“electronic physicians.” The Philadelphia Business Journal
excerpt suggests that “ePhysician” is a term that clearly
denotes a physician who uses the Internet in his or her
practice.
Applicant’s counsel asserted, at the oral hearing,
that the Philadelphia Business Journal article excerpt
“may” not be a descriptive use but, instead, a use in
reference to applicant. Apart from this contention, which
we consider below, applicant also asserts that there simply
is not enough evidence of descriptiveness, that “doubt
springs from the paucity of evidence,” and that such doubt
must be resolved in favor of applicant.
The Examining Attorney, however, is correct in her
observation that even if applicant is the first or only
user of a term, registration must be refused if it is
descriptive of applicant’s goods or services. See In re
Central Sprinkler Co., 49 USPQ2d 1194 (TTAB 1998); In re
Eden Foods Inc., 24 USPQ2d 1757, 1761 (TTAB 1992).

Ser No. 75/589,909
16
Further, the following principle, expressed in the
Styleclick.com case, is equally applicable here: “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.”
Styleclick.com, supra, at 1448. Thus, the “paucity” of
evidence does not raise doubt about the descriptiveness of
the term EPHYSICIAN.
In regard to counsel’s claim that the Philadelphia
Business Journal article may not be in reference to a
competitor and, therefore, is not evidence of descriptive
use of “ePhysician,”7 we note that this evidence was
introduced with the Examining Attorney’s final refusal and
was specifically addressed by applicant in its appeal
brief. Yet applicant did not raise any claim in its brief
that this article did not reference a competitor. Under
the circumstances, we cannot discount this evidence solely
on the representation of counsel, at the oral hearing, that
the use discussed in the excerpt “may” not be that of a

7 Applicant has applied to register EPHYSICIAN with a typed
drawing of the mark. It appears from applicant’s briefing of
this appeal that applicant may actually be using the term in the
ePhysician form, i.e., with a lower case “e” and capital “P”. It
does not appear that this latter method of use would necessitate
amendment to a special form drawing, but the question is not
before us. Our decision would not be affected by any potential
change from EPHYSICIAN in typed form to ePhysician in special
form, as we believe each would convey the same impression.
Ser No. 75/589,909
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competitor. Moreover, even if we assumed that the use of
“ePhysician” on the “MD net guide” home page is in the
context of a discussion applicant’s goods, the method of
use is as a descriptive term, and is not proper trademark
use. In short, this NEXIS excerpt is evidence of
descriptiveness, however it is weighed.
Prospective customer physicians, when contemplating
EPHYSICIAN in conjunction with applicant’s goods and
services, would immediately be apprised of a significant
attribute thereof, i.e., that users would be “ephysicians”
or “electronic physicians” in the sense of being Internet-
savvy physicians. Cf. In re Camel Manufacturing Company,
Inc., 222 USPQ 1031 (TTAB 1984) (term refused registration
as descriptive when it merely identifies individuals to
whom goods or services are directed). We are not persuaded
otherwise by applicant’s contention that “ephysician” would
be taken to mean a “robotic doctor” or other technology-
based diagnostic tool. The term may very well be perceived
in that manner if contemplated in conjunction with such
goods or related services, but that is not the situation
before us.
Finally, we are not persuaded by applicant’s argument
that there are other suitable terms which could be used to
describe the type of physician one becomes when using goods
Ser No. 75/589,909
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and services such as applicant’s; or by applicant’s related
contention that competitors using other marks are “doing
better” than applicant. The argument is unsupported and
speculative. Moreover, a descriptive term is not rendered
registrable merely because there may be alternative
descriptive terms also available for use. Cf. Genesee
Brewing Co. v. Stroh Brewing Co., 124 F.3d 137, 149 n.15,
43 USPQ2d 1734, 1743 n.15 (2nd Cir. 1997)(possible
alternatives may not be as effective in communicating
information to prospective purchasers); and Duraco Products
Inc. v. Joy Plastic Enterprises Ltd., 40 F.3d 1431, 1442,
32 USPQ2d 1724, 1732 (3rd Cir. 1994) (difference between
generic and descriptive terms is that latter have more,
though finite, equivalents; but descriptive terms still
protectible only on showing of secondary meaning).
Decision: The refusal of registration is affirmed.