Rocketship Consulting, LLC

Trademark Trial and Appeal BoardAug 7, 2012

No. 85024101 (T.T.A.B. Aug. 7, 2012)

THIS OPINION IS NOT A PRECEDENT OF THE T.T.A.B. Mailed: August 7, 2012 UNITED STATES PATENT AND TRADEMARK OFFICE ________ Trademark Trial and Appeal Board ________ In re Rocketship Consulting, LLC ________ Serial No. 85024101 _______ Neil M. Batavia of Dorrity & Manning PA for Rocketship Consulting, LLC. Michael J. Souders, Trademark Examining Attorney, Law Office 115 (John Lincoski, Managing Attorney). _______ Before Seeherman, Cataldo and Wolfson, Administrative Trademark Judges. Opinion by Cataldo, Administrative Trademark Judge: Rocketship Consulting, LLC has applied to register on the Principal Register the mark ENVOICER in standard characters for goods identified as “computer software for facilitation and automation of electronic invoicing” in International Class 9.1 1 Application Serial No. 85024101 was filed on April 27, 2010, based on applicant’s assertion of its bona fide intent to use the mark in commerce on the recited goods. Ser. No. 85024101 2 The trademark examining attorney has refused registration under Section 2(e)(1) of the Trademark Act, 15 U.S.C. § 1052(e)(1), on the ground that applicant’s mark is merely descriptive of a feature or quality of applicant’s goods. When the refusal was made final, applicant appealed. Applicant and the examining attorney filed main briefs on the issue under appeal. The issue on appeal in this case is whether applicant’s mark, ENVOICER, merely describes a function, feature or characteristic of the goods recited in the involved application. In support of his refusal to register, the examining attorney made of record articles and advertisements retrieved from commercial and informational Internet web sites in which the term “invoicer” appears in connection with software used for electronic invoicing. The following examples are illustrative (emphasis added): Stone Hill Invoicer You didn’t start your business because you love paperwork. Keep it simple. Quick and Easy Just click “New” to get started filling out an invoice or a quote. Print, Email, or PDF to get them to your customers. Ser. No. 85024101 3 Get stuck? Read the help pages or email tech support.2 CG Invoicer Designed for independent business owners, CG Invoicer helps with your administrative needs so you can focus on driving the growth of your business. Anyone in his or her own business can benefit from this product, from personal trainers to wedding planners to online auctioneers. CG Invoicer generates invoices with the click of a button and keeps them for later reference, so you will always be on top of your outstanding invoices. It has reporting features to show all open invoices or just ones that have been open thirty days or longer.3 Free Downloads Center free invoicer at Free Downloads Center Invoicer Mobile is a program available through a web browser. CG Invoicer creates professional invoices quickly and easily.4 Citrusware invoicer Invoicer 11.0 Invoicer makes it possible and easy for you to create and print invoices.5 In addition, the examining attorney made of record the following example in which an individual or company engaged in producing invoices is referred to as an “invoicer.” Emergis Electronic Payment Systems Patent Narrowly Construed … One important aspect of the ‘362 Patent is its requirement that a customer send payment instructions “directly” to an invoicer. Emergis had proposed a broad construction of that requirement, arguing that even systems in which the invoicer uses a third-party service provider 2 Codehackers.net 3 Versiontracker.com 4 Freedownloadscenter.com 5 Wareseeker.com Ser. No. 85024101 4 fall within the scope of the claim. In the Kansas claim, Emergis argued that the “directly” requirement should be interpreted to mean that “the customer communicates payment instructions to the invoicer without reliance upon a third party acting independently from the invoicer.” The defendant argued that the “directly” requirement should be construed to mean that “the customer communicates payment instructions to the invoicer without reliance upon or through a third party service provider.” …6 The examining attorney further made of record the following dictionary definition of invoice – “request for payment: a written record of goods or services provided and the amount charged for them, sent to a customer or employer as a request for payment;”7 and –er – “somebody or something that performs or undergoes a particular action; adjuster, fryer.”8 Applicant, for its part, argues that its ENVOICER mark suggests, rather than merely describes, its goods or a feature thereof. In support of its position, applicant made of record its searches of the Merriam Webster online dictionary9 and Google® online dictionary showing no definitions of the term invoicer.10 Applicant further argues that “even if ‘invoicer’ was a descriptive term, Appellant’s mark is ENVOICER, which is not a phonetic 6 Dorsey.com 7 Encarta.msn.com. 8 Id. 9 M-w.com. 10 Google.com. Ser. No. 85024101 5 equivalent of such term.”11 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, feature or characteristic thereof or if it directly conveys information regarding the nature, function, purpose or use of the goods and/or services. See Section 2(e)(1) of the Trademark Act, 15 U.S.C. § 1052. See also In re Abcor Development Corp., 588 F.2d 811, 200 USPQ 215 (CCPA 1978). It 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 to be 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. See In re Bright-Crest, Ltd., 204 USPQ 591 (TTAB 1979). Thus, “[w]hether consumers could guess what the product is from consideration of the mark alone is not the test.” In re American Greetings Corp., 226 USPQ 365 (TTAB 1985). 11 Applicant’s brief, p. 7. Ser. No. 85024101 6 While there is no evidence that “envoicer” is a word found in a dictionary, we find on this record that the term ENVOICER would be immediately understood as a novel spelling or misspelling of “invoicer” because of the close resemblance in appearance and near identity in pronunciation. The mere substitution of the letter “E” for the letter “I” as the first letter thereof is not a significant difference. Fleetwood Co. v. Mende, 298 F.2d 797, 132 USPQ 458, 460 (CCPA 1962) (“TINTZ [is] a phonetic spelling of ‘tints’”). As such, we are not persuaded by applicant’s argument that ENVOICER is not a novel spelling or phonetic equivalent of “invoicer.” It is settled that a slight misspelling does not convert an otherwise descriptive term into a suggestive one. In re Quik-Print Copy Shops, 616 F.2d 523, 205 USPQ 505, 507 n.9 (CCPA 1980) (QUIK-PRINT held descriptive; “There is no legally significant difference here between ‘quik’ and ‘quick’”). Thus, we look to the evidence of record to determine whether the examining attorney has made a prima facie case that ENVOICER merely describes a function, feature or characteristic of applicant’s goods. In the instant case, the evidence made of record by the examining attorney supports a finding that, as applied to applicant’s “computer software for facilitation and Ser. No. 85024101 7 automation of electronic invoicing,” the term ENVOICER would immediately describe, without conjecture or speculation, a significant characteristic or feature of such goods, namely, that they are “invoicer” software used to facilitate and automate invoicing. The above-referenced dictionary definitions establish that “invoicer” merely describes someone or something that performs the function of producing a “written record of goods or services provided and the amount charged for them, sent to a customer or employer as a request for payment,” i.e., an invoice. Thus, as defined, ENVOICER merely describes a central function, feature or characteristic of the recited goods. Furthermore, the article excerpted above regarding the Emergis patent suggests that “invoicer” is a recognized term for a person or thing that creates or produces invoices. In addition, the Internet advertisements and articles submitted by the examining attorney establish that various entities use the term “Invoicer” or “invoicer” to describe their software used for invoicing. As such, this evidence shows both that companies describe their software by using the term “invoicer” and that consumers may encounter the term used to describe invoicing software. Material obtained from the Internet is acceptable in ex parte Ser. No. 85024101 8 proceedings as evidence of potential public exposure to a term. See In re Fitch IBCA, Inc., 64 USPQ2d 1058 (TTAB 2002). As discussed above, ENVOICER would be regarded as a misspelling of “invoicer.” We are not persuaded by applicant’s argument that prospective consumers would need to engage in multi-step reasoning in order to understand that ENVOICER merely describes software that functions as an “invoicer.” Rather, we find that ENVOICER immediately describes the invoicing function, feature or characteristic of applicant’s goods. Moreover, we are not persuaded by applicant’s argument that because neither ENVOICER nor “invoicer” has a recognized, dictionary definition, consumers are unlikely to view the designation as merely describing such goods. The above evidence demonstrates that the term “invoicer” merely describes applicant’s goods, and that consumers would immediately recognize ENVOICER as a misspelling of the descriptive term, and also having descriptive significance. Thus, even if applicant is the first and/or at present the only user of the term ENVOICER in connection with its invoicing software, it is well settled that such use does not entitle applicant to the registration thereof where, as here, it is a misspelling of a term that has been shown to immediately convey only a merely descriptive Ser. No. 85024101 9 significance in the context of applicant’s goods. See, e.g., In re National Shooting Sports Foundation, Inc., 219 USPQ 1018, 1020 (TTAB 1983); and In re Mark A. Gould, M.D., 173 USPQ 243, 245 (TTAB 1972). For the same reasons, we are not persuaded that the absence in the record of Internet evidence showing descriptive use of ENVOICER compels a finding that the mark is suggestive of applicant’s goods. As noted above, applicant is not entitled to registration of a merely descriptive term simply by virtue of being the first intended user thereof. See Id. Accordingly, we find that applicant’s mark is merely descriptive as contemplated by Section 2(e)(1) of the Act. Decision: The refusal to register is affirmed.