In re It's Easy, Inc.
| Decision Date | 14 June 2021 |
| Docket Number | 87782213 |
| Court | Trademark Trial and Appeal Board |
| Parties | In re It's Easy, Inc. |
This Opinion is Not a Precedent of the TTAB
Oral Hearing: January 23, 2020
Dorothy R. Whitney of Cowan Liebowitz & Latman PC for It's Easy, Inc.
Andrew Leaser, Trademark Examining Attorney, Law Office 117, Hellen M. Bryan-Johnson, Managing Attorney.
Before Zervas, Wolfson, and Lykos, Administrative Trademark Judges.
It's Easy, Inc. ("Applicant") seeks registration on the Principal Register of the mark depicted below:
The Examining Attorney refused registration under Trademark Act Sections 1, 2, 3, and 45, 15 U.S.C. §§1051-53 and 1127, on the ground that the phrase IT'S EASY is a commonplace widely used slogan that does not function as a service mark to indicate the source of Applicant's services and to identify and distinguish them from others, and that the design elements of the mark are not sufficiently "striking, unique, or distinctive so as to create a commercial impression separate and apart from the unregistrable components of the mark." May 23, 2018 Office Action, TSDR 1.[2] Applicant, in traversing the refusal, argued that IT'S EASY had acquired distinctiveness, that the design elements were inherently distinctive, and that registration was proper under Trademark Act Section 2(f), 15 U.S.C. § 1052(f).
When the refusal was made final, the Examining Attorney explained that Applicant could not overcome the failure to function refusal by asserting a claim of acquired distinctiveness. Applicant then appealed and requested reconsideration. After Applicant's request was denied, the appeal resumed. Both Applicant and the Examining Attorney filed briefs and appeared at an oral hearing. Following the oral hearing, the Board remanded the case to the Examining Attorney for further examination, resulting in an additional refusal under Section 2(e)(1) of the Trademark Act, 15 U.S.C. §1052(e)(1), on the ground that the term IT'S EASY is merely descriptive of Applicant's services, that the design features did not make the mark registrable, and that Applicant's claim of acquired distinctiveness under Section 2(f) is insufficient. Applicant and the Examining Attorney filed supplemental briefs addressing the descriptiveness refusal and issue of acquired distinctiveness.
The Examining Attorney argues that the term IT'S EASY is a "commonplace message or expression widely used by a variety of sources that merely conveys an ordinary, familiar, well-recognized concept or sentiment." Examining Attorney's Brief, 18 TTABVUE 5. The Examining Attorney further contends that IT'S EASY is widely used in a variety of situations to convey this message. In the alternative, the Examining Attorney argues that IT'S EASY is descriptive of a feature or characteristic of Applicant's services, and that Applicant has failed to establish that this descriptive designation has acquired distinctiveness. 39 TTABVUE 3. The Examining Attorney supports his arguments with definitions of the word "easy"; excerpts from third-party Internet websites and news articles (showing third-party use of "it's easy" and expressions derived therefrom); Applicant's specimen of use and excerpts from Applicant's website.
Examples of dictionary usage include The American Heritage Dictionary of the English Language (5th ed. 2016), which defines "easy" as "requiring or exhibiting little effort or endeavor; undemanding."[3] An online usage guide, "Education First," lists English idioms and expressions and gives their meaning and usage; the guide states that "It's a piece of cake" means "It's easy" and that the expression is used by itself[4]
Evidence of use by businesses in Applicant's field or closely related fields of the same or substantially the same wording as the mark may be probative of consumer perception. The following are representative excerpts from the Internet materials submitted by the Examining Attorney showing third-party use of IT'S EASY:
• From Travel.State.Gov: [5]
How do I get a passport card?
• Skip the lines! Pre-registered attendees will be able to skip the registration line on event day.
PROTECT YOUR HOME NOW
• "Brazilian tourist and business visas can be made simple and easy - get your Brazil visa today!
• "Going the extra mile to make it Easy!"
•
With regard to the design features of the mark, the Examining Attorney argues that "[a]t most, Applicant's circular background is a mere refinement of this commonly-adopted and well-known type of background." 39 TTABVUE 12-13. In support, he submitted copies of third-party registrations, [10] website pages of five other entities' using "circle-in-a-circle" marks, [11] and three websites offering free downloadable clipart of the word EASY inside a circle-within-a-circle design.[12] The third-party registrations include Reg. No. 5052446 for the mark (Image Omitted) for, inter alia, installation of computer hardware, technical support, telecommunication services and computer networking services; Reg. No. 3079205 for the mark (Image Omitted) for "automobile dealerships;" and Reg. No. 3967952 for the mark xSt for "credit union services." The five third-party uses are depicted below:
(Image Omitted)
An example of the clipart is:[13]
(Image Omitted)
Applicant maintains that the phrase IT'S EASY is not "so ubiquitous that [it] can effectively be equated with generic terms that are incapable of acting as source identifiers." Reply Brief, 19 TTABVUE 7. Applicant contends that a "more probing analysis of the relevant cases, as well as Applicant's supporting evidence, shows that "It's Easy" is appropriately classified as a descriptive term that has acquired the requisite degree of distinctiveness to function as a valid service mark." Id. at 8.
With regard to the design features of its mark, Applicant disputes the Examining Attorney's finding that the design component of Applicant's mark is comprised of common basic shapes used as a mere background carrier for the wording in the mark. Applicant argues that the design features elevate the mark as a whole to a protectable service mark:
[E]ven if the word mark component of Applicant's Mark were not registrable, the design mark as a whole should be permitted to register. As demonstrated in Applicant's opening brief, the mark features numerous elements that contribute to an overall distinctive button design. The Examining Attorney's reduction of these artistic features to the simple label "circular background" fails to do justice to the various creative choices reflected in Applicant's design.
Applicant supports its argument with copies of its prior, now cancelled, registrations for the marks IT'S EASY and IT'S EASY and design;[14] 15 third-party registrations for the mark IT'S EASY and for similar marks such as IT'S SO EASY, IT'S THAT EASY, and WE MAKE IT EASY;[15] and the Declaration of David Alwadish, Applicant's President, in support of Applicant's claim to acquired distinctiveness based on 35 years of use of the term IT'S EASY.[16]
The third-party registrations, based on use and for which specimens of use were submitted, include Reg. No. 5311332 for IT'S EASY for legal services (registered October 17, 2017); several registrations for the mark ITS SO EASY, such as Reg. No. 2152739 for ITS SO EASY for retail store services in the field of window coverings (registered April 21, 1998, renewed); Reg. No. 5120764 for WE MAKE IT EASY for providing an online marketplace and for advertising services (registered January 10, 2017); and Reg. No. 5146696 for (Image Omitted) for moving company services (registered February 21, 2017).[17]
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