"INSTANT MESSENGER" Not Generic for America On Line
The board went on to conclude that the mark had shown sufficient evidence of acquired distinctiveness in order to be published for opposition with a notation of applicant's claim under the provision of Section 2(f) of the Trademark Act.
There is also evidence that "messenger" is understood by prospective
purchasers or users as a term that describes the software or program involved in
providing "instant messaging." Thus, prospective purchasers or users
encountering the term "Instant Messenger" used in association with applicant’s
services would immediately understand that applicant’s services involve the
sending, storing, and displaying of messages sent by instant messaging services.
Therefore, we conclude that the term "Instant Messenger" would immediately
describe the function of the identified services, and the examining attorney’s
refusal to register the mark on the ground of mere descriptiveness is affirmed.
The examining attorney has not seriously questioned applicant’s assertion that
its marks have acquired distinctiveness but instead relies primarily on the
argument that a generic term can never acquire distinctiveness. See Brief at 12
("‘Instant Messenger’ is generic, and therefore, not registrable under Section
2(f) Acquired Distinctiveness"). At this point, we refer to some of the evidence
we discussed in our genericness discussion. To summarize, applicant has 80
million users who send approximately one billion messages each day on
applicant’s identified services. There are millions of visitors to its website
each day where the mark is displayed. It has licensed many corporations to use
its services identified by the term INSTANT MESSENGER. Its advertising has
reached a significant percentage of people in the United States and it has
provided some affidavits from customers who recognize its term as a mark for
applicant’s services. Therefore, applicant has met its burden of showing that
its term INSTANT MESSENGER has acquired distinctiveness and the examining
attorney’s refusal to register under Section 2(e)(1) is reversed.