International Data Group, Inc.

Trademark Trial and Appeal Board

May 12, 1999

No. 74695110 (T.T.A.B. May. 12, 1999)

Paper No. 19
CEW
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
___________
In re International Data Group, Inc.
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Serial No. 74/695,110
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Mark B. Harrison of Spencer & Frank for applicant.
David M. Mermelstein, Trademark Examining Attorney, Law
Office 103 (Michael A. Szoke, Managing Attorney).
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Before Seeherman, Hairston and Walters, Administrative
Trademark Judges.
Opinion by Walters, Administrative Trademark Judge:
International Data Group, Inc. has filed a trademark
application to register the mark WEB COMMERCE EXPO for
“arranging and conducting trade shows and exhibitions
relating to computers, on-line services, high technology,
communications and information services.”1 The application

1 Serial No. 74/695,110, filed June 29, 1995, in International Class 35,
based on an allegation of a bona fide intention to use the mark in
commerce.
Serial No. 74/695,110
2
includes a disclaimer of the words WEB and EXPO apart from
the mark as a whole.
The Trademark Examining Attorney has finally 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 its services.
Applicant has appealed. Both applicant and the
Examining Attorney have filed briefs, but an oral hearing
was not requested. We affirm the refusal to register.
Referring to dictionary definitions of the individual
words comprising the mark, the Examining Attorney concludes
that WEB COMMERCE EXPO immediately conveys that “applicant
is organizing trade shows and exhibitions regarding trade
or business on the Web.” The Examining Attorney refers
also to excerpts both of articles from the LEXIS/NEXIS
database and from sites on the Internet’s World Wide Web in
support of his contention that the phrase “Web commerce” is
“well-understood in the relevant industry and by the public
at large.” Additionally, the Examining Attorney submitted
copies of third-party pending applications for trademark
registration, contending that “at least two applications
have been filed in which applicants themselves have used
the term ‘Web commerce’ to describe their goods or services
related to commercial activity on the Web.” The Examining
Serial No. 74/695,110
3
Attorney concludes that the generally understood meaning of
the phrase “Web commerce” is consistent with the meaning of
that phrase in the context of applicant’s mark as used in
connection with applicant’s goods; and that the addition of
the “highly descriptive – if not generic – EXPO” neither
adds to nor changes the meaning of the WEB COMMERCE portion
of the mark.
Applicant contends that WEB COMMERCE EXPO is “merely
suggestive of the wide range of topics covered by
applicant’s services”; and that it is a “vague and
ambiguous [term], with multiple conceivable definitions
with suggestive connotations with respect to the
applicant’s services.” Arguing that doubts should be
resolved in applicant’s favor, applicant contends that
“[w]hile consumers viewing Applicant’s mark would know that
Applicant’s services have something to do with something
that has some relation to business and the internet, they
would, without more information, be hard pressed to
articulate the exact subject matter of Applicant’s trade
show and conference.”2

2 Subsequent to applicant’s submission of its brief, this application
was remanded to the Examining Attorney two times for the submission of
additional evidence and arguments. Each time, applicant was given an
opportunity to supplement its brief, but did not do so. Thus, while
applicant briefly discusses the Examining Attorney’s evidence, this
discussion does not address the evidence subsequently submitted.
Serial No. 74/695,110
4
The test for determining whether a mark is merely
descriptive is whether the involved term immediately
conveys information concerning a quality, characteristic,
function, ingredient, attribute or feature of the product
or service in connection with which it is used, or intended
to be used. In re Bright-Crest, Ltd., 204 USPQ 591 (TTAB
1979); In re Engineering Systems Corp., 2 USPQ2d 1075 (TTAB
1986). It is not necessary, in order to find a mark merely
descriptive, that the mark describe each feature of the
goods, only that it describe a single, significant quality,
feature, etc. In re Venture Lending Associates, 226 USPQ
285 (TTAB 1985). Further, it is well-established that the
determination of mere descriptiveness must be made not in
the abstract or on the basis of guesswork, but in relation
to the goods or services for which registration is sought,
the context in which the mark is used, and the impact that
it is likely to make on the average purchaser of such goods
or services. In re Recovery, 196 USPQ 830 (TTAB 1977).
The evidence submitted by the Examining Attorney,
several examples of which follow, indicates a consistent
and voluminous use of the term “Web commerce” to refer to
the electronic offering and sale of goods and services via
the World Wide Web.
Serial No. 74/695,110
5
“ActivMedia says we now have more than 249,000
Web marketers out there, up from 94,000 last
year. … In other words, folks, it’s happening.
Web commerce is taking off.” [NetGuide, July 1,
1997.]
“Outsourcing is likely to become a popular option
as more companies come face to face with the
complexity – and importance – of integrating Web
commerce sites into their own back end along with
the back-end systems of suppliers. … Federal
Express, for example, made its foray into E-
commerce last fall when it announced Business
Link, a Web commerce offering now known as
Virtual Order.” [PC Week, June 30, 1997.]
“’I can’t believe Air France doesn’t offer on-
line booking,’ asserted one Web commerce-oriented
panelist.” [Business Marketing, January 1,
1998.]
“… being able to scan objects will lead not only
to more inviting home pages, but also to more
compelling Web commerce, for instance, enabling
you to rotate or ‘walk around’ a 3-D model of a
coat or couch …” [Computer Shopper, January,
1998.]
There is no question that the articles indicate numerous
likely issues pertaining to doing “Web commerce,” such as
setting up a Web site for doing business, what software to
use, and the economics of such an endeavor. Clearly,
applicant’s trade shows and exhibitions “relating to
computers, on-line services, high technology, communication
and information services” are topics pertinent to “Web
commerce.” In considering the descriptiveness of this
phrase in connection with applicant’s services, we note
that the breadth of the field described by the term “Web
Serial No. 74/695,110
6
commerce” does not render this term with a specific
connotation suggestive as opposed to merely descriptive.
See, In re Analog Devices Inc., 6 USPQ2d 1808 (TTAB 1988),
aff’d. 871 F.2d 1097, 10 USPQ2d 1879 (Fed. Cir. 1989).
We note the definition of record of the term “expo” as
“any exhibition or show” and conclude that, in view of the
identification of services, EXPO is merely descriptive, if
not generic, in connection therewith. The addition in
applicant’s mark of the word EXPO to the phrase WEB
COMMERCE does not alter the connotation of either word or
phrase. In fact, the composite mark, WEB COMMERCE EXPO,
when applied to applicant’s services, immediately
describes, without conjecture or speculation, a significant
feature or function of applicant’s services, namely, that
applicant offers trade shows and exhibitions pertaining to
issues relevant to doing business, i.e., selling goods and
services, via the World Wide Web. Nothing requires the
exercise of imagination, cogitation, mental processing or
gathering of further information in order for purchasers of
and prospective customers for applicant’s services to
readily perceive the merely descriptive significance of WEB
COMMERCE EXPO as it pertains to applicant’s services.
Serial No. 74/695,110
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Decision: The refusal under Section 2(e)(1) of the
Act is affirmed.
E. J. Seeherman
P. T. Hairston
C. E. Walters
Administrative Trademark Judges,
Trademark Trial and Appeal Board