International Data Group, Inc.

Trademark Trial and Appeal Board

Apr 6, 1999

No. 75025160 (T.T.A.B. Apr. 6, 1999)

Paper No. 11
HRW
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF THE TTAB APRIL 6, 99
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re International Data Group, Inc.
________
Serial No. 75/025,160
_______
George W. Lewis of Spencer & Frank for International Data
Group, Inc.
Andrew J. Benzmiller, Trademark Examining Attorney, Law
Office 106 (Mary I. Sparrow, Managing Attorney).
_______
Before Simms, Chapman and Wendel, Administrative Trademark
Judges.
Opinion by Wendel, Administrative Trademark Judge:
International Data Group, Inc. has filed an
application to register the mark NET ENTERTAINMENT for
Books, magazines, magazine supplements, catalogues,
manuals, brochures, pamphlets, guides, and newsletters, in
the field of interactive entertainment and information
technology services in Class 16, and
Computer services, namely providing on-line books,
magazines, magazine supplements, catalogues, manuals,
brochures, pamphlets, guides, and newsletters, in the field
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of interactive entertainment and information technology
services in Class 42.1
Registration has been finally refused on the ground
that the mark is merely descriptive under Section 2(e)(1)
of the Trademark Act. Applicant and the Examining Attorney
have filed briefs, but no oral hearing was requested.
The Examining Attorney maintains that the mark NET
ENTERTAINMENT merely describes the subject matter of
applicant’s publications, both printed and on-line, as
being directed to Internet-related entertainment or
entertainment available on the Internet. He notes that
applicant has voluntarily disclaimed the word
ENTERTAINMENT, and argues that the word NET would be
understood by a large segment of the population as meaning
“Internet.” To support his position, the Examining
Attorney has introduced a definition from the Random House
Personal Computer Dictionary (1996) of “Net” as “short for
Internet”; a statement from the book The Internet for
Dummies (1993) that “The Internet-also known as the Net-is
the world’s largest computer network, or net”; and several
excerpts of articles from the NEXIS database showing the
interchangeable use of the words “Internet” and “Net.” In

1 Serial No. 75/025,160, filed Nov. 28, 1995, based on a bona
fide intention to use the mark in commerce. A disclaimer of the
word “Entertainment” has been entered.
Ser No. 75/025,160
3
addition, he has introduced five NEXIS database excerpts
which demonstrate use of the exact phrase “Net
entertainment” in describing various types of entertainment
available on the Internet, and a second excerpt from The
Internet for Dummies describing features available on the
Internet including “games and gossip” in which a person can
“challenge other players who can be anywhere in the world”
or “have more or less interesting conversations with other
users all over the place.”
Applicant’s position is that NET ENTERTAINMENT is only
suggestive to consumers of the wide range of topics covered
by its print and on-line publications. Applicant argues
that
...while consumers viewing Applicant’s mark would
know that Applicant’s publications ... in some way
relate to the many categories of amusements available
on the world wide global computer network, without
more information, they would be hard pressed to
articulate the subject matter of Applicant’s
publications. [Brief, pp. 4-5].
Applicant maintains that NET ENTERTAINMENT is not merely
descriptive, since the mark does not convey with any
certainty information as to the particular subject matter
of applicant’s publications. Applicant considers
the Examining Attorney’s characterization of NET
ENTERTAINMENT as “entertainment involving the Internet” to
be less than precise, in that this “creature described by
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the Examiner” could be interpreted in many ways, as
“games”, as “videos”, and so on.
A word or phrase is merely descriptive within the
meaning of Section 2(e)(1) if it immediately conveys
information about a characteristic, purpose, function, or
feature of the goods with which it is being used. Whether
or not a mark is merely descriptive is not determined in
the abstract, but in relation to the goods or services for
which registration is sought. In re Abcor Development
Corp., 588 F.2d 811, 200 USPQ 215 (CCPA 1978). Titles of
publications are not treated any differently than marks for
other products. If the title immediately reveals
information as to the contents or subject of the
publications, the mark is merely descriptive. See In re
Waverly Inc., 27 USPQ2d 1620 (TTAB 1993); In re The
Gracious Lady Service, Inc., 175 USPQ 380 (TTAB 1972) and
the cases cited therein. It is not necessary that a term
describes all features of the publication in order to be
merely descriptive, since a term is regarded as merely
descriptive of a product if it describes one significant
feature or attribute thereof. See In re MBAssociates, 180
USPQ 338 (TTAB 1973).
As a preliminary matter, we agree with the Examining
Attorney that whether applicant’s publications are provided
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to the public in printed form or electronic form, the test
for descriptiveness of the mark used in connection
therewith remains the same. Thus, the question is whether
NET ENTERTAINMENT merely describes the subject matter or
content of publications, regardless of form, which have
been identified as being directed, at least in part, to the
field of “interactive entertainment.”
We find the evidence produced by the Examining
Attorney fully adequate to establish that the term NET, as
used in applicant’s mark, would be interpreted by the
public as a shortened form of the word Internet. While
there are obviously other meanings for the word “net,”
these other meanings have little relationship to
publications directed to “interactive entertainment,” and
applicant no longer appears to be contending otherwise.
The Examining Attorney has also introduced evidence showing
that “interactive entertainment,” such as games or gossip,
is in fact offered on the Internet. Thus, NET
ENTERTAINMENT must be construed as the equivalent of
“Internet Entertainment” or “Entertainment on the
Internet.”
Applicant’s principal argument is that, even if NET
ENTERTAINMENT is so interpreted, consumers would still not
be informed of the actual topics covered in the publication
Ser No. 75/025,160
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and, thus, the mark is not merely descriptive of the
contents. We have frequently held, however, that a mark
need not set forth information with respect to each and
every feature of the goods in order to be merely
descriptive. The description of a single significant
characteristic or feature of the goods is sufficient. See
In re Pennzoil Products Co., 20 USPQ2d 1753 (TTAB 1991).
Here the use of the mark NET ENTERTAINMENT in connection
with applicant’s publications immediately conveys the
information that the publications contain subject matter
directed to Internet entertainment. Applicant’s
identification of its goods and services confirms the
applicability of this information, in that its publications
cover the field of “interactive entertainment”, an offering
of the Internet. No more is necessary to hold the mark
merely descriptive of the publications with which it is, or
is intended to be, used.
Although applicant points to the Board’s holding in In
re Distribution Codes, Inc., 199 USPQ 508 (TTAB 1978), in
which the mark CODE & SYMBOL was found to be only
suggestive when used for journals dealing with the applied
science of product identification, we do not find the
situation to be the same here. There the mark CODE &
SYMBOL did not directly describe, even in broad terms, the
Ser No. 75/025,160
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actual content of the publications; they were not
compilations of codes and symbols, but rather were
primarily concerned with product identification, in
connection with which codes and symbols are used. Thus, at
least a two-step reasoning process was required to
associate the title with the contents of the publications.
The same is not true here. The subject matter of
applicant’s publications is just that - NET ENTERTAINMENT.
Furthermore, in the prior case, the Board found there was
no need for competitors to use “Code & Symbol” to describe
publications of similar content. Here we consider “Net
Entertainment” to be a highly descriptive phrase which
should remain available to competitors.
Accordingly, we find the mark NET ENTERTAINMENT to be
merely descriptive of the contents of the publications with
which applicant intends to use the mark.
Decision: The refusal under Section 2(e)(1) is
affirmed.
R. L. Simms
B. A. Chapman
H. R. Wendel
Trademark Administrative Judges,
Trademark Trial and Appeal Board
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