International Data Group, Inc.

Trademark Trial and Appeal Board

Jul 7, 1999

No. 75151649 (T.T.A.B. Jul. 7, 1999)

Paper No. 9
PTH
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF THE TTAB JULY 7,99
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re International Data Group, Inc.
________
Serial No. 75/151,649
_______
Mark B. Harrison of Spencer & Frank for International Data
Group, Inc.
Florentina Blandu, Trademark Examining Attorney, Law Office
106 (Mary Sparrow, Managing Attorney).
_______
Before Simms, Hohein and Hairston, Administrative Trademark
Judges.
Opinion by Hairston, Administrative Trademark Judge:
This is an appeal from the Trademark Examining
Attorney’s final refusal to register the mark INTRANET
BUSINESS for “books, magazines, magazine supplements,
catalogues, manuals, brochures, pamphlets, guides, journals
Ser No. 75/151,649
2
and newsletters in the field of computers, high technology
and information technology.”1
Registration has been finally refused under Section
2(e)(1) of the Trademark Act, 15 U.S.C. §1052(e)(1), on the
ground that the mark is merely descriptive of the
identified goods.
Applicant and the Examining Attorney have filed
briefs, but no oral hearing was requested.
The Examining Attorney maintains that INTRANET
BUSINESS immediately conveys to consumers the subject
matter of applicant’s publications. In support of the
refusal to register, the Examining Attorney has submitted
an entry from Newton’s Telecom Dictionary wherein
“Intranet” is defined as “[a] private network that uses
Internet software and Internet standards. In essence, an
Intranet is a private Internet reserved for use by people
who have been given the authority and passwords necessary
to use that network.” Also, the Examining Attorney
submitted an entry from Webster’s New World Dictionary
wherein “business” is defined as, inter alia, “a matter,

1 Application Serial No. 75/151,649 filed August 16, 1996, and
based on a bona fide intention to use the mark in commerce. The
term “INTRANET” has been disclaimed apart from the mark as shown.
Ser No. 75/151,649
3
affair, activity, etc.” In addition, the Examining
Attorney submitted several third-party registrations for
marks which include the word “business,” most of which are
for publications. These registrations issued either on the
Supplemental Register or on the Principal Register with a
disclaimer of, or a claim of acquired distinctiveness as
to, the word “business.”2 According to the Examining
Attorney, such registrations are evidence of the
descriptiveness of the term “business.”
Further, the Examining Attorney submitted several
excerpts from the NEXIS data base which mention “Intranet
business.” The following are representative samples of
these excerpts:
. . . privately held consulting and systems
integration company focused on rapid
development and deployment of high-impact
Internet/intranet business applications
that boost clients’ competitive positions
and improve their productivity.
(Productivity Software, December 1, 1996);
. . . logical path for Token Ring users to
gain high speed access allowing them to
deploy modern client server and Intranet
business applications.
(LAN Product News, December 1, 1996);

2 For example, HOME BUSINESS MAGAZINE is registered on the
Supplemental Register for “magazines in the field of home-based
income and business opportunities”; ELECTRONIC BUSINESS TODAY
[Section 2(f) as to “Electronic Business”] is registered on the
Principal Register for “electronics magazine”; and BUSINESS
MARKETPLACE [“business is disclaimed] is registered on the
Principal Register for “resource magazine for small business.”
Ser No. 75/151,649
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The intranet business has been so brisk
that 15 of the integrator’s 35 employees
are now dedicated to that segment. The
intranet application-development group,
which was launched . . .
(Computer Reseller News, November 18,
1996); and
Digital takes a more formal approach.
Three senior executives, the CIO and
VPs of communications and the intranet
business group, sponsor Digital’s
Internet Program Office, which was
established in August 1995.
(InformationWeek, November 18, 1996).
Applicant, on the other hand, argues that INTRANET
BUSINESS is at most suggestive of the wide range of topics
covered by applicant’s publications. Applicant
acknowledges that the term “INTRANET” is descriptive as
applied to its goods, but argues that the combined term
INTRANET BUSINESS is not merely descriptive of its
publications. In particular, applicant argues that
“business” is a vague term as applied to its publications.
Applicant submitted an entry from the American Heritage
Dictionary of the English Language wherein business is
defined as, inter alia, “the occupation, work, or trade in
which a person is engaged; commercial, industrial, or
professional dealings; the buying and selling of
commodities or services; any commercial establishment, such
as a store or factory; and volume or amount of commercial
trade.”
Ser No. 75/151,649
5
A term is merely descriptive, and therefore
unregistrable pursuant to Section 2(e)(1) of the Trademark
Act, if it forthwith conveys information regarding the
nature, function, purpose or use of the goods or services.
See In re Abcor Development Corp., 616 F.2d 525, 200 USPQ
215, 217-18 (CCPA 1976). On the other hand, a term which
is suggestive is registrable. A suggestive term is one
which suggests, rather than describes, such that
imagination, thought or perception is required to reach a
conclusion on the nature of the goods or services. See In
re Gyulay, 820 F.2d 1216, 3 USPQ2d 1009 (Fed. Cir. 1987).
Applying these principles to the evidence of record,
we conclude that INTRANET BUSINESS has not been shown to be
merely descriptive of applicant’s goods. In particular,
it has not been shown that INTRANET BUSINESS immediately
describes the subject matter of applicant’s publications.
It is essentially the Examining Attorney’s position that
there is a field of business commonly known as “Intranet
Business” and that applicant’s mark INTRANET BUSINESS
“immediately conveys that the subject matter of applicant’s
publications is any type of business conducted via the
Intranet.” However, it is not clear from this record that
there is such a concept as “Intranet business.” From the
dictionary definition of record, it appears that an
Ser No. 75/151,649
6
Intranet, unlike the Internet, is a private network and not
necessarily a network on which business is conducted.
Moreover, the NEXIS excerpts of record that mention
“Intranet business” seem to use this term to refer to the
“business” of setting up Intranet systems, a different
connotation from “Intranet Business” per se. In addition,
in several of the NEXIS excerpts, “Intranet business” is
part of the phrase “Intranet business applications” which
appears to refer to Intranet software or applications for
use by businesses, which again is different from “Intranet
Business” per se. None of these excerpts are particularly
probative of whether INTRANET BUSINESS is merely
descriptive of publications. In sum, we are not persuaded
on this record that there is a field of “Intranet Business”
or that any type of “business,” as that term is normally
understood, is conducted on an Intranet such that
applicant’s mark INTRANET BUSINESS, when used in connection
with its publications, would immediately convey to
prospective purchasers the subject matter or content of
those publications.3

3 We note that this application is based on a bona fide intention
to use the mark in commerce and, thus, no specimens are of
record. If, at the time the statement of use is submitted,
information appears in the specimens which indicates that the
mark is merely descriptive of applicant’s publications, a new
refusal on this basis may bear consideration.
Ser No. 75/151,649
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In reaching our decision, we have not overlooked the
third-party registrations made of record by the Examining
Attorney. However, as has often been stated, each case
must be decided on its own merits.
Further, we recognize that we must resolve whatever
doubt we may have regarding the merely descriptive
character of the mark in favor of applicant and the mark
should be published for opposition. See In re Rank
Organization Ltd., 222 USPQ 324, 326 (TTAB 1984) and cases
therein.
Decision: The refusal to register is reversed.
R. L. Simms
G. D. Hohein
P. T. Hairston
Administrative Trademark
Judges, Trademark Trial and
Appeal Board
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