IXL Enterprises, Inc.

Trademark Trial and Appeal Board

Sep 12, 2002

No. 75512879 (T.T.A.B. Sep. 12, 2002)

Mailed: September 12, 2002
Paper No. 13
BAC
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re IXL Enterprises, Inc., by change of name from IXL
Holdings, Inc.1
________
Serial No. 75/512,879
_______
T. William Alvey, III, General Counsel of IXL Enterprises,
Inc.
Brendan Regan, Trademark Examining Attorney, Law Office 113
(Meryl Hershkowitz, Managing Attorney).
_______
Before Hanak, Quinn and Chapman, Administrative Trademark
Judges.
Opinion by Chapman, Administrative Trademark Judge:
IXL Enterprises, Inc. (a Delaware corporation) appeals
from the Examining Attorney’s final refusal to register on
the Principal Register the mark INTERACTIVE EXCELLENCE for
services identified as “kiosk design and development
1 The records of the Assignment Branch of this Office indicate
that the involved applicant has undergone a change of name. See
Reel 1945, Frame 0547. Accordingly, applicant’s name is set
forth to reflect the change.
THIS DISPOSITION IS
NOT CITABLE AS PRECEDENT
OF THE TTAB
Ser. No. 75/512879
2
services, website design and development services, and CD-
ROM design and development services” in International Class
422 under Section 2(e)(1) of the Trademark Act, 15 U.S.C.
§1052(e)(1), on the basis that the mark, when used in
connection with applicant’s services, is merely descriptive
of them. Both applicant and the Examining Attorney have
filed briefs. Applicant requested an oral hearing but
later withdrew that request.
Essentially, the Examining Attorney’s position is that
applicant’s services are “inherently interactive,” that is,
“applicant’s services are designing interactive devices for
others,” (brief, unnumbered page 3, emphasis in original)
and that the word “excellence” is laudatory rather than
source-indicating. The Examining Attorney argues that the
combination of the words remains merely descriptive of
applicant’s kiosk, website and CD-ROM design and
development services because consumers “would believe that
said services are in the nature of (presumably excellent)
interactive services” (brief, unnumbered page 7). In
support of this position, the previous Examining Attorneys
handing this application submitted dictionary definitions
2 Application Serial No. 75/512,879, filed June 30, 1998, based
on applicant’s claimed date of first use and first use in
commerce of January 1995.
Ser. No. 75/512879
3
of “interactive” and “excellence”3; photocopies of several
third-party registrations in which the term “interactive”
was disclaimed; and photocopies of several excerpted
articles retrieved from the Nexis database to show that the
word “interactive” is recognized as descriptive in
applicant’s industry.4
Applicant essentially contends that the Examining
Attorney has improperly dissected applicant’s mark; that
the Examining Attorney’s evidence regarding “interactive”
does not relate to applicant’s services of designing and
developing kiosks, websites and CD-ROMs; that applicant’s
services are not “interactive” and do not include
“interactive” communicative components of services such as
online chat services or user access to the Internet; that
applicant’s mark is suggestive rather than merely
descriptive; and that any doubt as to the question of
whether a mark is merely descriptive should be resolved in
applicant’s favor. Applicant submitted photocopies of
3 The current Examining Attorney submitted a few dictionary
definitions of the words “kiosk” and “premiere” with his brief on
appeal. The Board takes judicial notice thereof. See TBMP §712.
4 The majority of the excepted stories from the Nexis database
are from foreign publications, and thus are of very limited
probative value as to consumer perception of the term in the
United States. See In re Urbano, 51 USPQ2d 1776, at footnote 3
(TTAB 1999). Moreover, several of the articles do not utilize
the term “interactive” in any manner relevant to the involved
services.
Ser. No. 75/512879
4
printouts from a search report showing several third-party
registrations in which the words “interactive” and/or
“excellence” were not disclaimed.5
It is well settled that “a term is descriptive if it
forthwith conveys an immediate idea of the ingredients,
qualities or characteristics of the goods [or services].”
(Emphasis added). In re Abcor Development Corp., 588 F.2d
811, 200 USPQ 215, 218 (CCPA 1978). Moreover, the
immediate idea must be conveyed with a “degree of
particularity.” In re TMS Corporation of the Americas, 200
USPQ 57, 59 (TTAB 1978). See also, See In re Nett Designs,
236 F.3d 1339, 57 USPQ2d 1564, 1566 (Fed. Cir. 2001); and
In re Entenmann’s Inc., 15 USPQ2d 1750, 1751 (TTAB 1990),
aff’d, unpub’d, Fed. Cir. February 13, 1991.
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 term (or phrase) is being used or is intended to
be used on or in connection with those goods or services,
5 Generally, printouts from a private search company database are
not an appropriate manner in which to submit such evidence. See
In re Smith and Mehaffey, 31 USPQ2d 1531, at footnote 3 (TTAB
1994). However, the Examining Attorney did not object thereto,
and, in fact, did not address the material at all until the
appeal brief. Thus, the Board considers that the Office
stipulated the material into the record.
Ser. No. 75/512879
5
and the impact that it is likely to make on the average
purchaser of such goods or services. See In re Omaha
National Corp., 819 F.2d 1117, 2 USPQ2d 1859 (Fed. Cir.
1987); Abcor, 200 USPQ at 218; and In re Pennzoil Products
Co., 20 USPQ2d 1753 (TTAB 1991).
It has long been acknowledged that there is often a
very narrow line between terms which are merely descriptive
and those which are suggestive, and the borderline between
the two is hardly a clear one. See In re Atavio Inc., 25
USPQ2d 1361 (TTAB 1992).
Viewing this record in its entirety, we find that the
evidence submitted by the Examining Attorneys does not
establish a prima facie case that the mark INTERACTIVE
EXCELLENCE is merely descriptive of applicant’s identified
services, “kiosk design and development services, website
design and development services, and CD-ROM design and
development services.” None of the excerpted stories
retrieved from the Nexis database show use of the words
“INTERACTIVE EXCELLENCE”; and, as explained previously,
most of the stories are from foreign publications and, in
any event, do not evidence use of the word “INTERACTIVE”
descriptively in relation to the services which are the
subject of this application. Instead, the stories simply
show that the term “interactive” is used in several
Ser. No. 75/512879
6
different connotations, such as the following (emphasis in
original printouts), none of which are applicable to
applicant’s identified services:
...Flextech supplies a range of
pay-TV channels, owns a string of
websites, and provides
interactive services such as
online shopping...., “The Times
(London),” January 28, 2000; and
...Small businesses often start
by setting up a non-interactive
website—for publicising their
products and services and letting
people know how to get in
touch...., “Accountancy Age,”
January 27, 2000.
Thus, when considered in connection with applicant’s
design and development services, the mark INTERACTIVE
EXCELLENCE does not readily and immediately evoke an
impression and an understanding of the specific nature of
applicant’s identified services. See Concurrent
Technologies Inc. v. Concurrent Technologies Corp., 12
USPQ2d 1054 (TTAB 1989); In re Intelligent Medical Systems
Inc., 5 USPQ2d 1674 (TTAB 1987); and In re TMS Corporation
of the Americas, supra.
Decision: The refusal to register the mark as merely
descriptive under Section 2(e)(1) is reversed.