Journal Sentinel, Inc.

Trademark Trial and Appeal BoardSep 27, 2012

No. 77371074 (T.T.A.B. Sep. 27, 2012)

Mailed: September 27, 2012 United States Patent and Trademark Office Trademark Trial and Appeal Board ________ In re Journal Sentinel, Inc. ________ Serial No. 77371074 _______ Lori S. Meddings of Michael, Best & Friedrich, LLP for Journal Sentinel, Inc.. Alyssa Steel, Trademark Examining Attorney, Law Office 107 (J. Leslie Bish- op, Managing Attorney).1 _______ Before Quinn, Ritchie and Lykos, Administrative Trademark Judges. Opinion by Lykos, Administrative Trademark Judge: On January 14, 2008, Journal Sentinel, Inc. (“applicant”) filed an appli- cation2 to register the mark JOURNAL SENTINEL in standard character format for “daily newspaper” in International Class 16 and “providing on-line non-downloadable electronic publications, namely, newspapers; publication of printed matter and periodical publications online, namely, an online newspa- per” in International Class 41. In response to the Trademark Examining At- 1 The application was originally assigned to Trademark Examining Attorney Michael Engel. 2 Application Serial No.77371074, filed January 14, 2008, based on Section 1(a) of the Trademark Act, 15 U.S.C. § 1051(a), alleging March 3, 1997 as the date of first use anywhere and in commerce. This Opinion is NOT a Precedent of the TTAB Serial No. 77371074 - 2 - torney’s requirement for a disclaimer of JOURNAL, applicant asserted a claim of acquired distinctiveness under Section 2(f) of the Trademark Act, 15 U.S.C. § 1052(f), in part as to the word JOURNAL and submitted evidence thereof. Registration has been finally refused in light of applicant's failure to comply with the examining attorney's requirement for a disclaimer of the word “JOURNAL,” pursuant to Trademark Act § 6(a), 15 U.S.C. § 1056(a), on the ground that the term is generic for the identified goods and services of “providing on-line non-downloadable electronic publications, namely, newspa- pers.” Applicant has appealed the examining attorney’s final refusal to register the application. Both applicant and the examining attorney have filed briefs and applicant filed a reply brief. For the reasons explained below, we reverse the refusal to register. I. Procedural Issues – Section 2(f) According to the Trademark Manual of Examining Procedure (“TMEP”) Section 1212.02(i) (8th ed. Oct. 2011): …E]vidence of acquired distinctiveness will not alter the determi- nation that matter is unregistrable. However, the examining attor- ney must review the evidence and make a separate, alternative, de- termination as to whether, if the proposed mark is ultimately de- termined to be capable, the applicant’s evidence is sufficient to es- tablish acquired distinctiveness. This will provide a more complete record in the event that the applicant appeals and prevails on the underlying refusal. The examining attorney must also consider whether the applicant’s evidence has any bearing on the underlying refusal. See TMEP §§1209.02–1209.02(b) regarding the procedure for descriptiveness and/or generic refusals. Serial No. 77371074 - 3 - If the examining attorney fails to separately address the sufficiency of the §2(f) evidence, this may be treated as a concession that the evidence would be sufficient to establish distinctiveness if the mark is ultimately found to be capable. Cf. In re Dietrich, 91 USPQ2d 1622, 1625 (TTAB 2009), in which the Board held that an examin- ing attorney had “effectively conceded that, assuming the mark is not functional, applicant’s evidence is sufficient to establish that the mark has acquired distinctiveness,” where the examining at- torney rejected the applicant’s §2(f) claim on the ground that appli- cant’s bicycle wheel configuration was functional and thus unregis- trable even under §2(f), but did not specifically address the suffi- ciency of the §2(f) evidence or the question of whether the mark would be registrable under §2(f) if it were ultimately found to be non-functional. Applicant asserts, in its reply brief, that the examining attorney has for the first time challenged the sufficiency of applicant’s evidence of acquired distinctiveness for the term JOURNAL in her appeal brief. The examining attorney, in her brief, argues the following: The applicant states in its appeal brief that its claim of acquired distinctiveness was refused in the April 7, 2011 Final Office Action based only on the premise that the term “journal” is generic and not that its Section 2(f) evidence was insufficient. Applicant’s Ap- peal Brief, p. 1, Footnote 1 (December 13, 2011). However, the first sentence of the “Disclaimer Required” section of the Final Office Action reads: “Applicant’s claim of acquired distinctiveness as to the term “Journal” under Trademark Act Section 2(f) is not accept- ed…” Final Office Action, p. 1 (April 7, 2011). This clearly states that applicant’s Section 2(f) claim along with its previously submit- ted evidence was refused. Hence, the requirement to disclaim the term “journal” was continued. The examining attorney failed to quote in the appeal brief the remainder of the sentence in the April 7, 2011 Office action which reads “because the term is generic in relation to the applicant’s goods and services.” Indeed, a close review of the examination history of the involved application reflects that the Serial No. 77371074 - 4 - examining attorney neither separately addressed the sufficiency of applicant’s Section 2(f) evidence nor refused registration on this basis. The first Office action discussing applicant’s Section 2(f) claim simply states that “[a]pplicant’s claim of acquired distinctiveness in the word ‘JOURNAL’ must be denied because the term is generic for a type of publication.” Priority Of- fice Action dated August 18, 2009. In the next Office action, the examining attorney merely reiterated the requirement to disclaim JOURNAL “because it is generic” with no discussion of applicant’s Section 2(f) evidence. Office Ac- tion dated February 26, 2010. Then again, in both the final Office action and denial of request for reconsideration, the examining attorney failed to address the sufficiency of the Section 2(f) evidence if the term were found to be not ge- neric. For these reasons, the examining attorney’s attempt to refuse registra- tion on this basis for the first time in her appeal brief is untimely and will not be considered. We instead find that the examining attorney essentially con- ceded that applicant’s Section 2(f) evidence is sufficient by failing to separate- ly consider and articulate why such evidence is insufficient. As such, the sole issue on appeal is whether the term JOURNAL is generic for applicant’s goods and services and must be disclaimed. II. Disclaimer An examining attorney may require an applicant to disclaim an unregis- trable component of a mark otherwise registrable. Trademark Act Section Serial No. 77371074 - 5 - 6(a), 15 U.S.C. § 1056(a). Generic terms are unregistrable and therefore, are subject to disclaimer if the mark is otherwise registrable. Failure to comply with a disclaimer requirement is grounds for refusal of registration. See In re Omaha National Corp., 819 F.2d 1117, 2 USPQ2d 1859 (Fed. Cir. 1987); In re Richardson Ink Co., 511 F.2d 559, 185 USPQ 46 (CCPA 1975); In re National Presto Industries, Inc., 197 USPQ 188 (TTAB 1977); and In re Pendleton Tool Industries, Inc., 157 USPQ 114 (TTAB 1968). A term is a generic name if it refers to the class or category of goods and/or services on or in connection with which it is used. In re Dial-A- Mattress Operating Corp., 240 F.3d 1341, 57 USPQ2d 1807 (Fed. Cir. 2001), citing H. Marvin Ginn Corp. v. International Association of Fire Chiefs, Inc., 782 F.2d 987, 228 USPQ 528 (Fed. Cir. 1986) (“Marvin Ginn”). The test for determining whether a mark is generic is its primary significance to the rele- vant public. Section 14(3) of the Trademark Act; In re American Fertility So- ciety, 188 F.3d 1341, 51 USPQ2d 1832 (Fed. Cir. 1999); Magic Wand Inc. v. RDB Inc., 940 F.2d 638, 19 USPQ2d 1551 (Fed. Cir. 1991); and H. Marvin Ginn, supra. The USPTO has the burden of establishing by clear evidence that a mark or matter is generic and, thus, unregistrable. In re Merrill Lynch, Pierce, Fenner and Smith, Inc., 828 F.2d 1567, 4 USPQ2d 1141 (Fed. Cir. 1987). See also In re American Fertility Society, supra; and Magic Wand Inc. v. RDB Inc., supra. Serial No. 77371074 - 6 - Our first task under Marvin Ginn is to determine, based on the evidence of record, the genus of applicant's goods and services. We find that the genus of the goods and services at issue in this case is adequately defined by appli- cant's identification of goods, that is a “daily newspaper,” and the item listed in applicant’s recitation of services of “providing on-line non-downloadable electronic publications, namely, newspapers.” See e.g. In re Trek 2000 Int’l Ltd., 97 USPQ2d 1106, 1112 (TTAB 2010) (“the genus of goods at issue in this case is adequately defined by applicant's identification of goods…”). We fur- ther find that the relevant purchasing public consists of the general public or ordinary consumer. The examining attorney argues that the term “journal” is a synonym for the actual name of the goods and services, that is a daily newspaper. In sup- port thereof, the examining attorney relies on the following dictionary defini- tions and thesaurus entry: Dictionary.com defining “journal” as “a newspaper, especially a dai- ly one”; Theasaurus.com listing “journal” as a synonym for “newspaper”; and MacMillan Dictionary stating “This word is often used as part of the name of a newspaper.” See April 7, 2011 Final Office Action. Applicant, however, contends that the dictionary and thesaurus evi- dence are inconclusive because they do not reflect the public’s understanding of the term. Applicant relies on the case of In re Homes Land and Publishing Corp., 24 USPQ2d 1717 (TTAB 2012) which involved the issue of whether the Serial No. 77371074 - 7 - mark RENTAL GUIDE was generic for a real estate listing magazine for rental properties. In finding that the Office failed to meet its burden, the Board reasoned: The dictionary offers a number of possible meanings for the word “rental” and there is no evidence to indicate which meaning is at- tributed to it by the relevant public when it is used with the suffix “guide”. Even knowing full well what applicant's goods are, the dic- tionary meanings are not enough to establish that the public views this term as the common name for these goods. Thus, while the dic- tionary supports the finding that RENTAL GUIDE is certainly de- scriptive of applicant's goods, we cannot say that it is sufficient evi- dence to find the term generic. Id. at 1718. Applicant maintains that similarly here, the examining attorney failed to introduce additional evidence of the public’s understanding of the term to prove genericness such as articles obtained from Nexis or Internet ev- idence. We agree that the dictionary definitions are not fully convincing, as they are contravened by other evidence in the record. The only other evidence submitted by the examining attorney in support of the refusal are use-based third-party registrations showing a disclaimer for the term JOURNAL for newspapers and online newspapers for marks registered on either the Sup- plemental Register or pursuant to Section 2(f) on the Principal Register. See Registration Nos. 2857249, 2762977, 3118470, 3662484, 3657033, 2967075, 3027355, 3092554, and 3446639.3 Applicant, however, submitted numerous 3 We only considered third-party registrations submitted by the examining attorney and applicant for the identical goods and services at issue here (newspapers and Serial No. 77371074 - 8 - use-based third-party registrations where the term JOURNAL was not dis- claimed when used in connection with newspapers or online newspapers.4 See Registration No. 2924798 (THE NATIONAL JOURNAL for “providing online newspapers and reports concerning the legal field”), Registration No. 2755893 (LAW JOURNAL PRESS for “…newspapers in the field of law”), Registration No. 876556 (INDEPENDENT JOURNAL for “newspaper”), Registration No. 2902877 (JOURNAL AND COURIER for “newspapers for general circulation containing topics of general interest”), Registration No. 2267383 (THE JOURNAL NEWS for “…newspaper for general circulation”), Registration No. 1958701 (THE JOURNAL GAZETTE for “daily newspaper publication con- taining current news, editorials and feature articles”), Registration No. 1300523 (WINSTON-SALEM JOURNAL for “newspapers”), Registration No. 430799 (THE PROVIDENCE JOURNAL for “newspaper”), Registration No. 430800 (THE PROVIDENCE SUNDAY JOURNAL for “newspaper”), Regis- tration No. 3049955 (THE CHIROPRACTIC JOURNAL for “newspapers in the field of chiropractic medicine”), and Registration No. 1144985 (THE DAILY JOURNAL for “newspaper published daily”). We find that the treat- ment of the term JOURNAL on the register is inconsistent, and therefore we cannot rely on the third-party registrations submitted by the examining at- online newspapers), and did not consider registrations for other related goods such as periodicals and newsletters. 4 We did not consider the third-party registrations submitted by applicant where the term JOURNAL was joined by a hyphen to other matter or where the term JOURNAL appeared in the mark as part of a phrase. Serial No. 77371074 - 9 - torney as meeting the Office’s burden of proof. See In re Waverly Inc., 27 USPQ2d 1620, 1623 (TTAB 1993), citing In re Women’s Publishing Co., Inc., 23 USPQ2d 1876, 1878 (TTAB 1992). Applicant also argues that the primary significance of the term “jour- nal” is not a newspaper but rather a specialized publication directed toward a particular group, society or profession such as medical journals, citing both to dictionary definitions of the word “journal” as well as to third-party registra- tions. For example, some of the third-party registrations submitted by the examining attorney where the term JOURNAL has been disclaimed on either the Supplemental Register or in connection with a Section 2(f) claim are for goods identified as periodicals in specialized fields. See e.g. Registration No. 3723940 (AP JOURNAL ONLINE), Registration No. 3746158 (BUILDING SAFETY JOURNAL), and Registration No. 2861796 (BUILDING SAFETY JOURNAL). We find that this evidence raises a further doubt regarding the genericness of the term as used to identify applicant’s goods and services. Lastly, we consider the examining attorney’s reliance on a non- precedential opinion, In re Media West- RDC, Inc., Serial No. 75607234 (TTAB 2002), 2002 WL 448747, where the Board found that the mark THE NEWS JOURNAL constituted a generic designation for “newspapers for general cir- culation.” However, a careful reading of the opinion reveals that the Board did not rely solely on dictionary definitions of the phrase “news journal” in reaching its decision, but rather considered “literally dozens of news articles” Serial No. 77371074 - 10 - made of record by the examining attorney showing generic use of the phrase “news journal” to refer to a daily or weekly newspaper. As noted earlier, the Office bears the burden of proof and genericness must be shown by clear evidence. Genericness is a fact-intensive determina- tion and the Board's conclusion must be governed by the record which is pre- sented to it. Any doubts must be resolved in applicant's favor. In re DNI Holdings Ltd., 77 USPQ2d 1435, 1437 (TTAB 2005) (“Doubt on the issue of genericness is resolved in favor of the applicant.”). On balance we find that the Office, in this particular case, has not met its burden of establishing by clear evidence that the designation JOURNAL as used in the mark JOURNAL SENTINEL, is generic for the genus of “daily newspaper” and “providing on-line non-downloadable electronic publications, namely, newspapers.” As emphasized earlier, the examining attorney did not provide any evidence regarding the public’s use or perception of the term “journal” by way of articles or Internet evidence. In addition, the record shows that the Office’s disclaimer practice with regard to the term JOURNAL on the register has been inconsistent. Thus, based on the entirety of the rec- ord before us, we cannot say that the examining attorney has clearly estab- lished that JOURNAL, as used in the mark JOURNAL SENTINEL, is per- ceived by the relevant public as a generic name for those goods and services. This is not to say that on a different record, we may have reached a different result. Serial No. 77371074 - 11 - DECISION: The refusal to register is reversed.