J&R Electronics, Inc.

Trademark Trial and Appeal Board

Mar 29, 2001

No. 75640650 (T.T.A.B. Mar. 29, 2001)

03/29/01
UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re J&R Electronics, Inc.
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Serial No. 75/640,650
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Stewart J. Bellus of Collard & Roe for J&R
Electronics, Inc.
Henry S. Zak, Trademark Examining Attorney, Law
Office 108 (David Shallant, Managing Attorney).
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Before Simms, Hanak and Drost, Administrative
Trademark Judges.
Opinion by Hanak, Administrative Trademark Judge:
J&R Electronics, Inc. (applicant) seeks to
register in typed drawing form WALK IN, PHONE IN,
LOG IN for the following services: computerized
on-line ordering services in the fields of computer
hardware, computer software, audio equipment, video
equipment, and recorded music videos; retail store
services featuring computer hardware, computer
THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Ser. No. 75/640,650
software, audio equipment, video equipment and
recorded music videos; telephone shop-at-home
services featuring computer hardware, computer
software, audio equipment, video equipment, and
recorded music videos; mail order services
featuring computer software, computer hardware,
audio equipment, video equipment and recorded music
videos. The application was filed on February 16,
1999 with a claimed first use date of December 3,
1998.
The Examining Attorney refused registration on
two grounds. First, the Examining Attorney
contends that pursuant to Section 2(e)(1) of the
Trademark Act applicant’s mark is merely
descriptive of applicant’s services. Second,
citing Sections 1, 2, 3 and 45 of the Trademark
Act, the Examining Attorney contends that the
phrase WALK IN, PHONE IN, LOG IN does not function
as a service mark, but rather merely provides
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Ser. No. 75/640,650
information to consumers as to how they might
access applicant’s retail services.
When the refusal to register was made final,
applicant appealed to this Board. Applicant and
the Examining Attorney filed briefs. Applicant did
not request a hearing.
As has been stated repeatedly, “a term is
merely descriptive if it forthwith conveys an
immediate idea of the ingredients, qualities or
characteristics of the goods [or services].” In re
Abcor Development Corp., 588 F.2d 811, 200 USPQ
215, 218 (CCPA 1978); Abercrombie & Fitch Co. v.
Hunting World, Inc., 537 F.2d 4, 189 USPQ 759, 765
(2nd Cir. 1976).
We find that applicant’s phrase WALK IN, PHONE
IN, LOG IN is merely descriptive of applicant’s
retail services. Applicant’s services include
retail store services; telephone shop-at-home
services; and computerized on-line ordering
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Ser. No. 75/640,650
services. Applicant’s phrase WALK IN, PHONE IN,
LOG IN immediately informs consumers that
applicant’s retail services can be accessed by
coming to applicant’s retail store; by telephoning
applicant; or by logging on to applicant’s web site
and placing an order with applicant.
Applicant has made of record three specimens of
use: its catalogue; an advertisement which it
placed in The New York Times; and a web site
bearing applicant’s trade name. In each of the
three specimens, the words WALK IN are followed by
applicant’s address; the words PHONE IN are
followed by applicant’s 800 telephone number; and
the words LOG IN are followed by applicant’s web
address.
Finally, it should be noted that the Examining
Attorney has made of record excerpts of stories
from the NEXIS data base showing that the phrases
“walk in” and “phone in” are used repeatedly to
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Ser. No. 75/640,650
describe other retailers. For example, an article
appearing in the December 1, 1999 issue of
PC/Computing describes various “walk-in stores like
KIDS R US” and many others. An article appearing
in the July 22, 1999 edition of The Orlando
Sentinel uses the phrase “phone in” in connection
with pharmacies. These numerous stories
demonstrate that the American public has been
exposed to at least the expressions “walk in” and
“phone in” in conjunction with retail services.
Consequently, upon seeing applicant’s phrase WALK
IN, PHONE IN, LOG IN the American public would
readily understand that this phrase indicates how
applicant’s retail services can be accessed.
In addition to finding that applicant’s phrase
is merely descriptive, we also find that
applicant’s phrase would not be perceived as a
service mark, but rather would be perceived as
merely informational in nature. In each of
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Ser. No. 75/640,650
applicant’s three specimens, applicant’s phrase is
depicted in standard block lettering that is in no
way distinctive. Moreover, applicant’s phrase is
depicted in lettering which is much smaller than
that used for applicant’s trade name and service
mark, namely, J&R. Finally, applicant’s true
service mark and trade name (J&R) is depicted in a
very stylized manner which catches the reader’s
eye.
In order to function as a service mark, the
applicant must use the mark to identify the source
of the services for which registration is sought.
In re Advertising & Marketing, 821 F.2d 641,
2 USPQ2d 2010, 2014 (Fed. Cir. 1987). Put quite
simply, applicant’s use of the phrase WALK IN,
PHONE IN, LOG IN does not serve to inform the
public that the retail services emanate from one
particular source (i.e. applicant), rather the
phrase serves to inform the public how to access
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Ser. No. 75/640,650
applicant’s retail services. See also 1 J.
McCarthy, McCarthy on Trademarks and Unfair
Competition Sections 7:22 and 7:23 (4th ed. 2000)
and In re Standard Oil Co., 275 F.2d 945, 125 USPQ
227, 229 (CCPA 1960).
Decision: The refusal to register on both
grounds is affirmed.
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