Moo Publishing Corp.

Trademark Trial and Appeal Board

Mar 26, 2013

No. 77950319 (T.T.A.B. Mar. 26, 2013)

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB

Mailed:
March 26, 2013

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Moo Publishing Corp.
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Serial No. 77950319
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Zeynel M. Karcioglu of Jacobs & Burleigh LLP for Moo Publishing Corp.

Jason F. Turner, Trademark Examining Attorney, Law Office 108 (Andrew
Lawrence, Managing Attorney).
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Before Grendel, Shaw, and Masiello, Administrative Trademark Judges.
Opinion by Masiello, Administrative Trademark Judge:
Moo Publishing Corp. has applied to register on the Principal Register the
mark MEDICAL OFFICE in the stylized form set forth below1 for “general feature
magazine in the field of medicine,” in International Class 16.

1 In the Office action of June 14, 2010, the examining attorney objected that the specimen of
use did not display the mark in the stylized form shown in the application. Although this
requirement was not pursued in latter Office actions, the record does not appear to contain
a specimen of use bearing this stylized form of the mark.
Serial No. 77950319

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The trademark examining attorney refused registration under Section 2(e)(1)
of the Trademark Act, 15 U.S.C. § 1052(e)(1), on the ground that applicant’s mark
merely describes the goods. When the refusal was made final, applicant filed this
appeal, and requested reconsideration. Upon reconsideration, the examining
attorney maintained his refusal. Applicant thereupon filed its brief and requested
remand for consideration of a claim of acquired distinctiveness under Section 2(f),
15 U.S.C. § 1052(f). The case was remanded, and the examining attorney
ultimately issued another final Office action, maintaining his refusal under Section
2(e)(1) and refusing registration under Section 2(f). This appeal was resumed and
the applicant was allowed time in which to file a supplemental brief; applicant did
not do so. The examining attorney then filed his brief.
The examining attorney, in his brief, addressed both the refusal under
Section 2(e)(1) and the refusal to allow registration under Section 2(f). However, in
connection with his discussion of Section 2(f), he contended that as a result of
applicant’s Section 2(f) claim, “applicant is considered to have conceded that the
proposed mark was not inherently distinctive, but rather merely descriptive.”2 The
examining attorney noted, however, that while the case was before him on remand,
applicant reverted to arguing that the mark was not merely descriptive, but
suggestive.3 On this ambiguous record, we will address the refusals under both
Sections 2(e)(1) and 2(f), without treating as conceded the question of mere

2 Examining attorney’s brief at 7.
3 Id. fn. 16.
Serial No. 77950319

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descriptiveness and without treating applicant’s Section 2(f) claim as withdrawn.
Doing so does not affect our ultimate finding.
1. Refusal under Section 2(e)(1).
We first consider whether the mark MEDICAL OFFICE merely describes the
goods identified in the application. “A term is merely descriptive if it immediately
conveys knowledge of a quality, feature, function, or characteristic of the goods or
services with which it is used." In re Gyulay, 820 F.2d 1216, 3 USPQ2d 1009, 1009
(Fed. Cir. 1987). A mark that, when applied to the goods or services at issue,
requires imagination, thought, or perception to reach a conclusion as to the nature
of those goods or services is not merely descriptive, but suggestive, and is
registrable. In re George Weston Ltd., 228 USPQ 57 (TTAB 1985); Nautilus Grp.,
Inc. v. Icon Health & Fitness, Inc., 372 F.3d 1330, 1340, 71 USPQ2d 1173, 1180
(Fed. Cir. 2004).
Relying on dictionary definitions, the examining attorney has shown that
MEDICAL means “relating to… physicians or the practice of medicine” and that
OFFICE means “a place where a particular kind of business is transacted or a
service is supplied.”4 The examining attorney argues persuasively that the mark
may be interpreted to mean “the place where the practice of medicine is performed
professionally.”5

4 Definitions from submitted with the final Office action of July 21,
2010.
5 Examining attorney’s brief at 4.
Serial No. 77950319

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Among his reasons for the refusal, the examining attorney argued that the
mark describes the subject matter of the goods. It is well settled that a term which
merely describes the subject matter of a publication is merely descriptive of the
publication, for purposes of Section 2(e)(1). See, e.g., In re Waverly Inc., 27 USPQ2d
1620 (TTAB 1993) (MEDICINE merely descriptive of journal); In re Women's
Publishing Co., Inc., 23 USPQ2d 1876 (TTAB 1992)(DECORATING DIGEST merely
descriptive of magazine). During the prosecution of the application, applicant
sought to avoid a finding that the mark merely describes the subject matter of the
identified magazine by stating what the magazine is not. “The magazine does not in
any way target medical office professionals or doctors. It does not provide
information on anything related to running or forming a medical office, how to order
medical office supplies, innovative technologies for medical office.”6 However, we
may not consider such limitations on the nature of the goods, because the
limitations are not included in the identification of goods. Whether a particular
term is merely descriptive is determined in relation to the goods or services for
which registration is sought. In re Abcor Development Corp., 588 F.2d 811, 200
USPQ 215, 218 (CCPA 1978); In re Remacle, 66 USPQ2d 1222, 1224 (TTAB 2002).
We must consider whether the mark may be merely descriptive of any goods
described as “general feature magazine in the field of medicine,” even if applicant
currently uses its mark only on a subset of such goods, because the goods listed in
the identification are the goods that would be listed on the registration certificate.

6 Request for reconsideration of January 19, 2011.
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In re Vehicle Information Network Inc., 32 USPQ2d 1542, 1544 (TTAB 1994) (“the
question of registrability must be determined, in proceedings before the Board, on
the basis of the goods or services as set forth in the application, rather than in
reference to the precise nature of the goods or services… in connection with which
the mark is actually used…”). A descriptiveness refusal is proper if the mark is
descriptive of any of the goods included in the identification. In re Stereotaxis Inc.,
429 F.3d 1039, 77 USPQ2d 1087, 1089 (Fed. Cir. 2005); In re Chamber of Commerce
of the United States of America, 102 USPQ2d 1217 (Fed. Cir. 2012).
On the basis of the dictionary definitions before us, we find that the mark
would describe magazines that contain articles about the places of business where
medicine is practiced. The identification “general feature magazine in the field of
medicine” includes within its scope magazines containing articles about
developments in the medical profession and in medicine, business aspects of
running a medical practice, issues affecting patients such as insurance coverage,
and other issues relating to the practice of medicine. Magazines addressing these
topics would aptly be described as being about “medical offices.”
The examining attorney has also argued that the mark describes the place
where applicant’s magazines are distributed and made available to readers.7 The
examining attorney has submitted numerous news articles from the LEXIS/NEXIS
database to show that magazines can be found in the waiting rooms of doctors’
offices. Evidence that merely shows that magazines may be found in doctors’ offices

7 Applicant’s brief at 4-6.
Serial No. 77950319

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does not, alone, persuade us that the mark is merely descriptive. For goods that are
distributed widely through many different channels, we would hesitate to suggest
that, as a general rule, the names of the places where the goods may be found are
terms that describe the goods within the meaning of Section 2(e)(1). For example,
the examining attorney’s evidence shows that applicant’s magazine is distributed
through “pharmacies, newsstands, major food and book stores, medical offices, etc.”;
that M Magazine “will be mailed to medical offices, salons, spas and coffee shops”;
and that Walk About magazine “is delivered to more than 225 coffeehouses, medical
offices, shoe shops and fitness centers.”8 It seems unlikely that the names of all of
these channels of distribution would be merely descriptive of magazines in every
case. However, in the present case, the examining attorney has adduced evidence
showing that publications are sometimes bundled for marketing directly to medical
offices. See, for example, advertisement of “Medical Office Magazine Subscriptions”
providing a “Special Offer for Medical Practices” addressed to “Medical Offices,
Hospitals, Reception and Waiting Rooms, Group Practices, Individual,” and stating,
“We have tried to make it easy for you to choose the right package of magazines for
your medical practice.”9 See also advertisement offering “Magazine packages from
Acclaim Subscriptions,” stating “We ‘bundle’ sets of magazines proven to be popular
within certain industries, work settings, and/or lifestyle groups,” and offering a
“Medical Office PowerPak.”10 Accordingly, it is reasonable to conclude that a

8 See examining attorney’s final Office action of July 21, 2010.
9 Id.
10 Id.
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magazine that is suitable for inclusion in a bundle of subscriptions intended for
doctors’ offices may be described as a “medical office magazine.”11
Finally, we address the examining attorney’s contention that applicant’s
mark is merely descriptive because applicant’s magazines “provide medical office
directory information.”12 An internet advertisement of applicant states, with
respect to the magazine, “it is clear that more than ever, patients need a
trustworthy, reliable monthly vehicle that contains a comprehensive directory of
doctors and services.”13 A publication that either is or contains a directory of
medical service providers may aptly be described as a “medical office publication.”
We note in closing that the stylized form of applicant’s mark is non-distinctive and
is insufficient to alter the merely descriptive character of the mark.
For the reasons set forth above, we find that the examining attorney has met
his evidentiary burden of showing that applicant’s mark is merely descriptive of
applicant’s goods, as identified in the application, within the meaning of Section
2(e)(1).
2. Acquired Distinctiveness.
A mark that has been found to be merely descriptive under Section 2(e)(1)
may be registrable on the Principal Register with a showing of acquired

11 We note that applicant apparently intends to use its mark as the title of its magazine,
and we acknowledge that a different commercial impression may arise from a mark used as
a title and a mark used otherwise (for example, on labels and packaging). However, there
is nothing in the applicant’s identification of goods to indicate that the mark is for use
exclusively as the title of a publication. Accordingly, we must consider all potential uses of
the mark as a source indicating trademark, besides use as a title.
12 Examining attorney’s brief at 6.
13 Submitted with final Office action of July 21, 2010.
Serial No. 77950319

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distinctiveness in accordance with the provisions of Section 2(f), 15 U.S.C. § 1052(f).
We now consider applicant’s claim and evidence of acquired distinctiveness.
The amount and character of evidence required to establish acquired
distinctiveness depends on the facts of each case and particularly on the nature of
the mark sought to be registered. See Roux Labs., Inc. v. Clairol Inc., 427 F.2d 823,
829, 166 USPQ 34, 39 (CCPA 1970); In re Hehr Mfg. Co., 279 F.2d 526, 528, 126
USPQ 381, 383 (CCPA 1960); In re Gammon Reel, Inc., 227 USPQ 729, 730 (TTAB
1985). Applicant’s mark is highly descriptive, as evidenced by third-party uses of
MEDICAL OFFICE in the field of magazines by entities such as Medical Office
Magazine Subscriptions and Acclaim Subscriptions, discussed above. In the case of
a highly descriptive mark, purchasers would be less likely to perceive the mark as a
source indicator; accordingly, more evidence is typically required in order to
demonstrate acquired distinctiveness. See, e.g., In re Bongrain Int’l Corp., 894 F.2d
1316, 1318, 13 USPQ2d 1727, 1729 (Fed. Cir. 1990); In re Seaman & Assocs., Inc., 1
USPQ2d 1657, 1659 (TTAB 1986); In re Packaging Specialists, Inc., 221 USPQ 917,
919 (TTAB 1984).
To support its claim of acquired distinctiveness, applicant submitted the
declaration of Dmitriy Khabinski, applicant’s President and CEO, who attested to
the following facts:
-- The mark has come to be known by the relevant
public to denote applicant’s magazine.
-- Since 2007, applicant has advertised by radio in the
form of 15- and 30-second radio spots broadcast several
times a week in New York, Connecticut, New Jersey and
Pennsylvania, in which applicant’s magazine was
Serial No. 77950319

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identified both by the mark and by its title in Russian.14
Applicant’s advertising targets more than 1 million
Russian-speaking persons in the U.S.
-- Beginning in early 2010, applicant began television
advertising on Russian-language television channels,
Channel One and RTVI, broadcast across the United
States and estimated to reach 200,000 households per
month.
-- Applicant uses three media firms to manage its
radio and television advertising and has expended more
than $400,000 on radio and television advertising.
-- Since the beginning of applicant’s media campaign,
applicant’s magazine’s circulation has doubled from
10,000 to 20,000 monthly; and applicant estimates that
the magazine is read by 150,000 persons per month.
-- Applicant employs 15 sales representatives (as
independent contractors) who make hundreds of calls per
week to sell advertising space in the magazine.
-- 80% of applicant’s circulation is in the New York
area, and 20% outside New York.
-- Applicant’s mailing costs are approximately
$30,000 annually. The magazine is also distributed by
car delivery.
The examining attorney criticizes applicant’s evidence of acquired
distinctiveness for being internally inconsistent. First, he notes that the application
states, as applicant’s date of first use, “at least as early as February 1, 2010,” a date
substantially later than the 2007 date stated in applicant’s declaration as the date
when radio advertising commenced. Second, the examining attorney notes that the
mark is a stylized mark, which could not have been displayed by means of radio

14 A Russian form of applicant’s mark, in stylized Cyrillic lettering transliterating as
“Meditsinskiy Ofis,” was the subject of application Serial No. 77950274. The examining
attorney allowed registration of the mark under Section 2(f), and the mark is now
registered under No. 4239637.
Serial No. 77950319

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advertising. The examining attorney accordingly urges that we discount the
evidence of radio advertising since 2007, and suggests that the date of first use
stated in the application appears to be more realistically related to the
commencement of television advertising in early 2010.15 Finally, the examining
attorney notes that applicant’s stylized Russian-language mark is not the same as
the mark that is now sought to be registered,16 such that an association between the
two is not sufficient to show that the mark now at issue has acquired
distinctiveness.
We do not entirely discount the possibility that the association with
applicant’s Russian mark might favorably affect the public perception of the
English-language mark as it is now before us. However, the conflation of the two
marks in applicant’s evidence and arguments undermines the probative value of the
evidence, as a clear account of the promotion of the mark at issue cannot be
separated from the information relating to the Russian mark. For this reason, and
for the reasons voiced by the examining attorney, we give little weight to
advertising prior to 2010. In view of the highly descriptive nature of the mark, use
since 2010 is a very short time in which to develop market recognition. In re
Packaging Specialists, Inc., 221 USPQ at 920 (continuous and substantially
exclusive use for sixteen years deemed insufficient).
For similar reasons, it is also not clear to us to what extent we may ascribe
media expenditures and the efforts of sales representatives to the English form of

15 Examining attorney’s brief at 8-9.
16 Id. at 9.
Serial No. 77950319

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the mark or the Russian form of the mark. In any event, applicant’s circulation and
advertising figures, while perhaps indicative of success, are not objectively very
great and do not in themselves show market recognition. Applicant’s raw sales and
advertising figures, offered without context, are insufficient in this case to
demonstrate acquired distinctiveness. Bose Corp. v. QSC Audio Products, Inc., 293
F.3d 1367, 63 USPQ2d 1303, (Fed. Cir. 2002). We note that the record is lacking
in any media recognition regarding applicant’s goods, customer testimonials, or
other evidence to show how the term MEDICAL OFFICE points uniquely to
applicant. More persuasive evidence than that offered here is necessary to
establish that applicant’s mark has acquired distinctiveness. Accordingly, we
affirm the examining attorney’s refusal to allow registration under the provisions of
Section 2(f).
3. Amendment to Supplemental Register.
The last sentence of applicant’s brief states, “In the alternative, the Applicant
would request that in the event that the TTAB does not elect to overturn the
Examining Attorney’s refusal, that the Mark proceed to registration on the
Supplemental Register.”17 Such a request, which asks that an amendment to the
application be considered only after the Board has considered and decided the
appeal, is by its terms untimely. The Board lacks the power to amend the
application to seek registration on the Supplemental Register, nor can it re-open the
application to allow applicant to propose the amendment to the examining attorney.

17 Applicant’s brief at 8.
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After decision, an application may be amended, if at all, only in accordance with
Trademark Rule 2.142(g), which states, “An application which has been considered
and decided on appeal will not be reopened except for the entry of a disclaimer… or
upon order of the Director….” 37 C.F.R. § 2.142(g). See TBMP §§ 1205.01 and
1218.
Decision: The refusal under Section 2(e)(1) and the refusal to allow
registration under the provisions of Section 2(f) are affirmed.