Penton Media, Inc.

Trademark Trial and Appeal BoardAug 9, 2001

No. 75650581 (T.T.A.B. Aug. 9, 2001)

8/9/01 Paper No. 9 CEW UNITED STATES PATENT AND TRADEMARK OFFICE ___________ Trademark Trial and Appeal Board ___________ In re Penton Media, Inc. ___________ Serial No. 75/650,581 ___________ Kenneth L. Mitchell and Charles R. Rust of Woodling, Krost and Rust for Penton Media, Inc. Jennifer M.B. Krisp, Trademark Examining Attorney, Law Office 112 (Janice O’Lear, Managing Attorney). ____________ Before Hanak, Walters and Chapman, Administrative Trademark Judges. Opinion by Walters, Administrative Trademark Judge: Penton Media, Inc. has filed a trademark application to register the mark THE INTERNET DEVICE CONFERENCE for “organizing and conducting a conference for engineers, managers and information technology professionals in the field of the global computer information network.”1 The Trademark Examining Attorney has finally refused registration, under Section 2(e)(1) of the Trademark Act, 1 Serial No. 75/650,581, in International Class 35, filed February 22, 1999, based on an allegation of a bona fide intention to use the mark in commerce. THIS DISPOSITION IS NOT CITABLE AS PRECEDENT OF THE T.T.A.B. Serial No. 75/650,581 2 15 U.S.C. 1052(e)(1), on the ground that applicant’s mark is merely descriptive in connection with its services. Applicant has appealed. Both applicant and the Examining Attorney have filed briefs, but an oral hearing was not requested. We affirm the refusal to register. The Examining Attorney contends that, based on the identfication of services, it is clear that applicant organizes and conducts conferences for information technology professionals and others on the subject of the Internet; that the term CONFERENCE is generic in connection with these services; and that the term INTERNET DEVICE has a known meaning to information technology professionals and others that is merely descriptive in connection with the identified services. She submitted evidence from the LEXIS/NEXIS database in support of this latter contention. The Examining Attorney states the following in her brief: An “Internet device” is a wireless appliance, apparatus or equipment component that has embedded computer hardware and software processing capabilities, microprocessors, and digital storage capacity. Such devices function in order to provide for the access to and the transfer and communication of digital information found on the global computer network commonly and universally known as the Internet. The phrase at issue does, indeed, aptly name and identify an entire field and type of computer Serial No. 75/650,581 3 devices. Enhanced cellular telephones and personal digital assistants are two examples of Internet devices with which the general public is already familiar. Following are several examples of the article excerpts retrieved from the LEXIS/NEXIS database submitted by the Examining Attorney in support of her position2: A free “open-source” operating system, Linux currently is used to run midrange computers called servers, but the Linux wave is sweeping the computer industry, and it won’t be long before its used on desktop personal computers, laptops, and handheld Internet devices. [Industry Week, February 7, 2000.] According to the research firm International Data Corporation (IDC) so far this year 160 million people have used the Internet, compared with only 5 million in 1995. With a rapid expansion of new Internet services and the proliferation of the new Internet devices, this number is likely to swell to more than 500 million users by the year 2003. [Newsday, August 15, 1999.] Spyglass Inc., the Naperville developer of software for Internet devices, has completed an installation of a system using mobile hand-held devices with Spyglass software at Stanford University. [Chicago Sun-Times, August 10, 1999.] The wireless banking system, called Veev, has several advantages over traditional phone banking, which is based on a step-by-step voice response system. “Veev turns your phone into an 2 The newswire stories submitted by the Examining Attorney are of minimal evidentiary value because it is not clear that such stories have appeared in any publication available to the consuming public. See, In re Manco Inc., 24 USPQ2d 1938 (TTAB 1992); and In re Urbano, 51 USPQ2d 1776, 1778 fn. 3 (TTAB 1999) and cases cited therein. Serial No. 75/650,581 4 actual Internet device,” says Kuwayti. [InfoWorld, August 2, 1999.] The applicant contends that, from the evidence of record, “no one can discern what is meant by the term INTERNET DEVICE”; that “[t]he term INTERNET is still new and does not have a widely known meaning and is not descriptive”; and that the mark as a whole is not merely descriptive because “a consumer would have to first read applicant’s literature promoting the conference or attend the conference to learn the subject matter thereof.” The test for determining whether a mark is merely descriptive is whether the involved term immediately conveys information concerning a quality, characteristic, function, ingredient, attribute or feature of the product or service in connection with which it is used, or intended to be used. In re Engineering Systems Corp., 2 USPQ2d 1075 (TTAB 1986); In re Bright-Crest, Ltd., 204 USPQ 591 (TTAB 1979). It is not necessary, in order to find a mark merely descriptive, that the mark describe each feature of the goods or services, only that it describe a single, significant quality, feature, etc. In re Venture Lending Associates, 226 USPQ 285 (TTAB 1985). Further, it is well established that the determination of mere descriptiveness must be made not in the abstract or Serial No. 75/650,581 5 on the basis of guesswork, but in relation to the goods or services for which registration is sought, the context in which the mark is used, and the impact that it is likely to make on the average purchaser of such goods or services. In re Recovery, 196 USPQ 830 (TTAB 1977). We find applicant’s arguments unpersuasive and agree with the Examining Attorney that the mark, THE INTERNET DEVICE CONFERENCE, is merely descriptive of applicant’s identified services. The evidence of record establishes that an Internet device is a term used to describe a piece of equipment that allows its user access to the Internet. Applicant’s recitation of services establishes that it organizes and conducts conferences on subject matter pertaining to the Internet. “Internet devices,” as described and defined herein, clearly pertain to the Internet. In the present case, it is our view that, when applied to applicant’s services, the phrase THE INTERNET DEVICE CONFERENCE immediately describes, without conjecture or speculation, a significant feature or function of applicant’s services, namely that applicant organizes and conducts a conference pertaining to the Internet, which encompasses the subject of “internet devices.” Nothing requires the exercise of imagination, Serial No. 75/650,581 6 cogitation, mental processing or gathering of further information in order for purchasers of and prospective customers for applicant’s services to readily perceive the merely descriptive significance of the THE INTERNET DEVICE CONFERENCE as it pertains to applicant’s services. Decision: The refusal under Section 2(e)(1) of the Act is affirmed.