Publications International, Ltd.

Trademark Trial and Appeal Board

Mar 12, 2012

No. 77910810 (T.T.A.B. Mar. 12, 2012)

THIS OPINION IS NOT A
PRECEDENT OF THE T.T.A.B.

Mailed: March 12, 2012

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Publications International, Ltd.
________

Serial Nos. 77910810 and 77910816
_______

Jason A. Finestone of Shukat Arrow Hafer Weber & Herbsman
LLP for Publications International, Ltd.

Allison P. Schrody, Trademark Examining Attorney, Law
Office 115 (John Lincoski, Managing Attorney).
_______

Before Bucher, Holtzman and Wolfson, Administrative
Trademark Judges.

Opinion by Wolfson, Administrative Trademark Judge:

Publications International, Ltd. (“applicant”) has
filed an application for the standard character mark
iCookbook
for “Portable electronic device for receiving and reading
text and images through wireless internet access and/or
digital download and for displaying electronically
published materials, namely, recipes” in International
Serial Nos. 77910810 and 77910816

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Class 91 and for “Providing information in the fields of
cooking, namely, recipes via the internet; and providing a
website featuring information in the fields of cooking,
namely, recipes” in International Class 43.2 The examining
attorney has refused registration of both marks under the
provisions of Section 2(e)(1) of the Trademark Act,
15 U.S.C. § 1052(e)(1), on the ground that iCookbook is
“merely descriptive of the identified goods and services.”
Examining Attorney’s Brief, (unnumbered) p. 1.
Upon final refusal of registration, applicant filed a
timely appeal. Both applicant and the examining attorney
filed briefs. For the reasons discussed below, we affirm
the refusal to register.
A mark is considered merely descriptive if it
describes an ingredient, quality, characteristic, function,
feature, purpose, or use of the specified goods or
services. In re Engineering Systems Corp., 2 USPQ2d 1075,
1076 (TTAB 1986); In re Bright-Crest, Ltd., 204 USPQ 591
(TTAB 1979). The determination of whether a mark is merely
descriptive must be made not in the abstract but in
relation to the goods or services for which registration is

1 Ser. No. 77910810; filed January 13, 2010, on the basis of
applicant’s bona fide intent to use the mark in commerce.
2 Ser. No. 77910816; filed January 13, 2010, on the basis of
applicant’s bona fide intent to use the mark in commerce.
Serial Nos. 77910810 and 77910816

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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 Abcor Development Corp.,
588 F.2d 811, 200 USPQ 215, 218 (CCPA 1978).
With her first Office action, the examining attorney
submitted a printout from an online dictionary, defining
“cookbook” as “a book containing recipes and other
information about the preparation of food.”3 With her Final
Office action, the examining attorney submitted online
dictionary definitions of “book,” “e-book,” and “audio
book.”4 The submitted definition of “book” includes: “2.
Published work: a published work of literature, science,
or reference, or a work intended for publication.”5
Further, as shown by the pages from applicant’s website,
applicant provides an application for the Apple iPad
containing recipes.6 Thus, applicant’s “portable electronic

3 At http://education.yahoo.com; accessed April 13, 2010.
4 The term “e-book” is defined as: “a book composed in or
converted to digital format for display on a computer screen or
handheld device.” At http://www.merriam-webster.com; accessed
November 4, 2010.
The term “audio book” is defined as: “recorded book: a
commercial recording, usually on a cassette tape, of somebody
reading the text of a popular book.” At http://encarta.msn.com;
accessed November 4, 2010.
5 At http://encarta.msn.com; accessed November 4, 2010.
6 At http://pilapps.com/cookbook/; accessed on May 25, 2011. The
website describes applicant’s iCookbook application as “the only
cooking app and recipe app that an everyday cook will ever need.
[T]he iCookbook app includes more than 2,000 recipes selected by
accredited food editors … .”
Serial Nos. 77910810 and 77910816

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device” for displaying recipes, and applicant’s service of
providing recipes via a website featuring recipes, fit
within the definition of a cookbook and providing a
cookbook over the Internet.
The examining attorney also submitted evidence showing
that the prefix “I” is commonly recognized as an
abbreviation for “Internet” when used in connection with
computer-related goods or services. She filed an entry
from “Acronym Finder,”7 indicating that her search of “What
does I stand for?” returned 46 meanings, one of which was
“Internet.” Results were sorted alphabetically. The
examining attorney also submitted copies of several
registrations including the letter “I” as part of the mark
that have issued on the Supplemental Register. It is well
settled that third-party registrations, while not proving
that the marks depicted therein are in use, can be used in
the manner of dictionary definitions, in order to show that
a term has been adopted because it has a significance in a
particular industry. In re Max Capital Group Ltd.,
93 USPQ2d 1243 (TTAB 2010); see also, In re Country Music
Association, Inc., 100 USPQ2d 1824, 1833 (TTAB 2011)(third-
party registrations show the Office’s consistent treatment
of the word “association” as a generic term when used in

7 At http://www.acronymfinder.com; accessed April 13, 2010.
Serial Nos. 77910810 and 77910816

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connection with association services that promote country
music). Here, the Supplemental Register registrations show
that the Office has consistently treated marks containing
the prefix “I” and an additional descriptive or generic
portion to be merely descriptive of Internet-related goods
and services, as indicated in the examples below:
IPORTAL for “computer software … that allows customers
to check order status, … enter new orders, enter
repeat orders, and obtain order acknowledgments,
through a secure Internet environment.”8

IBADGE for “computer software, accessed through the
Internet, for creating, managing and printing
identification badges.”9

IWORDS for “downloadable audio files featuring
educational programs via the Internet” in class 9;
“educational services, namely, providing online
streaming audio programs in the field of language arts
via the Internet.”10

Finally, the examining attorney submitted copies of
snapshots of web pages to show third-party usages of
“Internet Cookbook” to describe an online collection of
recipes. Examples of these include:
Virtual Cities’ Internet cookbook with more than 6,000
Recipes11

8 Reg. No. 2606181.
9 Reg. No. 2907400.
10 Reg. No. 3826583.
11 At http://www.virtualcities.com. Snapshot of the page as it
appeared on April 6, 2010, accessed April 13, 2010.
http://glindharrison.com; accessed April 13, 2010.
Serial Nos. 77910810 and 77910816

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1st Traveler’s choice Internet Cookbook. A selection
of recipes from across America, many from bed and
breakfast inns12

Archive for the ‘The Internet Cookbook’ category
The Internet Cookbook - Five Favorites13
Internet Cookbook Collection: 28 Cookbooks with
Master Resale Rights or Private Label Rights Cooking &
Recipes.14

Nikki’s Internet Cookbook15
Internet cookbook: from Larousse Gastronomique to 4
Ingredients by Rachel McAlpine16

Based upon the definitions found in Acronym Finder and
the other online dictionaries, the third-party
registrations, and the web pages for “internet cookbooks,”
we find that the prefix “I” is commonly defined as a
shorthand for “Internet.”
Applicant argues that when Apple launched the iMac in
1998, “Apple Computers explained that the ‘i’ stood not
only for ‘Internet,’ but also for ‘individual,’ ‘instruct,’

12 At http://www.cooksmarter.net. Snapshot of the page as it
appeared on April 6, 2010, accessed April 13, 2010.
13 At http://glindharrison.com. Snapshot of the page as it
appeared on January 26, 2010; accessed April 13, 2010.
14 At http://mentaltraining.onyourweb.net/guides/89-cooking-
recipes/4237-internet-cookbook-collection-28-cookbooks-with-
master-resale-rights-or-private-label-rights-cooking-
recipes.html. Snapshot of the page as it appeared on October 28,
2010; accessed November 4, 2010.
15 At http://nikkisinternetcookbook.postercus.com. Snapshot of
the page as it appeared on October 27, 2010; accessed November 4,
2010.
16 At http://contented.com. Snapshot of the page as it appeared
on May 19, 2011; accessed May 25, 2011.
Serial Nos. 77910810 and 77910816

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‘inform’ and ‘inspire.’”17 Applicant further contends that
Apple has released a number of products that do not contain
a direct Internet component yet uses the “i” prefix as part
of the product brand name, and that several unrelated
companies have registered marks containing the “i” or “I”
prefix for non-Internet-related products.
Because applicant has not made any of these alleged
registrations of record, we have not considered them. The
Board does not take judicial notice of registrations that
reside in the USPTO. In re Jonathan Drew, Inc. d/b/a Drew
Estate, 97 USPQ2d 1640, 1646 n.11 (TTAB 2011). Applicant
has also submitted copies of packaging of five products to
show that “companies other than Apple” use marks containing
the prefix “i” or “I” for non-Internet related goods.
These copies have not been verified and there is no
evidence that the goods shown in the pages are not actually
used in connection with the Internet. Even assuming that
these marks -- iGO for a universal wall charger, iHOME for
an alarm clock, ILIVE for a speaker dock system, iSPLITTER
for a splitter and iCABLE for cables -- are not used in
connection with the Internet, the fact that a term may have
different meanings in other contexts is not controlling on
the question of descriptiveness. In re Chopper Indus.,

17 Applicant’s Brief, unnumbered p. 2.
Serial Nos. 77910810 and 77910816

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222 USPQ 258, 259 (TTAB 1984); In re Bright-Crest, Ltd.,
204 USPQ at 593. That others may apparently use the prefix
“i” or “I” in other contexts is immaterial.
Applicant has combined the prefix “i” with the
descriptive term “cookbook” to create a mark that
immediately conveys information about its goods and
services, namely, that the goods are portable devices used
for accessing recipes online, and the services are the
provision of websites featuring online recipes. When two
descriptive terms are combined, and the combination of
terms fails to evoke a new and unique commercial impression
apart from the descriptive terms involved, the combination
results in a composite that is itself descriptive. In re
Cox Enters. Inc., 82 USPQ2d 1040 (TTAB 2007)(THEATL – a
compressed version of the term “THE ATL,” a recognized
nickname for the city of Atlanta, held merely descriptive
of printed matter featuring news and information about
Atlanta, Georgia); In re Finisar Corp., 78 USPQ2d 1618
(TTAB 2006), aff’d per curiam, 223 Fed. App’x 984 (Fed.
Cir. 2007) (SMARTSFP held merely descriptive of optical
transceivers); In re Tower Tech, Inc., 64 USPQ2d 1314,
1317-18 (TTAB 2002) (SMARTTOWER held merely descriptive of
highly automated cooling towers).
Serial Nos. 77910810 and 77910816

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As shown by the evidence of record, the combination
iCookbook has no other unique or incongruous meaning in
relation to applicant’s recited goods and services apart
from the descriptive significance of the two separate terms
themselves.
Decision: The refusal to register under Section
2(e)(1) is affirmed.