Publishing Group of America, Inc.

Trademark Trial and Appeal Board

Aug 17, 2001

No. 75578828 (T.T.A.B. Aug. 17, 2001)

8/17/01

Hearing: Paper No. 22
June 19, 2001 GFR

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Publishing Group of America, Inc.
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Serial No. 75/578,828
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Donald L. Zachary of Bass, Berry & Sims, PLC for Publishing
Group of America, Inc.

Michael Levy, Trademark Examining Attorney, Law Office 110
(Chris A.F. Pedersen, Managing Attorney).
_______

Before Simms, Bucher and Rogers,
Administrative Trademark Judges.

Opinion by Rogers, Administrative Trademark Judge:

Publishing Group of America, Inc. has applied to
register AMERICAN PROFILE as a trademark for goods identified
as “newspaper supplements in the field of lifestyles of rural
America,” in International Class 16.1 The Examining Attorney
has refused registration under Section 2(e)(1) of the Lanham

1 Serial No. 75/578,828 was filed as an intent-to-use application
seeking registration for goods and services in two classes. It
subsequently was amended to delete the services class and, still
later, was amended to assert use in commerce for the remaining
goods class.
THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Ser No. 75/578,828
2
Act, 15 U.S.C. §1052(e)(1), on the ground that applicant’s
mark is merely descriptive of the goods.
When the refusal of registration was made final,
applicant appealed. The issue on appeal has been thoroughly
briefed and both applicant’s counsel and the Examining
Attorney presented oral arguments to the Board.2
We affirm the refusal of registration.
The record on appeal includes dictionary definitions of
the words “American” and “profile,” five registrations for
marks including the word “profiles,” and two declarations
with exhibits from L. Daniel Hammond, president and CEO of
applicant. In its reply brief, applicant argues that the
Examining Attorney has ignored registered marks “cited on
Page 16 of PGA’s Appeal Brief” and which include either the
term “American” or “profile.” We note, however, that while
the Examining Attorney made of record copies of the five

2 The application was examined by former Examining Attorney James
Menker, who issued a final refusal of registration for the one
class of goods, based on both Sections 2(d) and Section 2(e)(1) of
the Lanham Act. Senior Attorney Michael Levy assumed
responsibility for the application during the appeal and filed the
Office’s appeal brief. In that brief, he withdrew the final
refusal based on Section 2(d). At approximately the same time that
Mr. Levy filed the Office’s brief, applicant filed its statement of
use and a request to supplement the record with additional
evidence, so that these respective submissions crossed in the mail.
Shortly thereafter, applicant filed its reply brief, in response to
Mr. Levy’s brief.
Mr. Levy addressed applicant’s additional evidence, clarified the
issue on appeal, introduced countervailing evidence, and responded
to the arguments in applicant’s reply brief. Finally, applicant
was permitted to file a supplemental reply brief.
Ser No. 75/578,828
3
registrations he discussed in his office action, applicant
never made of record copies of any of the registrations it
cited. As a result, the registrations cited by applicant
have little, if any, probative value.3 The declarations and
associated exhibits of Mr. Hammond were offered primarily in
response to the refusal of registration under Section 2(d).
Nonetheless, we have considered them for what probative value
they hold in regard to the Section 2(e)(1) refusal. In
conjunction with the last Office action, issued after the
applicant supplemented the record during the pendency of the
appeal, Senior Attorney Levy added to the record excerpts of
articles retrieved from the NEXIS database, to show that the
term “profile” is “commonly used in referring to magazine
features.”
The theory supporting the Office’s refusal of
registration changed somewhat, although not significantly, as
a result of the change from Examining Attorney Menker to

3 Without copies, there is no indication whether each of the
registrations includes a disclaimer, is based on a claim of
acquired distinctiveness, or is on the Supplemental Register. To
illustrate the difficulty of assessing registrations that are cited
by list alone, we note information from Office records regarding
just two of the registrations cited by applicant. First,
registration no. 2,224,024 for AMERICAN PROFILE for various items
of wearing apparel, includes a disclaimer of “American.” Second,
registration no. 2,268,532 for PEOPLE POP PROFILES for “conducting
public opinion surveys in relation to celebrities, television
programs and cultural phenomena,” includes a disclaimer of
“Profiles.”
Ser No. 75/578,828
4
Senior Attorney Levy. In the initial office action, the
Examining Attorney argued that a “profile” is defined as “a
biographical essay presenting the subject’s most noteworthy
characteristics and achievements,” that profiles are “a type
of newspaper supplement,” that “American” is a primarily
geographical term and “is descriptive of the nationality of
the people likely to be portrayed in ‘profiles’ in newspaper
supplements,” and the composite AMERICAN PROFILE merely
describes the subject matter of applicant’s newspaper
supplements. In the final refusal, the Examining Attorney
acknowledged applicant’s argument that “profile” has various
definitions but argued that, as used in conjunction with
applicant’s goods, the term would most readily be taken to
mean a biographical essay-type of profile; and the Examining
Attorney relied on the existence of registrations of marks
including the term profiles “in connection with goods similar
to applicant[‘s]” to support his argument that the PROFILE
portion of applicant’s mark is descriptive.4 Finally, in his
denial of applicant’s request for reconsideration, the

4 NORTH AMERICA PROFILES and INTERNATIONAL PROFILES are registered
under Section 2(f) of the Lanham Act for travel books; SPORTS
PROFILES, in stylized script, also is registered under Section
2(f), for magazines relating to athletics and physical fitness;
PLANT PROFILES is registered on the Supplemental Register for a
business information service providing plant information to
industry; PROFILES and design for a “column in a weekly
publication” also is registered on the Supplemental Register.
Ser No. 75/578,828
5
Examining Attorney argued that “[a]s stated in Exhibit 8 of
the applicant’s Request for Reconsideration[,] the
applicant’s newspaper supplement[s] feature ‘hometown
profiles’ and are [‘]for and about millions of Americans who
cherish hometown life.’… Thus, a significant feature of the
applicant’s newspaper supplements are the ‘profiles’ of
‘American’ people and ‘American’ communities.”5
In briefing this appeal, the Senior Attorney introduced
new dictionary definitions of “American” and “profile” and
argued that “the dictionary definitions show that the mark
describes an analysis of an American subject i.e. an AMERICAN
PROFILE.” The Senior Attorney also argued that “the mark
clearly describes that the supplements contain a profile
[sic] of American subjects, in particular, lifestyles of
rural America.” He supported the argument by referencing
exhibits submitted with applicant’s request for

5 The Examining Attorney also asserted that applicant had
essentially conceded that AMERICAN PROFILE is not particularly
distinctive and is weak. We do not, however, see the statements by
applicant as such a concession. They were made in the context of
applicant’s attempt to show that the registered mark AMERICAN
PROFILE, which was then still cited under Section 2(d) as a bar to
its application, was weak and entitled to only a narrow scope of
protection. There is nothing improper about an applicant’s
arguing, on the one hand, that a mark registered under Section 2(f)
should be considered weak and unlikely to create a likelihood of
confusion with the same mark proposed for registration for
different goods or services and, on the other hand, that the mark,
as proposed for registration by the applicant, would not be merely
descriptive.
Ser No. 75/578,828
6
reconsideration, which exhibits (1) promote the supplements
as containing articles with a regional focus on “local
celebrities, unforgettable characters, and hometown heroes”6
and (2) note that a “special editorial feature” of each
supplement will be its “profile of one of America’s great
hometowns.” The Senior Attorney argued that there was no
incongruity created by applicant’s combination of AMERICAN
and PROFILE, and that the existence of other meanings for
“profile” is inapposite, since applicant’s proposed mark must
be considered in the context of its use, not in the abstract.
Finally, he relied on the third-party registrations,
previously made of record by the Examining Attorney, for
marks containing the term “profiles,” as evidence of the
descriptiveness of the PROFILE portion of applicant’s
proposed mark and that the instant refusal was “consistent
with Office practice.”
Applicant, arguing against the initial refusal, asserted
only that one hearing the proposed mark would not necessarily
believe that it “describes just a newspaper supplement” and
could conclude that it referred to “silhouettes, credit
repots, intelligence reports and the like.” In its request
for reconsideration of the final refusal, applicant argued

6 Also touted in applicant’s exhibit are the supplement’s
“personality profiles” of national celebrities.
Ser No. 75/578,828
7
that, in its proposed mark, AMERICAN is not used in a
geographic sense but, rather, in an arbitrary or suggestive
sense, because “[i]t does not signify the inserts are printed
in America or sold in America, and would describe almost any
product.” Applicant also argued that the significance of the
term PROFILE must be viewed from the perspective of the
prospective purchasers of applicant’s goods, i.e., publishers
of newspapers and advertising executives, and that they
“could not possibly reach a conclusion about the nature of
[applicant’s] product solely by viewing the proposed mark”
and “would have to use… imagination extensively to determine
what [applicant’s] supplements contain.” Further, applicant
argued that in view of the multitude of possible definitions
for the term PROFILE, and the Hammond declaration
establishing that applicant’s supplements cover a multitude
of subjects, could at most suggest some idea of the contents.
Finally, applicant argued that the composite AMERICAN PROFILE
cannot be refused as descriptive because it does not describe
an “essential quality of the newspaper supplement” and
“merely suggests possible subjects that the supplement might
contain, that is, profiles of ‘something,’ but what those
‘somethings’ might be is left totally to the imagination.”
In briefing the appeal, applicant essentially reiterated
the arguments made during prosecution of the application. In
Ser No. 75/578,828
8
addition, to counter the Examining Attorney’s contention that
PROFILE would be understood to refer to a biographical sketch
of a subject’s noteworthy characteristics and achievements,
applicant argued that submitted copies of its supplements are
evidence that they do “not contain …discussions of persons or
people that includes [sic] their most noteworthy
characteristics and achievements.” It also argued that,
because of the plethora of definitions of both AMERICAN and
PROFILE, and the possible combinations thereof, “purchasers
of AMERICAN PROFILE cannot tell, simply from the title, what
will be contained in the magazine.”
Titles for publications such as newspapers and magazines
often present perplexing problems, because of the tendency of
their publishers to use the titles to convey some idea of the
content of their publications. See H. Marvin Ginn Corp. v.
Int’l Assn. Of Fire Chiefs, 782 F.2d 987, 990, 228 USPQ 528,
530-31 (Fed. Cir. 1986). As a result of the tendency toward
revelation of content, most reported cases dealing with
titles of publications deal with the question whether they
are descriptive or generic, not descriptive or suggestive.
See Technical Publishing Co. v. Lebhar-Friedman, Inc., 729
F.2d 1136, 1140, 222 USPQ 839, 841 (7th Cir. 1984); see also
Scholastic, Inc. v. MacMillan, Inc., 650 F.Supp. 866, 2
USPQ2D 1191 (S.D.N.Y. 1987). As was the case for the
Ser No. 75/578,828
9
Scholastic court, however, “the difficulty of discerning
between descriptive and generic” need not concern us;
applicant argues that its mark is not descriptive but
suggestive.
The analysis to be applied by the Board for
distinguishing between what is descriptive and what is
suggestive is articulated in In re Abcor Development
Corporation, 588 F.2d 811, 814, 200 USPQ 215, 218 (CCPA 1978)
(“A term is suggestive if it requires imagination, thought
and perception to reach a conclusion as to the nature of the
goods. A term is descriptive if it forthwith conveys an
immediate idea of the ingredients, qualities or
characteristics of the goods.” Citing Abercrombie & Fitch
Co. v. Hunting World, Inc., 537 F.2d 4, 11, 189 USPQ 759, 765
(2nd Cir. 1976).) In Abcor, the court also reminded that
determination is to be made from the perspective of the
average prospective purchaser. Abcor, supra, 200 USPQ at
218.
Applicant pointedly argues that we must consider the
relevant class of purchasers of applicant’s goods to be
newspaper publishers who would buy applicant’s supplements
for distribution with their newspapers, and advertising
executives who would buy space for ads in the supplements.
We do not agree that advertising executives who place ads in
Ser No. 75/578,828
10
applicant’s supplements are relevant purchasers. They are
more appropriately considered purchasers of a service from
applicant. Moreover, we do not think the perspective of
readers of applicant’s supplements should be ignored. They
are the ultimate purchasers of the newspapers containing the
supplements. In any event, there appears little practical
benefit in applicant’s drawing a distinction between
newspaper publishers and newspaper readers. As applicant’s
president asserted in a declaration: “As one can see, despite
where they live, rural Americans are not rubes.” Applicant
does not articulate any difference in sophistication of
newspaper publishers and newspaper readers. More
importantly, applicant has provided no direct evidence of the
perspective of either publishers or readers. There is no
testimonial evidence; there is no survey evidence. In
essence, we are left with the dictionary definitions of
record, the NEXIS article excerpts of record, the third-party
registrations the Examining Attorney made of record, and the
copies of applicant’s supplements that are of record.
On this record, we have no doubt that the title of
applicant’s newspaper supplement “forthwith conveys an
immediate idea” about a significant feature thereof. Each
supplement profiles at least one American, whether a “local
Ser No. 75/578,828
11
unsung hero” or a celebrity “with small-town roots.”7
Moreover, each supplement prominently features a profile of
an American “hometown.” Another possible alternative would
be for publishers and readers to consider applicant’s
supplement as a continuing profile of rural Americans and
rural American towns. The possibility that, among these
possible interpretations of AMERICAN PROFILE, particular
individuals might seize on one or another does not render the
term suggestive rather than descriptive, for none involve
elaborate reasoning. See In re Vehicle Information Network
Inc., 32 USPQ2d 1542, 1544 (TTAB 1994); Cf. In re Bed &
Breakfast Registry, 791 F.2d 157, 160, 229 USPQ 818 (Fed.
Cir. 1986) (Board did not err in finding BED & BREAKFAST
REGISTRY descriptive on alternate theories that phrase would
be understood to describe a register of bed and breakfast
lodgings “and may convey the related thought of registering
at a bed and breakfast lodging”.)
We find unpersuasive applicant’s arguments that these
profiles of people and places are insignificant features of
its supplements, such that the association between the term
AMERICAN PROFILE and these features would be difficult to

7 In this regard, it was practically frivolous for applicant’s
counsel to argue that applicant’s supplements do “not contain
…discussions of persons or people that includes [sic] their most
noteworthy characteristics and achievements.”

Ser No. 75/578,828
12
draw. Nor do we find persuasive applicant’s argument that
there are so many other features in its supplement that
publishers and readers would be unable to draw an immediate
association between AMERICAN PROFILE and the profiles of
Americans and American towns. Finally, we see no sound basis
for applicant’s argument that AMERICAN would, in the context
in which it is used, be perceived as arbitrary, or for its
argument that PROFILE would be thought of as a reference to
silhouettes, credit reports or items other than brief,
written sketches on the profiled people or places, for the
meaning ascribed to terms is derived from the nature of the
goods with which they are associated.
Decision: The refusal to register is affirmed.