Stephen Dossick, M.D.

Trademark Trial and Appeal Board

Aug 29, 2003

No. 75754818 (T.T.A.B. Aug. 29, 2003)

Mailed:
8/29/03
Paper No. 21
RFC
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Stephen Dossick, M.D.
________
Serial Nos. 75/714,344; 75/714,345; and 75/754,818
_______
Erin M. Falk of Sonnenschein Nath & Rosenthal for Stephen
Dossick, M.D.
J. Brett Golden, Trademark Examining Attorney, Law Office
102 (Thomas Shaw, Managing Attorney).
_______
Before Cissel, Hairston and Walters, Administrative
Trademark Judges.
Opinion by Cissel, Administrative Trademark Judge:
On July 2, 1999, applicant, a United States citizen
who lives in California, filed the above-referenced
applications to register the marks MP3JAPAN and MP3NEWYORK
on the Principal Register for services in International
Class 42 which were subsequently identified by amendment as
follows1:
Providing on-line magazines, newsletters, directories
and books in the field of music, entertainment, arts
1 Applications S.N.s 75/754,818 and 75/714,345, respectively.
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT
OF THE TTAB
Ser Nos. 75/714,344; 75/714,345 and 75/754,818
2
and culture, videos, motion pictures, film, radio,
television, news, current events, health and
lifestyles, and sporting events; providing search
engines for obtaining data on a global computer
network in the field of music, entertainment, arts and
culture, videos, motion pictures, film, radio,
television, news, current events, health and
lifestyles, and sporting events; providing on-line
computerized databases in the field of arts and
culture, news, current events and health and
lifestyles.
In a separate application2, applicant also sought
registration of the MP3NEWYORK mark for services in Class
38 which were subsequently identified by amendment as
follows:
Broadcasting programs via a global computer network;
providing on-line chat rooms and on-line electronic
bulletin boards for transmission of messages among
computer users concerning music, entertainment, arts
and culture, videos, motion pictures, film, radio,
television, news, current events, health and
lifestyles, and sporting events.
The basis for filing each of these applications was
applicant’s assertion that he possessed a bona fide
intention to use each mark in commerce in connection with
the services identified in each application.
The applications which are the subject of this appeal
are but three of the twenty-two such applications filed by
applicant for related marks intended to be used in
connection with similar services. The other marks are all
2 S.N. 75/714,344.
Ser Nos. 75/714,344; 75/714,345 and 75/754,818
3
combinations of the term MP3 with the names of another city
or continent, e.g., MP3SANFRANCISCO, MP3SEOUL,
MP3SINGAPORE, MPG3AMSTERDAM, MP3BERLIN, MP3BOSTON and
MP3AFRICA. The Board’s January 18, 2003 ruling
consolidated the three applications listed in the heading
of this opinion. Applicant was allowed to file separate
briefs and reply briefs in each case. The remaining
nineteen applications were suspended pending our resolution
of this consolidated appeal.
The issues in all three appeals are essentially the
same, and the records in the applications are similar. The
most notable exception is the recitation of the Class 38
services in the record of that application for MP3NEWYORK.
In each application on appeal, the Examining Attorney
has refused registration under Sections 2(e)(1), 2(e)(2)
and 2(e)(3) of the Lanham Act on alternative grounds. He
contends that these marks are either merely descriptive or
deceptively misdescriptive of the recited services within
the meaning of Section 2(e)(1) of the Act and/or that the
marks are either primarily geographically descriptive of
the services within the meaning of Section 2(e)(2) of the
Act or they are primarily geographically deceptively
misdescriptive of them within the meaning of Section
2(e)(3) of the Act.
Ser Nos. 75/714,344; 75/714,345 and 75/754,818
4
In addition to refusing registration in the initial
Office Actions, the original Examining Attorney3 made of
record listings from a geographical dictionary establishing
that Japan is the name of the well-known island country in
the western Pacific and that New York is the name for both
the state and the city in the northeastern United States.
She also made of record an Internet encyclopedia listing
which establishes that MP3 is the computer format into
which audio files are compressed for transmission over
computer networks such as the Internet. Copies of several
excerpts from articles published in the United States refer
to Internet and/or computer-related businesses located in
New York and Japan.
Responsive to the initial refusals to register,
applicant stated that its services may in fact originate,
at least in part, in Japan and New York, respectively.
Applicant went on to explain that its business plan will
likely allow for local offices in Japan and New York to
render the claimed services from those locations.
Additionally, in response to the inquiries of the Examining
Attorney, applicant admitted that some of its audio content
may be transmitted using MP3 technology.
3 Examining Attorney Golden took over for Examining Attorney
Saito at the briefing stage.
Ser Nos. 75/714,344; 75/714,345 and 75/754,818
5
With regard to the application which relates to
services in Class 38, applicant stated that its chat room
and bulletin board services, as well as its broadcasting
services, could use MP3 technology and could cover issues
or information related to New York, although applicant does
not intend to so limit its services or the technology used
to render them.
The Examining Attorney also made of record excerpts of
articles published in the United States which demonstrate
that Internet content providers render their services from
Japan and from New York, and that Internet chat room and
broadcasting services also originate there.
The test under Section 2(e)(1) of the Lanham Act for
determining whether a mark is merely descriptive of the
goods or services with which it is, or will be, used is
well settled. This section of the Act precludes
registration of a mark if it merely describes a quality,
characteristic, function or feature of the relevant
services. In re Gyulay, 820 F.2d 1216, 3 USPQ2d 1009 (Fed.
Cir. 1987); In re MetPath Inc., 223 USPQ 88 (TTAB 1984).
The same section of the statute also provides that a mark
may be refused registration if it conveys information
concerning a quality, characteristic, function or feature
of the services that is false, but plausible. In re
Ser Nos. 75/714,344; 75/714,345 and 75/754,818
6
Woodward & Lothrop Inc., 4 USPQ2d 1412 (TTAB 1987). It is
not necessary for the term in question to describe all of
the qualities, characteristics, functions or features of
the services in order for a refusal under Section 2(e)(1)
to be appropriate. It is sufficient if a term describes
one significant attribute of them. In re MBAssociates, 180
USPQ 338 (TTAB 1973). The fact that the term sought to be
registered does not appear in the dictionary is not
determinative of the issue of mere descriptiveness. In re
Gould Paper Corp., 834 F.2d 1017, 5 USPQ2d 1110 (Fed. Cir.
1987). A mark is suggestive, rather than merely
descriptive, if imagination, thought or perception is
required to reach a conclusion as to the characteristics of
the services. In re Shutts, 217 USPQ 363 (TTAB 1983).
When these legal principles and the ones governing
geographical descriptiveness and geographical
misdescriptiveness are considered in conjunction with the
records in the cases before us, we find that the Examining
Attorney has adequately supported the refusals to register
based on mere descriptiveness and geographical
descriptiveness, but that in view of the fact that
applicant has stated that its services will involve
providing information relating to Japan and New York, the
refusals based on misdescriptiveness under Section 2(e)(1)
Ser Nos. 75/714,344; 75/714,345 and 75/754,818
7
of the Act are not well taken, and in view of applicant’s
concession that his services will be rendered in Japan and
New York, that the marks are not primarily geographically
misdescriptive within the meaning of Section 2(e)(3) of the
statute.
As noted above, these records support the conclusion
that two significant features or characteristics of
applicant’s Class 42 services of providing on-line
publications, search engines and computerized databases in
the fields of music, entertainment, arts and culture, etc.,
are that some of the information applicant will make
available to its customers will be transmitted in the MP3
computer format, and that the subject of some of the
information thus disseminated will be Japan or New York.
With regard to the application involving broadcasting
services, on-line chat rooms and on-line electronic
bulletin boards, the record in that application is clear
that at least some of the information transmitted by
applicant will be in the MP3 format, and that the subject
of at least some of the programming provided by applicant
and the discussions provided in applicant’s chat rooms and
on applicant’s electronic bulletin boards will relate to
music, entertainment, arts and culture in New York.
Ser Nos. 75/714,344; 75/714,345 and 75/754,818
8
When the commonly-understood meanings of the terms
MP3, JAPAN and NEW YORK are considered in the two
combinations presented by these marks, the resulting
compound terms clearly communicate the facts that the
services will involve the transmission of information about
Japan and New York, respectively, in the MP3 format. These
are significant characteristics or features of these
services.
Applicant argues that the terms it seeks to register
are arbitrary, fanciful, unitary marks with absolutely no
meanings. Applicant contends they are at most suggestive,
requiring mental gymnastics and multi-step reasoning in
order to glean any meaning from them. Applicant repeatedly
points out that the records contain no dictionary
definitions for MP3JAPAN or MP3NEWYORK and that the
Examining Attorney has not made of record any evidence that
anyone has used or needs to use these terms in connection
with any services.
Applicant’s arguments are not persuasive. We cannot
adopt applicant’s conclusion that the Examining Attorney
has not met his burden of proof. As noted above, he has
demonstrated the meanings of MP3, Japan and New York, and
he has explained why consumers presented with MP3JAPAN or
MP3NEWYORK in connection with applicant’s Internet-based
Ser Nos. 75/714,344; 75/714,345 and 75/754,818
9
services which will include providing information about
Japan or New York in the MP3 format would understand
MP3JAPAN or MP3NEWYORK to describe that fact.
Contrary to applicant’s contention, the combinations
of these descriptive terms do not result in new, unitary,
compound marks which are incongruous or have some non-
descriptive meaning. As the Examining Attorney points out,
in relation to applicant’s online publications, search
engines and databases in the field of music, entertainment,
arts and culture, the only reasonable interpretation of the
marks are the descriptive ones identified by the Examining
Attorney. The same thing applies in regard to the services
in Class 38.
Even applicant could not conjure up other possible
connotations for these marks, although he did argue that
coming up with what is to us the obvious descriptive
meaning of the combination of the two elements in each mark
could only be achieved through a complicated, multi-step
reasoning process. We simply disagree. We can find no
support in this record for concluding that prospective
purchasers of these services would need to use any
imagination, mental gymnastics or complex reasoning in
order to impute the ordinary meanings to the components of
these marks and arrive at the descriptive meaning in which
Ser Nos. 75/714,344; 75/714,345 and 75/754,818
10
the combination of the two descriptive component terms
naturally results. The marks identify significant
characteristics or features of the services recited in the
applications, namely that the information which will be
available by means of applicant’s on-line publications,
search engines and computer databases, and the subjects of
its broadcasts, chat rooms and on-line bulletin boards,
will relate to Japan or to New York, and that this
information will transmitted in the MP3 format.
Accordingly, the marks are unregistrable under Section
2(e)(1) of the Act.
That the record does not show that the terms applicant
seeks to register have a dictionary definitions or have
been used by someone else in connection with the services
set forth in these applications does not mandate a
different result. In re Orleans Wines, Ltd., 196 USPQ 516
(TTAB 1977).
In view of the fact that the services will involve
information about Japan and New York, the refusals based on
misdescriptiveness in the context of Section 2(e)(1) of the
Lanham Act are plainly not appropriate. If the information
provided in applicant’s publications and computer databases
were not going to concern Japan or New York, those refusals
might have been proper, but applicant’s concession that
Ser Nos. 75/714,344; 75/714,345 and 75/754,818
11
information about Japan or New York may be what is
transmitted in the MP3 format renders the refusals based on
misdescriptiveness inappropriate because the information
about the services provided by the marks would not be
false.
We thus turn to the second pair of alternative
refusals, based on the Examining Attorney’s holdings that
the marks are either primarily geographically descriptive
within the meaning of Section 2(e)(2) of the Act or that
they are primarily geographically deceptively
misdescriptive under Section 2(e)(3). In view of
applicant’s statement that its services will likely be
rendered by local offices in Japan and New York,
respectively, the latter basis for the refusals appears to
be inappropriate, but the record establishes that the
refusals under Section 2(e)(2) of the Act are proper.
Neither applicant nor the Examining Attorney seriously
disputes the test for registrability under Section 2(e)(2).
To establish a prima facie case for refusing registration
of a mark because it is primarily geographically
descriptive, the Examining Attorney must show: (1) that the
primary significance of the mark is geographic; (2) that
purchasers would be likely to make an association between
the goods or services and the place named in the mark; and
Ser Nos. 75/714,344; 75/714,345 and 75/754,818
12
(3) that the services do, or will, in fact, come from that
place. In re California Pizza Kitchen, 10 USPQ2d 1704
(TTAB 1989); In re Handler Fenton Westerns, Inc., 214 USPQ
848 (TTAB 1982). The addition of a generic or merely
descriptive term to one which is primarily geographically
descriptive does not avoid the refusal under Section
2(e)(2) of the Act. In re JT Tobacconists, 59 USPQ2d 1080
(TTAB 2001); In re Wine Society of America Inc., 12 USPQ2d
1139 (TTAB 1989). The issue remains whether the primary
significance of the mark is geographic, and, if the
services do in fact emanate from the place named in the
mark, the services/place association can be presumed. In
re Carolina Apparel, 48 USPQ2d 1542 (TTAB 1998).
In the case at hand, the Examining Attorney has
clearly met his burden of establishing that the marks
applicant seeks to register are primarily geographically
descriptive within the meaning of Section 2(e)(2) of the
Act. As noted above, the records establish that Japan and
New York are the names of well-known places which are
neither remote nor obscure, that Internet-based services
are rendered by companies located in those places, and that
applicant intends to render its services from the locations
named in the marks. Plainly, consideration of these marks
would lead prospective purchasers of applicant’s services
Ser Nos. 75/714,344; 75/714,345 and 75/754,818
13
to understand that applicant’s services are, or will be,
rendered from Japan or New York, respectively. Each
element of the test for registrability under Section
2(e)(2) has thus been satisfied.
Applicant argues against these refusals to register by
repeating the unpersuasive argument discussed above. It
centers on applicant’s contention that the marks are
unitary, arbitrary, coined terms with no meanings. As
noted above, however, the readily understood meanings of
the component terms which make up the marks would result in
prospective purchasers of applicant’s services
understanding significant characteristics or features of
the services.
Certainly, it is likely that the descriptive
significance of these marks discussed above would be
recognized by a portion of prospective purchasers of these
services, but others are just as likely to understand from
the marks that Japan and New York are the places where the
services are performed. Again, applicant has proposed no
significance the mark could have that is not either merely
descriptive or primarily geographic.
As noted above, combining the geographic designations
with the descriptive term MP3 does not obviate the refusals
on the grounds that the marks are primarily geographically
Ser Nos. 75/714,344; 75/714,345 and 75/754,818
14
descriptive. MP3 is a generic term for the audio format.
It does not alter the primary geographic significance of
the mark as a whole.
In his brief, applicant makes an interesting argument
with regard to the nature of services rendered by means of
the Internet. Applicant espouses the theory that even if
purchasers would understand Japan and New York as place
names and MP3 as the name of the format in which
applicant’s information files will be available, purchasers
would still not make the requisite services/place
associations because no specific location is known for
these Internet-based services; because the location from
which such services are actually rendered is insignificant;
and because all that purchasers know or need to know is
that they are available on line. Applicant argues that
“[t]o think that Internet services originate from any
specific geographic location is a fiction,” because his
services “could originate from servers anywhere in the
world…” (brief, p. 18).
We are not persuaded by applicant’s argument because,
as this record clearly demonstrates, the public is aware
that Internet-related services are rendered by businesses
located in the geographic locations identified in the
marks, and applicant itself plans on rendering his services
Ser Nos. 75/714,344; 75/714,345 and 75/754,818
15
from the places named in the marks. Moreover, it would be
unreasonable to adopt the conclusion that purchasers of
these kinds of services do not think that they are rendered
from somewhere. It seems much more likely that users of
global computer networks, even though they may be unaware
of the precise physical locations of the entities at the
other ends of their network communications, recognize the
fact that the wires and cables that constitute the networks
do, in fact, lead somewhere, and that the entities which
conduct business on these networks to have physical
embodiments somewhere. If there were any fiction involved
in this analysis, it would be adopting applicant’s
assertion that purchasers somehow believe that these
services somehow spring directly from the ether in the
Ethernet with no discernible origin.
If applicant’s on-line publication, database and
search engine services were not going to originate in Japan
and New York, the refusals under Section 2(e)(3) would be
appropriate, but in view of applicant’s admission that they
will be rendered from the named places, the refusals under
Section 2(e)(2) are well taken.
In summary, the refusals under Section 2(e)(1) and
Section 2(e)(2) of the Lanham Act are affirmed because the
marks are merely descriptive of applicant’s services and
Ser Nos. 75/714,344; 75/714,345 and 75/754,818
16
the marks are primarily geographically descriptive of them
as well. In view of the fact that the specified services
will be rendered in the locations named in the marks, and
the fact that the subject matters of the online
publications, search engines and databases, as well as the
chat rooms, broadcasts and bulletin boards, will be
information about Japan and New York, respectively, the
refusals to register based on misdescriptiveness and
geographical misdescriptive are not appropriate.
DECISION: The refusals to register under Section 2(e)(1)
based on mere descriptiveness and under Section 2(e)(2)
based on geographical descriptive this are affirmed. The
refusals based on misdescriptiveness this under Section
2(e)(1) and on geographical misdiscriptiveness under
Section 2(e)(3) are reversed.