William Carroll

Trademark Trial and Appeal Board

Jun 9, 1999

No. 74643905 (T.T.A.B. Jun. 9, 1999)

Paper No. 27
EWH/cj
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF THE TTAB JUNE 9, 99
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re William Carroll
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Serial No. 74/643,905
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William Carroll, pro se.
Florentina Blandu, Trademark Examining Attorney, Law Office
106 (Mary Sparrow, Managing Attorney)
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Before Seeherman, Hanak and Chapman, Administrative
Trademark Judges.
Opinion by Hanak, Administrative Trademark Judge:
William Carroll (applicant) seeks to register DISKBOOK
in typed drawing form for “a series of books and CD-roms,
sold as a unit, all on the subjects of travel, historical
walking tours, and tourist information.” The intent-to-use
application was filed on March 9, 1995.
The Examining Attorney has refused registration on two
grounds. First, the Examining Attorney contends that
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pursuant to Section 2(e)(1) of the Lanham Trademark Act,
applicant’s mark DISKBOOK is merely descriptive of his
goods. Second, citing Trademark Rule 2.72(a), the
Examining Attorney has refused registration on the basis
that applicant is impermissibly attempting to amend its
drawing to depict its mark as CODA DISKBOOK, as opposed to
simply DISKBOOK. It is the contention of the Examining
Attorney that such a proposed amendment to the drawing
constitutes a material alteration and hence is not
permitted.
When the refusal to register was made final,
applicant appealed to this Board. Applicant and the
Examining Attorney filed briefs. Applicant did not request
a hearing.
As has been stated repeatedly, “a term is descriptive
if it forthwith conveys an immediate idea of the
ingredients, qualities or characteristics of the goods.”
In re Abcor Development Corp., 588 F.2d 811, 200 USPQ 215,
218 (CCPA 1978) and cases cited therein.
In support of her contention that applicant’s mark is
merely descriptive of applicant’s goods, the Examining
Attorney has made of record ten stories from the NEXIS
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database which demonstrate to our satisfaction that the
term “diskbook” is indeed descriptive of a type of CD-rom,
one of applicant’s goods. The following passage taken from
the October 1994 issue of “Technological Horizons in
Education” presents a good description of what a diskbook
is:
Creating textbooks on disk is one of
the most challenging opportunities for
applying technology and education.
Traditional textbooks present
information as Gutenberg did –
serially, in page order. New
technologies, such as hypertext tools
and CD-ROM, make it possible to access
information in many different ways,
tailored both to subject and user.
Diskbooks can store not just
information, but also software that
manages its presentation and enables
the reader to interact with it in a
personal fashion.
An article from the April 6, 1995 edition of “The
Dallas Morning News” discusses an exhibit at the Dallas
Public Library and demonstrates that the terms “diskbook”
or “discbook” (spelled either as one word or as two) are
simply not obscure: “The exhibit will showcase the many
changes that have transformed the book through the ages,
beginning with a clay tablet from Babylonia (2095-2048
B.C.) through a contemporary compact disc book.”
Ser No. 74/643,905
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In arguing that his purported mark DISKBOOK is not
merely descriptive of his goods, applicant makes the
assertion that the Examining Attorney’s stories exemplify
“rare uses.” (Applicant’s letter dated September 28, 1996).
We simply disagree. Besides being discussed in “The Dallas
Morning News,” diskbooks or disc books (spelled either as
one word or as two) have been discussed in such other
general circulation publications as “The Austin American
Statesman,” “The Virginian Pilot (Norfolk)” and “U.S. News
and World Report.”
In his September 28, 1996 letter, applicant also makes
the following argument: “May I also point out that the
proper use of the word/phrase in my application is DiskBook
... as typed here. Not disk book, disc book, diskbook, or
discbook.” Obviously, an applicant cannot convert a
descriptive term into a trademark simply by the use of
capitalization. Moreover, because the application depicts
the mark in typed drawing form, a registration that issued
would encompass the mark depicted as “diskbook.”
Finally, we note that applicant himself appears to
concede that his purported mark DISKBOOK is not, by itself,
a source identifier. In this regard, we note that on the
second page of applicant’s letter of September 28, 1996,
applicant requests that his trademark be changed from
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5
DISKBOOK to CODA DISKBOOK. Applicant then explains that
“this simple revision maintains my use of ‘DiskBook’ and by
adding ‘Coda’ does in fact identify the source of the
goods.” In other words, applicant himself appears to
concede that the real source identifier of his goods is
CODA or CODA DISKBOOK, and not DISKBOOK by itself.
Accordingly, we find that DISKBOOK per se is merely
descriptive of applicant’s goods and we sustain the refusal
to register pursuant to Section 2(e)(1) of the Lanham
Trademark Act.
As for applicant’s attempt to change his mark from
DISKBOOK to CODA DISKBOOK, we find that this clearly
constitutes an impermissible material alteration of the
drawing. It must be remembered that applicant filed an
intent-to-use application. With his original application,
applicant submitted no specimens (obviously), but merely
submitted a drawing which reflected the mark as DISKBOOK in
typed drawing form. Thus, we are not dealing with a
situation where, from the very beginning, there was an
inconsistency between applicant’s drawing and applicant’s
specimens of use because the latter simply did not exist
when the application was originally filed. See In re ECCS
Inc., 39 USPQ2d, 2001, 2004-05 (Fed. Cir. 1996).
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We find that the addition of the arbitrary term CODA
to the mark depicted in the drawing (DISKBOOK) would be an
impermissible material alteration of the mark as filed.
Accordingly, the second ground of refusal is also affirmed.
Decision: The refusal to register is affirmed on both
grounds.
E. J. Seeherman
E. W. Hanak
B. A. Chapman
Administrative Trademark
Judges, Trademark Trial
and Appeal Board