ZD Inc.

Trademark Trial and Appeal Board

May 26, 1999

No. 75095168 (T.T.A.B. May. 26, 1999)

Paper No. 13
CEW
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
___________
Trademark Trial and Appeal Board
___________
In re ZD Inc.1
___________
Serial No. 75/095,168
___________
James E. Rosini of Kenyon & Kenyon for applicant.
Gary R. Thayer, Trademark Examining Attorney, Law Office
103 (Michael A. Szoke, Managing Attorney).
____________
Before Simms, Cissel and Walters, Administrative Trademark
Judges.
Opinion by Walters, Administrative Trademark Judge:
ZD Inc. has filed a trademark application to register
the mark DIGITAL MERCHANDISING MAGAZINE for “providing
information via an interactive computer information network

1 Applicant submitted with its request for reconsideration notice of its
April, 1997, change of name from Ziff-Davis Publishing Company to Ziff-
Davis Inc.; and, with its reply brief, notice of its further change of
name, dated May 1, 1998, to ZD Inc. Applicant is advised that this
name change would have to be recorded with the Patent and Trademark
Office if applicant prevailed on appeal and wanted a registration
issuing from this application to issue in applicant’s new name.
Serial No. 75/095,168
2
about distribution channels for high technology products
and information technology products.”2
The Trademark Examining Attorney has finally refused
registration on the ground that applicant’s mark is merely
descriptive of its services, under Section 2(e)(1) of the
Trademark Act, 15 U.S.C. 1052(e)(1).3 Additionally, the
Examining Attorney has issued a final requirement for
further information about the nature, subject matter and
channels of trade of the proposed services, under Trademark
Rule 2.61(b), 37 CFR 2.61(b), and has finally refused
registration on this basis.
Applicant has appealed. Both applicant and the
Examining Attorney have filed briefs, but an oral hearing
was not requested. We affirm the refusals to register on
both the ground of mere descriptiveness under Section
2(e)(1), and on the failure to comply with the requirement,
under Trademark 2.61(b), for additional information.

2 Serial No. 75/095,168, in International Class 42, filed April 26,
1996, based on an allegation of a bona fide intention to use the mark
in commerce.
3 In his brief, the Examining Attorney indicated for the first time that
he is refusing registration, alternatively, on the ground that the mark
is deceptively misdescriptive, under Section 2(e)(1) of the Act.
Applicant objects in its reply brief and correctly points out that it
is inappropriate to raise a new ground of refusal for the first time in
an appeal brief. We have given no consideration to this ground of
refusal.
Serial No. 75/095,168
3
Mere Descriptiveness
Turning, first, to the refusal to register on the
ground of mere descriptiveness, the Examining Attorney
contends that the mark DIGITAL MERCHANDISING MAGAZINE
merely describes “the subject matter and nature of the
services, namely, on-line information publications in the
nature of electronic magazines which feature information
about the merchandising of computers and high-tech (i.e.,
‘digital’) equipment.” In support of his position, the
Examining Attorney submitted fourteen excerpts of articles
from the LEXIS/NEXIS database to “demonstrate descriptive
usage of the term ‘digital merchandising’ in connection
with the marketing/merchandising of computers and related
high-tech ‘digital’ equipment.” The Examining Attorney
submitted with his brief dictionary definitions, of which
we take judicial notice, of the words “digital,”
“merchandising,” “magazine” and “distribution.”
Applicant contends that “the provision of multiple
user access and information via a global information
network can be likened to electronic publications in many
instances, and thus the marks for such services should be
treated similarly to marks which are the titles of printed
publications”; and that the issue of descriptiveness is “a
unique problem” with respect to publications. Applicant
Serial No. 75/095,168
4
further argues that the fourteen excerpts of articles from
the LEXI/NEXIS database do not establish the
descriptiveness of the term “digital merchandising.”
Applicant submitted with its brief dictionary definitions,
of which we take judicial notice, of the words “digital”
and “merchandising,” and argues that the mark DIGITAL
MERCHANDISING MAGAZINE is not merely descriptive because it
has several “equally viable connotations … none of which
accurately describes Applicant’s services.” In this
regard, applicant contends that “digital merchandising”
“could be understood to indicate the subject of Applicant’s
services include (sic) marketing any type of products in a
digital medium,” or “the term ‘digital’ could be understood
to modify the word ‘magazine’ such that the mark could be
understood to indicate Applicant’s services are of a
publication, available in an electronic medium, about
general marketing and sales promotion,” or DIGITAL
MERCHANDISING MAGAZINE could be understood to mean “the
services are in the nature of providing information on the
use of digital equipment to effectively merchandise.”
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
Serial No. 75/095,168
5
or service in connection with which it is used, or intended
to be used. In re Bright-Crest, Ltd., 204 USPQ 591 (TTAB
1979); In re Engineering Systems Corp., 2 USPQ2d 1075 (TTAB
1986). It is not necessary, in order to find a mark merely
descriptive, that the mark describe each feature of the
goods, 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 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).
Applicant’s argument that the test for descriptiveness
in connection with publications, either print or
electronic, is somehow different from the general test for
descriptiveness articulated herein is not well taken. In
support of its position, applicant cites In re Distribution
Codes, Inc., 199 USPQ 508 (TTAB 1978), wherein the mark
CODE & SYMBOL was found to be “highly suggestive,” but not
merely descriptive, in connection with journals dealing
with the applied science of product identification. The
principal language in that case quoted by applicant in
Serial No. 75/095,168
6
support of its position is inapposite as it pertains to the
Board’s discussion of the registrability as trademarks of
titles of periodicals or a series, as opposed to titles of
a single book or issue. In that case, the Board
established, first, that the subject publication was a
periodical and, thus, subject to registration, and then
addressed the question of descriptiveness in connection
with the particular subject matter of the identified
publication. In that regard, the Board stated, supra at
510, “we apply a test as close as possible to the tests of
descriptiveness or validity applied to a mark used for any
goods or services.” When this quote is read in the context
of the entire discussion of descriptiveness in that case,
it does not mean that we should apply a test of
descriptiveness to a trademark for a periodical publication
that is somehow different from the general test of mere
descriptiveness applied to a mark for any other goods or
services. In that case the Board pointed out the unique
aspects of the publishing industry and the tendency of
publishers to favor suggestive titles for periodical
publications, and applied the same test of descriptiveness
applicable to any mark for any goods or services. It is
well settled that the criteria applied to a determination
of the descriptiveness of a trademark are equally
Serial No. 75/095,168
7
applicable to those standards involved in ascertaining
whether or not the title of a publication falls within the
proscriptions of Section 2(e)(1). In re Hunter Publishing
Company, 204 USPQ 957, 962 (TTAB 1979); and In re Waverly
Inc., 27 USPQ2d 1620, 1622 (TTAB 1993).
Turning to the case before us, we agree with the
Examining Attorney that DIGITAL MERCHANDISING MAGAZINE is
merely descriptive in connection with the identified
services, notwithstanding applicant’s arguments to the
contrary. As applicant essentially concedes, its proposed
services are in the nature of an electronic publication,
which information the MAGAZINE portion of applicant’s mark
directly conveys. The DIGITAL MERCHANDISING portion of the
mark clearly indicates the subject matter of the electronic
publication, or magazine.
While applicant posits several possible connotations
of the term “digital merchandising,” we must consider the
meaning of the term in connection with the identified
services. In this regard, we note that “digital” is
defined as “[t]raditionally, the use of numbers and comes
from digit, or finger … [t]oday, synonymous with computer”4
and as follows:

4 The Computer Glossary (8th ed.). The Examining Attorney should have
also submitted information indicating the publisher and date of
publication. However, the submitted cover page includes a statement
Serial No. 75/095,168
8
2. In telecommunications, recording or in
computing, digital is the use of a binary
code to represent information. … So digital
transmission is much “cleaner” than analog
transmission. The second major benefit of
digital is that the electronic circuitry to
handle digital is getting cheaper and more
powerful. It’s the stuff of computers.
Analog transmission equipment doesn’t lend
itself to the technical breakthroughs of
recent years in digital.5
“Merchandising” is defined as “the planning and promotion
of sales by presenting a product to the right market at the
proper time, by carrying out organized, skillful
advertising, using attractive displays.”6
Although the term “digital merchandising,” considered
in the abstract, could have the meanings suggested by
applicant, applicant has provided no evidence that the term
would be so perceived by the relevant public. Further,
considering the term in the context of the services as
described in the application, as we must, the term “digital
merchandising” directly conveys information about the
nature of applicant’s services, namely, that applicant’s
proposed electronic publication provides information about
distribution channels for high technology and information

endorsing the book dated 1993, so we conclude that the definition is
sufficiently recent to be relevant herein.
5 Newton’s Telecom Dictionary (1998).
6 Random House Unabridged Dictionary (2nd ed.). We take judicial notice
of the 1987 publication date of this dictionary.
Serial No. 75/095,168
9
technology products. This conclusion is supported by
applicant’s own identification of services and by the
dictionary definitions in the record. Further, this
conclusion is not contradicted by any of the other evidence
of record.7
In the present case, it is our view that, when applied
to applicant’s services, the term DIGITAL MERCHANDISING
MAGAZINE immediately describes, without conjecture or
speculation, a significant feature or function of
applicant’s services, namely, the subject matter and nature
of the electronic publication. Nothing requires the
exercise of imagination, 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
term DIGITAL MERCHANDISING MAGAZINE as it pertains to
applicant’s services.

7 We agree with applicant that the LEXIS/NEXIS evidence is
insufficient, alone, to support our conclusion herein. Of the fourteen
excerpts submitted, seven are from newswire service stories and,
therefore, are of limited probative value because it is not clear that
such stories have appeared in any publication available to the
consuming public. See, In re Marico Inc., 24 USPQ2d 1938 (TTAB 1992);
and In re Men’s International Professional Tennis Council, 1 USPQ2d
1917 (TTAB 1986). Further, four excerpts refer to Digital Corporation
and one excerpt is obtuse. Only two excerpts appear to use the term
“digital merchandising” to describe on-line marketing and sales of
products. Although there are only two excerpts that support the
Examining Attorney’s position, it is not necessary that a designation
be in common usage in the particular industry in order for it to be
merely descriptive. In re National Shooting Sports Foundation, Inc.,
219 USPQ 1018, 1020 (TTAB 1983).
Serial No. 75/095,168
10
Requirement for Additional Information
The Examining Attorney argues that applicant’s failure
to comply with his several requests for information
constitutes a ground for refusal to register. Trademark
Rule 2.61(b) provides:
The examiner may require the applicant to furnish
such information and exhibits as may be
reasonably necessary to the proper examination of
the application.
The Trademark Rules of Practice have the effect of law and
the failure to comply with a request for information is
grounds for refusal of registration. In re Babies Beat,
Inc., 13 USPQ2d 1729, 1731 (TTAB 1990); In re Big Daddy’s
Lounges, Inc., 200 USPQ 371 (TTAB 1978); In re Air Products
and Chemicals, Inc., 192 USPQ 84, 85-86 (TTAB 1976); and In
re Morrison Industries, Inc., 178 USPQ 432, 433-434 (TTAB
1973). The Examining Attorney’s request is reasonably
necessary for the proper examination of this application in
view of his contention that the mark is merely descriptive.
Because this is an intent-to-use application and, except
for the identification of services, the application
contains no information regarding the exact nature of the
intended services, the Examining Attorney correctly asked
applicant for additional information regarding the nature
of the services. Such a request is relevant to the issue
Serial No. 75/095,168
11
of mere descriptiveness. Contrary to its statement in
applicant’s brief, applicant completely disregarded the
Examining Attorney’s request. Even after the Examining
Attorney made the request final, applicant, in its request
for reconsideration, made no attempt to respond to the
requirement with additional information or explain, if
appropriate, why additional information was unavailable.
Applicant states in its brief that it “intends to provide
information on a wide variety of topics regarding the
distribution channels of high technology and information
technology products.” This statement is wholly inadequate.
Examination and prosecution of an application must be
complete prior to appeal. Accordingly, we agree with the
Examining Attorney that applicant’s complete failure to
respond to the Examining Attorney’s requests for
information required the Examining Attorney to proceed with
an incomplete understanding of the exact nature of
applicant’s intended services, which information would have
allowed the Examining Attorney to conduct a more thorough
and informed evaluation of the issue of mere
descriptiveness. Applicant’s failure to comply with the
requirements for additional information, therefore,
justifies refusing registration.
Serial No. 75/095,168
12
Decision: The refusal under Section 2(e)(1) of the
Act and the refusal based on the failure to comply with the
requirement for more information, under Trademark Rule
2.61(b), are affirmed.
R. L. Simms
R. F. Cissel
C. E. Walters
Administrative Trademark Judges,
Trademark Trial and Appeal Board