ZD Inc.

Trademark Trial and Appeal Board

Oct 5, 1999

No. 75183789 (T.T.A.B. Oct. 5, 1999)

Paper No. 13
HANAK/md
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF THE TTAB OCT. 5, 99
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
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In re ZD Inc.
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Serial No. 75/183,789
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Mark D. Engelmann of Fross, Zelnick, Lehrman and Zissu, PC
for ZD Inc.
Gary R. Thayer, Trademark Examining Attorney, Law Office
103 (Michael A. Szoke, Managing Attorney)
_______
Before Hanak, Hohein and Wendel, Administrative Trademark
Judges.
Opinion by Hanak, Administrative Trademark Judge:
ZD Inc. (applicant) seeks to register HOMESHOPPER in
typed drawing form for “entertainment in the nature of on-
going television programming providing information of
general interest to consumers.” The intent-to-use
application was filed on October 18, 1996.
The Examining Attorney refused registration on three
grounds. First, citing In re Babies Beat Inc., 13 USPQ2d
1729, 1731 (TTAB 1990), the Examining Attorney contends
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that the “applicant failed to provide information about the
intended audience, subject matter, purpose and channels of
trade of [applicant’s] services” despite repeated requests
that applicant do so. (Examining Attorney’s brief pages 12
and 19).
Second, the Examining Attorney refused registration on
the basis that “applicant has failed to comply with the
requirement to adopt an identification of the services
which is not unreasonably broad.” (Examining Attorney’s
brief page 16).
Finally, the Examining Attorney refused registration
pursuant to Section 2(e)(1) of the Trademark Act on the
basis that applicant’s mark is merely descriptive of its
services.
Each of the three grounds of refusal is without merit,
and accordingly the refusal to register is reversed.
Considering the first ground, it must be remembered that
Babies Beat involved a use based application. This present
application is an intent-to-use application. Section
1105.01(a)(iv) of the Trademark Manual of Examining
Procedure provides, in pertinent part, that “the examining
attorney may not make any inquiry or request any
information premised on use of the mark before the
applicant files an amendment to allege use.” The Examining
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Attorney has acknowledged that such an amendment has not
been filed. (Examining Attorney’s brief page 2).
Accordingly, applicant’s failure to provide more
information regarding the nature of the services on which
it intends to use its mark HOMESHOPPER is not a proper
ground for refusal.
Second, with regard to the Examining Attorney’s
refusal to register on the basis that “applicant has failed
to comply with the requirement to adopt an identification
of the services which is not unreasonably broad,” we simply
note that the Examining Attorney has conceded that
applicant’s identification of its services is “a possibly
acceptable identification” depending upon what the
specimens of use show applicant’s services to be.
(Examining Attorney’s brief page 16). We find that
applicant’s chosen identification of services –-
entertainment in the nature of on-going television
programming providing information of general interest to
consumers -– is acceptable and is not necessarily overly
broad. Accordingly, the second ground for refusal is
likewise without merit.
Finally, we turn to the question of whether
applicant’s mark is merely descriptive of applicant’s
services. As has been stated repeatedly, “a term is merely
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descriptive if forthwith conveys an immediate idea of the
ingredients, qualities or characteristics of the goods [or
services].” In re Abcor Development Corp., 588 F.2d 811,
200 USPQ 215, 218 (CCPA 1978) (emphasis added); Abercrombie
& Fitch Co. v. Hunting World, Inc., 537 F.2d 4, 189 USPQ
759, 765 (2nd Cir. 1976). Moreover, the immediate idea must
be conveyed forthwith with a “degree of particularity.” In
re TMS Corp. of the Americas, 200 USPQ 57, 59 (TTAB 1978);
In re Entenmann’s Inc., 15 USPQ2d 1750, 1751 (TTAB 1990),
aff’d 90-1495 (Fed. Cir. February 13, 1991).
There is no dispute that applicant has previously used
its mark HOMESHOPPER on a Web site and in a publication
involving computers and computer-related products.
However, applicant’s use of the mark HOMESHOPPER in
connection with goods or services other than the services
set forth in the application is largely irrelevant in
determining whether applicant’s mark is descriptive of the
services as set forth in the application. This is true
even if we assume for the sake of argument (1) that
applicant’s mark is merely descriptive of its other goods
or services, and even if we assume (2) that applicant’s
other goods or services are fairly closely related to the
goods or services for which applicant seeks registration.
See In re The Stroh Brewery Co., 34 USPQ2d 1796, 1797 (TTAB
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5
1994) (“Moreover, in determining whether a mark is
descriptive, the mark must not be considered in the
abstract, but instead, it must be considered as ‘applied to
the goods or services involved.’ Abcor Development, 200
USPQ at 218. In addition, the fact that a term may be
descriptive of certain types of goods [or services] does
not establish that it is likewise descriptive of other
types of goods[or services], even if the goods [or
services] are closely related (e.g. hats and boots).
Abercrombie & Fitch, 189 USPQ at 766.”).
The Examining Attorney has conceded that as applied to
television programming, applicant’s mark HOMESHOPPER
conveys at least two possible messages. To use the
Examining Attorney’s words, the mark HOMESHOPPER could
refer to television viewers who “either … shop at home, or
those who are shopping for products/services for the home.”
(Examining Attorney’s brief page 6, original emphasis).
However, the Examining Attorney has at no time taken issue
with applicant’s contention that its mark HOMESHOPPER could
also refer to television viewers who are real estate
agents; who are individuals shopping for a home for their
own use; or who are individuals viewing applicant’s
television programming to get information on products and
services which they can later utilize when they physically
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shop in stores. In short, as applied to television
programming, the mark HOMESHOPPER has so many plausible
meanings that it simply fails to convey forthwith any
information about applicant’s television program with the
required “degree of particularity.” Moreover, to the
extent of there are doubts on the issue of mere
descriptiveness, it is the long standing practice of this
Board to resolve doubts in applicant’s favor. In re
Gourmet Bakers Inc., 173 USPQ 565 (TTAB 1972).
Decision: The refusal to register on all three
grounds is reversed. However, once applicant submits its
specimens of use, then if it is clear that the mark
HOMESHOPPER is merely descriptive of applicant’s television
program or if it is clear that applicant’s television
program has a very narrow focus, then the Examining
Attorney may on second examination again raise either or
both refusals, namely, mere descriptiveness and/or the fact
that applicant’s identification of its services is too
broad. See Section 1105.01(a)(iv) of the Trademark Manual
of Examining Procedure.
E. W. Hanak
G. D. Hohein
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H. R. Wendel
Administrative Trademark Judges,
Trademark Trial and Appeal Board