ZD Inc.

Trademark Trial and Appeal Board

Nov 3, 1999

No. 75186844 (T.T.A.B. Nov. 3, 1999)

Paper No. 15
CEW
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF THE TTAB NOV. 3, 99
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
___________
Trademark Trial and Appeal Board
___________
In re ZD Inc.1
___________
Serial No. 75/186,844
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Mark D. Engelmann and David A. Cohen of Fross, Zelnick,
Lehrman & Zissu for applicant.
Gary R. Thayer, Trademark Examining Attorney, Law Office
103 (Michael A. Szoke, Managing Attorney).
____________
Before Seeherman, Hohein and Walters, Administrative
Trademark Judges.
Opinion by Walters, Administrative Trademark Judge:
ZD Inc. has filed a trademark application to register
the mark PC SHOPPER for “providing multiple-user access to
a global computer information network featuring news and
information about computers, computing, systems, technology
and information networks; providing on-line information

1 Applicant has indicated in the headings of its submissions that there
has been a change of name or entity of applicant from Ziff-Davis
Publishing Company to Ziff-Davis Inc.; and, further, to ZD Inc.
Applicant is advised that this name change must be recorded with the
Patent and Trademark Office for any registration that may issue from
this application to issue in applicant’s new name.
Serial No. 75/186,844
2
about computers, computing, systems, technology and
information networks via a global computer network.”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
Applicant has appealed. Both applicant and the
Examining Attorney have filed briefs, but an oral hearing
was not requested. We affirm the refusal to register.
The Examining Attorney contends that the mark PC
SHOPPER merely describes “the intended audience or subject
matter of [applicant’s] services, namely ‘PC shoppers’ –
i.e., those who may be ‘shopping’ the market for buying or
selling personal computers (‘PC’s”)”; and that the mark is
merely descriptive if it refers to “either those end-user
consumers who are ‘shoppers’ for personal computers, or
those professional ‘shoppers’ who are shopping the personal
computer market on behalf of others, or both.” In support

2 Serial No. 75/186,844, in International Class 42, filed October 24,
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. 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. 75/186,844
3
of his position, the Examining Attorney submitted with his
brief, and we take judicial notice of, dictionary
definitions of “PC” as “(personal computer) although the
term PC is sometimes used to refer to any kind of personal
computer … in general, PC refers to computers that conform
to the PC standard originally developed by IBM”4 and
“shopper” as “(1) one that shops (2) one whose occupation
is shopping for customers or for an employer.”5
The Examining Attorney also submitted excerpts of
articles from the LEXIS/NEXIS database in support of his
position. The excerpts, for the most part, use the term
“PC shopper” to refer to buyers of personal computers,
which would encompass both types of shoppers indicated in
the above-noted dictionary definition of “shopper.” In
fact, several of these excerpts are from applicant’s
publications, PC Week and Computer Shopper.6
Applicant contends that its mark is suggestive of the
identified “Internet-related” services, that the Examining

4 The Computer Glossary (7th ed.) by Alan Freedman.
5 Webster’s Ninth New Collegiate Dictionary.
6 Examples thereof include the following: “… are being made to improve
the low-cost passive-matrix or dual-scan liquid crystal displays (LCDs)
that notebook PC shoppers consider the poor relations of active-matrix
screens” Computer Shopper, September 1997; “Those savvy PC shoppers
should stick to the rules” PC Week, May 26, 1997; “Not long ago, there
were two kinds of PC shoppers: those who hit the bricks, walked the
floors, and checked out systems in retail stores, and the savvy folks
who read …” Computer Shopper, March 1997.
Serial No. 75/186,844
4
Attorney “has not adequately considered” the services
identified in the application, and that “the record is
devoid of meaningful evidence demonstrating that PC SHOPPER
is merely descriptive of applicant’s specific services.”
Applicant contends that its identification of services
“does not suggest that [its] services will be intentionally
aimed at those who shop for computers,” although its
“services may, in fact, be used by people who intend to buy
a personal computer.” Arguing that a term that conveys
information about the type of consumer who uses the
services is suggestive, rather than merely descriptive,
applicant states that “the fact that some of the relevant
consumers may shop for computers does not make the mark PC
SHOPPER merely descriptive of Internet-related services
which will provide access or feature information of
interest to those consumers.”
Applicant argues, additionally, that the mark PC
SHOPPER 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, in addition to the two definitions noted by
the Examining Attorney, “shopper” may mean “a commercial
employee who fills mail or telephone orders,” and that

Serial No. 75/186,844
5
“applicant’s services may be directed toward commercial
sellers who are interested in obtaining information about
market conditions, consumer buying habits, demographic
information and so forth.”7 Concluding that its mark is
“ambiguous” in relation to its services, applicant urges us
to resolve any doubt in its favor.
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
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

7 Applicant submitted with its brief, and we take judicial notice of, a
definition of “shopper” from The American Heritage Dictionary (3rd ed.)
which supports these additional meanings of the term.
Serial No. 75/186,844
6
it is likely to make on the average purchaser of such goods
or services. In re Recovery, 196 USPQ 830 (TTAB 1977).
Turning to the case before us, while applicant posits
several possible connotations of the term “shopper,” we
must consider the meaning of the term as it appears in the
mark as a whole, PC SHOPPER, and in connection with the
identified services. Applicant’s proposed services, as
identified, make available to users information about,
inter alia, computers, including PCs. In the context of
the identified services, PC SHOPPER connotes persons
interested in purchasing a personal computer, whether for
themselves or on behalf of others. This connotation
renders the mark PC SHOPPER merely descriptive of the
consumers likely to utilize applicant’s services.
Applicant has offered no other viable connotation of the
mark that would render it ambiguous in connection with the
identified services. We note that, contrary to applicant’s
contentions, a mark that merely describes the relevant
class of purchasers is merely descriptive, rather than
suggestive, because such information is a significant
aspect of any service. See, Hunter Publishing Co. v.
Caulfield Publishing Ltd., 1 USPQ2d 1996 (TTAB 1986)
(SYSTEMS USER merely describes those to whom magazine
directed, i.e., readers or subscribers); In re Sentry
Serial No. 75/186,844
7
Chemical Co., 230 USPQ (TTAB 1986) (HOSPICE immediately
informs purchasers that goods are designed for use in
hospices); and In re Camel Manufacturing Company, Inc., 222
USPQ 1031 (TTAB 1984) and cases cited therein (MOUNTAIN
CAMPER merely describes the type of customer to whom
applicant’s retail and mail order services in the field of
outdoor equipment and apparel are directed).
Decision: The refusal under Section 2(e)(1) of the
Act is affirmed.
E. J. Seeherman
G. D. Hohein
C. E. Walters
Administrative Trademark Judges,
Trademark Trial and Appeal Board