Ziff Davis Publishing Co.

Trademark Trial and Appeal Board

Sep 29, 1999

No. 75178501 (T.T.A.B. Sep. 29, 1999)

Paper No. 16
ejs
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF THE TTAB SEPT. 29, 99
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Ziff Davis Publishing Company
________
Serial No. 75/178,501
_______
James E. Rosini of Kenyon & Kenyon for Ziff Davis
Publishing Company.
Gary R. Thayer, Trademark Examining Attorney, Law Office
103 (Michael A. Szoke, Managing Attorney).
_______
Before Seeherman, Hanak and Quinn, Administrative Trademark
Judges.
Opinion by Seeherman, Administrative Trademark Judge:
Ziff-Davis Publishing Company has appealed the refusal
of the Trademark Examining Attorney to register VAR SHOPPER
as a mark for "providing multiple user access to a global
computer information network for the transfer and
dissemination of a wide range of information regarding
computer related products and services; providing
information regarding computer related products and
Ser No. 75/178,501
2
services via a computer network."1 Registration has been
refused pursuant to Section 2(e)(1) of the Trademark Act,
15 U.S.C. 1052(e)(1), on the ground that applicant’s mark
is merely descriptive of its identified services.
Both applicant and the Examining Attorney have filed
briefs. An oral hearing was not requested.
As a preliminary matter, we note that in his brief the
Examining Attorney has stated, at footnote 3, that "to the
extent that the proposed mark does not describe any aspect
of the services as indicated above, the proposed mark would
be deceptively misdescriptive and, therefore, should still
be refused under Section 2(e)(1) as well." The Examining
Attorney never, during the examination of this application,
raised the issue of deceptive misdescriptiveness as an
alternative ground for refusal. He cannot, therefore, make
such a refusal in his brief. Accordingly, the only issue
before the Board in this appeal is whether VAR SHOPPER is
merely descriptive of applicant’s identified services.

1 Application Serial No. 75/178,501, filed October 8, 1996,
based on an asserted bona fide intention to use the mark in
commerce. During the course of the prosecution of this
application applicant has stated that it changed its name first
to Ziff-Davis, Inc. and subsequently to ZD Inc. Although
applicant also stated that each change of name would be recorded
with the Patent and Trademark Office, Office records do not
reflect any such recordations. Accordingly, we continue to refer
to applicant as Ziff Davis Publishing Company.
Ser No. 75/178,501
3
It is the Examining Attorney’s position that
applicant’s mark merely describes the intended audience or
subject matter of applicant’s identified services.
According to the Examining Attorney, this audience is
"those who serve as buying/selling agents, or ’shoppers,’
on behalf of organizations known in the trade as ’value
added resellers’ (or ’VAR’s’)--i.e., what would be aptly
referred to as ’VAR shoppers’)." Brief, p. 2.
The only evidence relied on by the Examining Attorney
during the examination of this application was a dictionary
definition of "shopper" submitted by applicant, namely,
"one whose occupation is shopping as an agent for customers
or for an employer."2 With his brief the Examining Attorney
submitted what he described as a dictionary definition of
"VAR" taken from "The Computer Glossary," 7th ed., and has
asked that we take judicial notice of it. The submission,
however, does not appear to come from any standard
dictionary, but appears, instead, to be a printout from an
computer web site with the address "http/www.techweb.com/
encyclopediadefineterm?term=var." It is not clear exactly
what the source for the definition is, although on the page
we see references to "TechEncyclopedia" and "Computer

2 Webster’s Ninth New Collegiate Dictionary, © 1989.
Ser No. 75/178,501
4
Desktop Encyclopedia." Although the Board may take
judicial notice of dictionary definitions, see University
of Notre Dame du Lac v. J. C. Gourmet Food Imports Co.,
Inc., 213 USPQ 594 (TTAB 1982), aff’d, 703 F.2d 1372, 217
USPQ 505 (Fed. Cir. 1983), we are reluctant to do so in
this case, where the definition has been retrieved from an
on-line source which is unclear, and therefore raises
questions about the reliability of the definition. See In
re Total Quality Group, Inc., __USPQ2d__ (March 23, 1999).
Even if we were to accept the Examining Attorney's
position that VAR would be readily understood by the
relevant group of consumers for applicant's services as
meaning "value added reseller", we find that the Examining
Attorney has failed to establish that VAR SHOPPER is merely
descriptive of the identified services. As both applicant
and the Examining Attorney agree, a term is merely
descriptive if it immediately conveys information
concerning a quality, characteristic, function, ingredient,
attribute or feature or a product or service. In re
Venture Lending Associates, 226 USPQ 285 (TTAB 1985).
In this case, as noted above, the Examining Attorney
has stated that VAR SHOPPER describes "the intended
audience or subject matter of the services, namely those
who serve as buying/selling agents, or 'shoppers,' on
Ser No. 75/178,501
5
behalf of organizations known in the trade as ’value added
resellers’ (or VAR’s’)." Brief, p. 2. Even the Examining
Attorney does not appear to be sure whether VAR SHOPPER
refers to the user of applicant’s services or whether VAR
SHOPPER is the subject matter of the services. Frankly, we
are at a loss to understand, from the Examining Attorney’s
arguments, how VAR SHOPPER is the subject matter of the
services.
As for whether the term immediately and directly
conveys information about the users of the services, the
Examining Attorney seems unsure whether such a user would
be a buyer for value added resellers or one who sells
products to these resellers. There is simply no evidence
in the record about whether purchasing agents for, or
sellers to, value added resellers, would be involved with
the services identified in the application. In view of
this lack of evidence, and noting that there is some
incongruity in the juxtaposition of "reseller" and
"shopper," we find that the Examining Attorney has failed
to established that VAR SHOPPER is merely descriptive of
applicant’s identified services.
Accordingly, we follow our long established policy of
resolving doubt in behalf of the applicant. In re The
Gracious Lady Service, Inc., 175 USPQ 380 (TTAB 1972).
Ser No. 75/178,501
6
However, we wish to make clear that our decision herein
rests solely on the evidence, or lack thereof, that is in
the present record. On a different record, such as might
be adduced during the course of an opposition proceeding,
we might well come to a different conclusion.
Decision: The refusal of registration is reversed.
E. J. Seeherman
E. W. Hanak
T. J. Quinn
Administrative Trademark Judges
Trademark Trial and Appeal Board