Ziff-Davis Publishing Co.

Trademark Trial and Appeal Board

Aug 24, 1999

No. 75049228 (T.T.A.B. Aug. 24, 1999)

Paper No. 14
RFC
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF THE TTAB AUG. 24, 99
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Ziff-Davis Publishing Company
________
Serial No. 75/049,228
_______
Mark D. Engelmann of Fross Zelnick Lehrman & Zissu, P.C.
for Ziff-Davis Publishing Company.
Jennifer B. Krisp, Trademark Examining Attorney, Law Office
107 (Thomas Lamone, Managing Attorney).
_______
Before Cissel, Hohein and Hairston, Administrative
Trademark Judges.
Opinion by Cissel, Administrative Trademark Judge:
On Jan. 26, 1996, applicant applied to register the
mark "INTERNET COMPUTING" on the Principal Register for
"general interest publications principally for users and
potential users of online services and products," in Class
16. The application was based on applicant’s assertion
that it possessed a bona fide intention to use the mark in
commerce.
Ser No. 75/049,228
2
The Examining Attorney originally refused registration
under Section 2(d) of the Trademark Act, but that refusal
was subsequently withdrawn in view of applicant’s
arguments.
The Examining Attorney also refused registration under
Section 2(e)(1) of the Act on the ground that the mark
merely describes the subject matter of applicant’s
publication. Submitted in support of this refusal were
copies of published articles retrieved from the Nexis
database wherein the term "Internet computing" was used in
a descriptive context. Typical examples include the
following: "Digital has been extremely visible as a leader
in Internet computing."; "Both technologies are designed to
monitor the virtual nature of the PC inherent in Internet
computing…"; "as corporations adjust to the convergence of
client/server and Internet computing, the components of
enterprise-wide security are encompassing new elements…";
"Myers had also noted that PC computing readers are very
interested in Internet computing, so that developing a
series of state-of-the-art Web sites was another way to
serve the magazine's print and online fans."; and "In
Internet computing, the client and server communicate over
the Internet instead of over a private network."
Ser No. 75/049,228
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Further, the Examining Attorney required applicant to
amend the identification-of-goods clause to indicate the
specific types of publications on which applicant intends
to use the proposed mark.
Responsive to the first Office Action, applicant
amended the application to identify the goods with which it
intends to use the mark as "publications, namely, magazines
and newspapers and supplements thereto and sections
thereof, and newsletters, journals, brochures, catalogues,
directories and pamphlets in the field of technology and
subjects of general interest." Applicant also presented
arguments against the refusal based on descriptiveness.
The Examining Attorney then maintained and made final
the refusal based on Section 2(e)(1). She reiterated that
"INTERNET COMPUTING" is merely descriptive of publications
which feature information about and which deal with the
subject of Internet computing. Additional excerpts
retrieved from the Nexis database were submitted with the
final refusal. Examples include: "Internet computing is
changing the very nature of business-critical computing…";
"… Digital Equipment Corporation has unveiled what it
thinks will be the latest in Internet computing with the
announcement of its brand new 64-bit Java Development
Kit…"; "…maintaining its aggressive push to protect online
Ser No. 75/049,228
4
transactions and create a secure Internet computing
environment for the enterprise, Hewlett-Packard Co. has
introduced Version 2.0 of its [new product]…"; and "at the
same time, the Internet computing revolution is creating
new opportunities for high-growth software businesses."
Applicant then timely filed a Notice of Appeal and a
request for reconsideration. The Board instituted the
appeal, suspended action on it, and remanded the
application to the Examining Attorney for reconsideration.
The Examining Attorney reconsidered the application, but
maintained the refusal to register.
Applicant filed an appeal brief, the Examining
Attorney filed her brief, and applicant filed a reply
brief. Applicant did not request an oral hearing before
this Board, however, so we have resolved this appeal based
on consideration of the written record and arguments before
us.
The test for determining whether a trademark is merely
descriptive of the goods or services with which it is used
or with which it is intended to be used is well settled. A
mark need not name the goods or services on which it is
used in order to be considered merely descriptive of them.
Rather, a mark is merely descriptive if, as used in
connection with the goods or services, it immediately
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describes, i.e., immediately conveys information about, an
ingredient, quality, characteristic, or feature thereof, or
if it directly conveys information regarding the nature,
function, purpose, or use of the goods or services. See In
re Abcor Development Corp., 588 F.2d 811, 200 USPQ 215
(CCPA 1978); In re Ethan Foods, Inc., 24 USPQ2d 1757 (TTAB
1992); and In re American Screen Process Equipment Co., 175
USPQ 561 (TTAB 1972). Further, the question of whether a
mark is merely descriptive must be determined not in the
abstract, that is, not by asking whether one can guess from
the mark itself, considered in a vacuum, what the goods or
services are, but rather in relation to the goods or
services for which registration is sought, that is, by
asking whether, when the mark is seen on the goods or in
connection with the services, it immediately conveys
information about their nature. In re Abcor Development
Corp., supra. We are obligated to determine the question
of registrability based on the identification of goods or
recitation of services as set forth in the application for
registration, subject only to such limitations as to scope,
channels of trade, etc. as are specified therein, or which
are normal for goods of the same nature. In re Allen
Electric and Equipment Co., 458 F.2d 1404, 173 USPQ 689
(CCPA 1972); In re Vehicle Information Network, Inc., 32
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USPQ2d 1542 (TTAB 1994); and In re Cryomedical Services
Inc., 32 USPQ2d 1377 (TTAB 1994).
When this test is applied to the facts in the case at
hand, we find that the mark applicant seeks to register is
clearly merely descriptive of the goods set forth in the
application. We agree with the Examining Attorney that the
proposed mark conveys the fact that a characteristic of
applicant’s publications is that they feature information
about Internet computing.
In its appeal briefs, applicant contended that the
Examining Attorney did not allow applicant the opportunity
to disclaim any descriptive elements in its mark.
Applicant then offered to disclaim the term "INTERNET"
apart from the mark as shown, and argued that the composite
mark "INTERNET COMPUTING" in its entirety is not merely
descriptive of the goods set forth in the application.
Applicant also argued that the Examining Attorney did not
properly consider the "vague meaning" of the mark among
readers of computer and technology-related publications,
and further, that she failed to support the refusal with
adequate evidence.
Applicant claimed that it is not possible to
understand the meaning of "Internet computing" from the
examples cited by the Examining Attorney, and pointed out
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that the term might be used to refer to several different
things, such as the use of software downloaded from the
Internet to do operations for a math computation, the use
of a computer for traditional computing, or to the ability
to perform multi-tasking between computing downloaded
software programs and searching Web browsers on a global
computer network. Applicant concluded that the Examining
Attorney had not established that there was a generally
understood meaning for the term sought to be registered
among potential purchasers of its magazines.
Applicant asserted that the Examining Attorney was
legally incorrect when she claimed that a term is
unregistrable as merely descriptive if it describes only a
single attribute of the goods with which it is used.
Applicant conceded that it intends to feature information
about the use of a global computer network in its
publications, but argued that because its intention is to
provide its customers with other information as well, the
proposed mark is not unregistrable under Section 2(e)(1) of
the Act.
Further, applicant argued that because its companion
application to register the same mark in another class,
Class 9, for computer products, was passed to publication,
Ser No. 75/049,228
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the instant application should be accorded similar
treatment by the Examining Attorney.
Applicant’s final argument is that the Examining
Attorney’s decision to pass the mark to publication in
Class 9 strongly suggests that doubt must have existed, or
at least should exist, as to the descriptiveness of this
mark for goods in Class 16. Accordingly, argues applicant,
any doubt as to the registrability of the mark must be
resolved in favor of the applicant, so the mark should be
passed to publication.
None of these arguments is persuasive. Each of
applicant’s arguments will be addressed in turn.
To begin with, with regard to applicant’s contention
that the Examining Attorney did not give applicant the
chance to enter a disclaimer of the word "INTERNET," we
note that she was under no obligation to suggest such
action by applicant, nor did she refuse to entertain an
amendment wherein applicant asked to enter a disclaimer.
Such a disclaimer would not solve applicant’s problem in
this case, however. That applicant is willing to concede
that one of the two words in its proposed trademark is
unregistrable because it is merely descriptive does not
alter the fact that the other one is just as descriptive of
the goods, or the fact that, as applied to the goods, the
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combination of the two words is likewise merely
descriptive.
As to the second argument made by applicant, we find
that the examples of use of the term sought to be
registered cited by the Examining Attorney do show the
proposed mark used descriptively. Contrary to applicant’s
argument, one does not have to be able to construct a
precise definition of the term based on these examples of
its use in order for the term to be found unregistrable
under the Act.
That a term may have several meanings does not
establish its registrability when at least one of those
meanings is descriptive in connection with the goods
specified in the application. Contrary to the argument
made by applicant, it is sufficient to support a
descriptiveness refusal if a term describes a single
significant attribute or characteristic of the goods in
question. In re Bright-Crest, Ltd., supra.
Applicant’s argument with regard to its companion
application to register the same mark for goods in another
class is not well taken either. There is no authority for
contending that the Examining Attorney, in determining
registrability, must disregard the goods and services set
forth in the application. The determination of whether the
Ser No. 75/049,228
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proposed mark is descriptive depends in large part on the
connotation of the mark as applied to the goods with which
applicant intends to use it. To contend that because a
mark is registrable with respect to some goods, it should
be registered for any and all goods is simply illogical.
As to applicant’s final argument, we agree with the
proposition that if doubts exist concerning the
registrability of a mark, such doubts should be resolved in
favor of the applicant. In the case at hand, however, no
doubt exists.
In summary, because the record in this application
clearly establishes the descriptiveness of the term sought
to be registered in connection with the goods specified in
the application, the refusal to register under Section
2(e)(1) of the Act is appropriate, and is accordingly
affirmed.
R. F. Cissel
G. D. Hohein
P. T. Hairston
Administrative Trademark Judges,
Trademark Trial and Appeal Board
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