Ziff Davis Publishing Co.

Trademark Trial and Appeal Board

Jul 29, 1999

No. 75193204 (T.T.A.B. Jul. 29, 1999)

Paper No. 12
JQ
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF THE TTAB JULY 29, 99
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Ziff Davis Publishing Company
________
Serial No. 75/193,204
_______
James E. Rosini and Karen L. Feisthamel of Kenyon & Kenyon
for applicant.
Gary R. Thayer, Trademark Examining Attorney, Law Office
103 (Michael A. Szoke, Managing Attorney).
_______
Before Cissel, Quinn and Hairston, Administrative Trademark
Judges.
Opinion by Quinn, Administrative Trademark Judge:
An application has been filed by Ziff Davis Publishing
Company1 to register the mark GAME BUYER for “dissemination
of advertising for others via an online electronic
communications network” (in International Class 35) and
“providing multiple user access to a global computer

1 Applicant states that its name was changed in May 1998. To
date, the change of name documents have not been recorded in the
Office.
Ser No. 75/193,204
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information network for the transfer and dissemination of a
wide range of information and information in the field of
computer related products and technology; providing a wide
range of information and information in the field of
computer related products and technology via computer
information networks” (in International Class 42).2
The Trademark Examining Attorney has refused
registration under Section 2(e)(1) of the Trademark Act on
the ground that applicant’s mark, if used in connection
with applicant’s services, would be merely descriptive of
them.
When the refusal was made final, applicant appealed.3
Applicant and the Examining Attorney filed briefs. An oral
hearing was not requested.

2 Application Serial No. 75/193,204, filed October 8, 1996, based
on a bona fide intention to use the mark in commerce.
3 In the final refusal dated October 30, 1997, the Examining
Attorney raised, for the first time, an alternative refusal based
on deceptive misdescriptiveness. Applicant, in a request for
reconsideration, correctly noted that making this alternative
refusal final was premature. TMEP §1105.04(e). The Examining
Attorney, in denying the request for reconsideration, failed to
address applicant’s correct view that the final refusal was
premature. Applicant, in its appeal brief, reiterated its view
that the final refusal was premature, but went on to argue the
merits of the deceptively misdesriptive refusal. The Examining
Attorney, in his appeal brief, relegated to a footnote his
discussion of the merits of a deceptively misdescriptive refusal,
with no mention made in response to applicant’s view that the
final refusal was premature.
Ser No. 75/193,204
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Applicant contends that the proposed mark is just
suggestive and does not immediately convey any information
about the services. More specifically, applicant claims
that “GAME BUYER is suggestive of an agent that provides
information pertaining to computer products to an
interested customer.” Applicant has relied upon dictionary
definitions of the words “game” and “buyer,” and a list of
third-party registrations which, according to applicant,
show the Office’s “policy of treating marks incorporating
the word BUYER as being registrable on the Principal
Register without a showing of acquired distinctiveness.”4
The Examining Attorney maintains that the mark merely
describes the target audience of applicant’s services,
namely game buyers, and/or describes the information
content of the services, that is, information about,
directed to or of interest to computer game buyers. In
particular, the Examining Attorney points to applicant’s
statement that “[w]hile arguably the audience may include
individuals that will ultimately purchase computer related

Inasmuch as the alternative final refusal based on deceptive
misdescriptiveness under Section 2(e)(1) was premature, no
consideration will be given to this refusal.
4 Mere listings of third-party registrations generally are not
sufficient to make the registrations of record; copies of the
registrations themselves are required for that purpose. The
Examining Attorney, however, has not objected to this evidence,
and so we have considered it in making our decision.
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products or services, this is not the sole focus of the
services.” In support of the refusal, the Examining
Attorney has furnished excerpts retrieved from the NEXIS
database, and has relied on dictionary definitions of the
two words in applicant’s mark.5
It is well settled that a term is considered to be
merely descriptive of goods and/or services, within the
meaning of Section 2(e)(1) of the Trademark Act, if it
immediately describes an ingredient, quality,
characteristic or feature thereof or if it directly conveys
information regarding the nature, function, purpose or use
of the goods and/or services. In re Abcor Development
Corp., 588 F.2d 811, 200 USPQ 215, 217-18 (CCPA 1978). It
is not necessary that a term describe all of the properties
or functions of the goods and/or services in order for it
to be considered to be merely descriptive thereof; rather,
it is sufficient if the term describes a significant
attribute or feature about them. Moreover, whether a term
is merely descriptive is determined not in the abstract,
but in relation to the goods and/or services for which
registration is sought. In re Bright-Crest, Ltd., 204 USPQ

5 The dictionary definitions, which accompanied the brief, are
proper subject matter for judicial notice.
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591, 593 (TTAB 1979). Thus, “[w]hether consumers could
guess what the product [or service] is from consideration
of the mark alone is not the test.” In re American
Greetings Corp., 226 USPQ 365, 366 (TTAB 1985).
The term “game” means “the material or equipment used
in playing certain games” and the term “buyer” means
“purchaser; a person who buys.”
The Nexis evidence shows the following uses:
Venture Communications List Marketing
Inc. has the 35,929-name list of
computer game buyers from Starplay
Productions.
DM News, June 2, 1997
...topped computer-game buyers’
shopping lists last year.
The Seattle Times, November 24, 1996
...and Computer Gaming World, which
caters to the volume game buyer with
in-depth reviews that give gamers a
real feel for the latest games.
M2 Presswire, February 14, 1996
For the predominantly school-going
crowd of computer game buyers, saving
50 percent is simply too good to pass
up.
WorldPaper, April 1995
The average computer game buyer...
The Plain Dealer, April 23, 1995
Some 4,500 game buyers were polled for
the survey.
The Boston Globe, February 17, 1995
Ser No. 75/193,204
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In the present case, it is our view that, if applied
to applicant’s services, the term GAME BUYER would
immediately describe, without conjecture or speculation, a
significant characteristic or feature of the services,
namely, that they involve advertisements and on-line
information targeting buyers of computer games, i.e., game
buyers. Prospective purchasers, upon confronting the term
GAME BUYER for applicant’s services, would immediately
perceive that the services impart information about or for
game buyers. See: In re Shiva Corp., 48 USPQ2d 1957 (TTAB
1998) [term TARIFF MANAGEMENT held merely descriptive of
key feature of function of “computer programs to control,
reduce and render more efficient wide area network (WAN)
usage” by finding lowest tariff or cost for telephone
calls]. See also: Reese Publishing Co. v. Hampton
International Communications, Inc., 620 F.2d 7, 205 USPQ
585 (2d Cir. 1980) [term VIDEO BUYER’S GUIDE found to be
generic when applied to magazines aimed at the home market
for television products].
The list of third-party registrations is of little
help in determining the registrability of the mark at issue
in this case. As often noted by the Board, each case must
be decided on its own set of facts, and we are not privy to
the facts involved with these registrations. While uniform
Ser No. 75/193,204
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treatment under the Trademark Act is highly desirable, our
task here is to determine, based upon the record before us,
whether applicant’s mark is registrable.
Lastly, applicant essentially contends that the nature
of the mark mandates reversal of the refusal. More
specifically, applicant asserts that “the provision of
information on-line should be treated similarly to marks
which are the titles of printed publications.” This
argument is not persuasive, except to the extent that on-
line information services, like periodicals, depend
principally on their marks or titles to convey their
character. Thus, it strains credulity to believe that a
significant feature of applicant’s services would not
involve dissemination of information of particular interest
to game buyers. Further, we would point out that “the
courts and this Board have recognized that titles of
publications are not considered any differently from
trademarks for other products; in these cases ‘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.’” In re Waverly Inc., 27 USPQ2d 1620, 1622 (TTAB
1993), citing In re Gracious Lady Service, Inc., 175 USPQ
380, 381 (TTAB 1972).
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We find that applicant’s mark is merely descriptive as
contemplated by Section 2(e)(1) of the Act.
Decision: The refusal to register is affirmed.
R. F. Cissel
T. J. Quinn
P. T. Hairston
Administrative Trademark
Judges, Trademark Trial
and Appeal Board
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