America Online, Inc.

Trademark Trial and Appeal Board

Sep 10, 1998

No. 74724879 (T.T.A.B. Sep. 10, 1998)

Paper No. 9
GDH/md
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF THE TTAB SEPT 10, 98
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re America Online, Inc.
________
Serial No. 74/724,879
_______
Michael A. Grow of Arent, Fox, Kintner, Plotkin & Kahn for
America Online, Inc.
David Stine, Trademark Examining Attorney, Law Office 103
(Michael Szoke, Managing Attorney).
_______
Before Seeherman, Hohein and Walters, Administrative Trademark
Judges.
Opinion by Hohein, Administrative Trademark Judge:
America Online, Inc. has filed an application to
register the designation "AOL" as a trademark for "publications,
namely[,] books and pamphlets dealing with the subject of
computer services and computer networks."1
Registration has been finally refused under Sections 1,
2 and 45 of the Trademark Act, 15 U.S.C. §§1051, 1052 and 1127,
on the basis that, as used by applicant (hereinafter sometimes

1 Ser. No. 74/724,879, filed on September 5, 1995, which alleges dates
of first use of October 1989.
Ser. No. 74/724,879
2
referred to as "AOL") in the specimens of record, the designation
does not function as a trademark to identify and distinguish
books and pamphlets dealing with the subject of computer services
and computer networks, and that therefore substitute, properly
verified specimens showing use of "AOL" as a trademark for such
goods is required. On the same statutory basis, registration has
also been finally refused on the ground that the designation
"AOL" is "[part of] the title of a single creative work" and,
"[a]s such, the proposed mark defines a distinct genus of goods
and does not indicate the source of the goods."
Applicant has appealed. Briefs have been filed, but an
oral hearing was not requested. We affirm the refusals to
register.
Applicant, notably without any evidentiary support,
argues that:
AOL is a company offering a wide array
of related goods and services, including the
well known AOL computer network service. The
AOL service provides not only access to the
Internet and related products, but a host of
proprietary information and documents that
are only available to AOL subscribers. In
addition, there have been various printed
works sold that contain the mark AOL, such as
the specimen submitted with the application.
However, most of the publications made
available to AOL subscribers would be
requested and delivered electronically in
connection with the AOL service. Because of
the electronic nature of the service and the
enormous and constantly changing content
available to subscribers, it is virtually
impossible to go back before the filing date
of the present application and show through
printed documentation how AOL was using its

Ser. No. 74/724,879
3
mark AOL in connection with such electronic
publications.
Today there are various books sold under
the AOL mark. In addition to the AOL tour
guide for [W]indows that was submitted as the
specimen, there is an AOL tour guide for MAC
users, an AOL tour guide for DOS, and an AOL
tour guide for Windows 95. There also is an
AOL Keywords publication, an AOL games guide
and various other printed on paper
publications.
In the minds of consumers, the famous
mark AOL is identified as an indicator of the
source of the paper publications as well as
the electronic publications when that mark
appears on such goods.
Applicant, in view thereof, further contends that in
the phrase "The Official AOL for Windows Tour Guide," which is
shown on the specimens next to what appears to be the page
designation "viii" followed by what seems to be a portion of a
table of contents, it is the designation "AOL" which "would be
viewed by consumers to fulfill the source identifying function of
a mark." Specifically, applicant maintains that:
The other words surrounding the mark AOL such
as "the official" and "for Windows tour
guide" ... [do] not create a situation in
which the famous mark AOL ... [does] not
function as a mark on its own for the
publication. Indeed, the other words merely
describe the nature of the goods, namely,
that it is an official publication and that
it is a tour guide for those using Windows
software.
Applicant accordingly insists that the designation "AOL" forms "a
separate and distinct commercial impression" apart from the other
wording with which it is used and that, therefore, it functions
as a trademark for applicant’s publications and substitute
specimens are not necessary. Moreover, as to the refusal that
Ser. No. 74/724,879
4
the designation "AOL" is part of the title of a single creative
work," applicant urges--again without any evidentiary support--
that "[t]he mark is used on a variety of goods and services and
is not a single title."
The Examining Attorney, on the other hand, asserts that
(italics and underlining in original):
[Pursuant to Trademark Rule] 2.51, the
mark in the drawing must be a substantially
exact representation of the mark as actually
used. .... This requirement has been
interpreted to require that, if [an]
applicant seeks to register only a single
element of a composite mark used on the
specimens, this single element must present
an independent commercial impression,
separate and distinct from the overall
commercial impression created by the
composite designation actually used on the
specimens. See: In re Chemical Dynamics
Inc., 5 USPQ2d 1828 (Fed. Cir. 1988); In re
Raychem Corp., 12 USPQ2d 1399 (TTAB 1989).
In the instant case, the mark presented
for registration is the letter combination
"AOL." The mark actually used, as indicated
by the specimens[,] is "THE OFFICIAL AOL FOR
WINDOWS TOUR GUIDE." Applicant has asserted,
based on its overall context of use of the
term "AOL" as a corporate trademark/-
servicemark/housemark, that this designation
does create a separate commercial impression,
distinct from the overall designation "THE
OFFICIAL AOL FOR WINDOWS TOUR GUIDE." This
argument is considered specious. The actual
evidence presented by the applicant as to
overall usage of "AOL" relates entirely to
computer software and network services. No
evidence as to the use of "AOL" with respect
to other publications was submitted.
It is the undersigned’s position that,
contrary to applicant’s position, the most
likely perception of the overall designation
"THE OFFICIAL AOL FOR WINDOWS TOUR GUIDE," as
applied to a publication, is that the
publication is "THE OFFICIAL TOUR GUIDE"
pertaining to applicant’s "AOL FOR WINDOWS"
computer network service. To the extent that
Ser. No. 74/724,879
5
"AOL" creates any separate commercial
impression, this impression, and the
accompanying source identification, is deemed
likely, based on the purchasing public’s
strong familiarity with "AOL" as a source of
computer network services, to pertain solely
to applicant’s "AOL FOR WINDOWS" computer
network service. With respect to the printed
publication, however, prospective purchasers
are deemed likely to assume that "TOURGUIDE"
[sic] merely addresses "AOL FOR WINDOWS" as
content or subject matter. They are not
considered likely to further assume that the
publication itself necessarily emanates from
the applicant. In fact, given the wide
availability of computer-related self-help
publications, from a wide variety of sources,
a conclusion that consumers will identify
applicant as the source of the publications
at issue is dubious, at best.
Since the only acceptable specimens of
actual use submitted by applicant show only
the unitary title "THE OFFICIAL AOL FOR
WINDOWS TOUR GUIDE," and since the proposed
mark "AOL" represents an integral portion of
that title which does not create a separate
and distinct overall commercial impression,
the specimens are unacceptable as failing to
indicate actual trademark use of the
designation "AOL" on the goods identified in
the application.
As to the other ground for refusal, the Examining
Attorney argues that, "even if the designation ’AOL’ is
recognized as having a separate commercial impression, the
proposed mark defines a distinct genus of goods and does not
indicate the source of the goods" since it is part of the title
of a single creative work. Citing In re Cooper, 254 F.2d 611,
117 USPQ 396 (CCPA 1958), cert. denied, 358 U.S. 840, 119 USPQ
501 (1958) and In re Scholastic Inc., 223 USPQ 431 (TTAB 1984),
the Examining Attorney notes that "[a]lthough applicant did
provide some evidence of use of the designation ’AOL’ in
connection with electronic publications, none of the evidence
Ser. No. 74/724,879
6
pertained to printed matter." In particular, the Examining
Attorney observes that there is no evidence supporting
applicant’s contention that there are currently various printed
books being sold under the mark "AOL".
As to the first basis for refusal, we agree with the
Examining Attorney that, as used in the specimens, the
designation "AOL" fails to project a separate and distinct
commercial impression in relation to the other words with which
it appears in the phrase "The Official AOL for Windows Tour
Guide". Even assuming, as the Examining Attorney concedes, that
the purchasing public for applicant’s books and pamphlets dealing
with the subject of computer services and computer networks has a
"strong familiarity with ’AOL’ as a source of computer network
services," such familiarity does not necessarily extend to the
use of "AOL" in connection with printed publications generally or
even to printed books and pamphlets dealing with the subject of
computer services and computer networks.
More significantly, however, we find that the words
which appear with the designation "AOL" in the phrase "The
Official AOL for Windows Tour Guide" to be suggestive rather than
descriptive of applicant’s goods and thus the purchasing public
would not discount them and rely on the designation "AOL" alone
as a source indicator. Furthermore, it is not even clear
whether, as used on the specimens, the designation "AOL" or the
phrase in which it appears would make any kind of commercial
impression upon consumers or prospective buyers in that they
would be exposed thereto when purchasing applicant’s goods. The
Ser. No. 74/724,879
7
specimens plainly are not the cover or title page of a book or
pamphlet. Instead, the specimens appear to be the eighth page of
a table of contents which bears the heading or title of "The
Official AOL for Windows Tour Guide." Given the unitary nature
of such caption, it is apparent that the designation "AOL" does
not project a separate and distinct commercial impression from
the overall phrase in which it is actually used and thus does not
function as a trademark for applicant’s goods. The refusal to
register is therefore well taken and the requirement for
substitute, properly verified specimens showing use of "AOL" as a
trademark for applicant’s books and pamphlets is proper.
Turning to the other basis for refusal, we concur with
the Examining Attorney that, at best, the designation "AOL," as
used in phrase "The Official AOL for Windows Tour Guide," would
be regarded by the purchasing public as part of the title of a
single work rather than as a source designator of a series of
books and pamphlets. Compare In re Cooper, supra, and In re
Scholastic Inc., supra, with In re Scholastic Inc., 23 USPQ2d
1774 (TTAB 1992). Applicant’s mere argument that it presently is
selling "various books ... under the AOL mark," such as "an AOL
tour guide for MAC users, an AOL tour guide for DOS, and an AOL
tour guide for Windows 95," as well as "an AOL Keywords
publication, an AOL games guide and various other printed on
paper publications," simply is not evidence that the designation
"AOL" is actually used in such a manner that it functions as an
indication of source for a series of books and pamphlets on the
subject of computer services and computer networks. Absent such
Ser. No. 74/724,879
8
proof, the designation "AOL" is merely part of the title of a
single publication and, accordingly, the refusal to register is
well taken.
Decision: The refusals to register are affirmed.
E. J. Seeherman
G. D. Hohein
C. E. Walters
Administrative Trademark Judges,
Trademark Trial and Appeal Board