AT&T Corp.v.MCI Communications Corp.

Trademark Trial and Appeal Board

Jul 11, 1997

CANC (T.T.A.B. Jul. 11, 1997)

THIS DISPOSITION IS NOT CITABLE
AS PRECEDENT OF THE TTAB
Hearing: Paper No. 25
October 29, 1996

U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

AT&T Corp.
v.
MCI Communications Corporation
_____

Cancellation No. 22,849
_____

John Murphy of Pattishall, McAuliffe, Newberry, Hilliard &
Geraldson for AT&T Corp.

Elliott I. Pollock of Pollock, Vande Sande & Priddy for MCI
Communications Corporation.
_____

Before Rice, Cissel and Hairston, Administrative Trademark
Judges.

Opinion by Cissel, Administrative Trademark Judge:

On May 9, 1989, Registration No. 1,538,476 issued to
MCI Communications Corporation on the Principal Register.
The registered mark is "GLOBAL ADVANTAGE" and the services
are set forth as "telecommunications services." First use
is claimed in July of 1987.
On May 9, 1994, the fifth anniversary of the
registration, a petition to cancel it was filed by AT&T
Cancellation No. 22,849
2
Corp. As grounds for cancellation, petitioner alleged that
it is a direct competitor of respondent; that "petitioner
and others offer specialized plans for telecommunications
services with the objective of providing consumers with a
competitive, telecommunications global advantage in
effectively conducting their business on an international
scale"; that the registered mark is therefore merely
descriptive of telecommunications services; and that
respondent has abandoned use of the registered mark. In its
answer to the petition to cancel, respondent admitted that
petitioner is a competitor, but denied the claims of
descriptiveness and abandonment.
A trial was conducted in accordance with the Trademark
Rules of Practice. Both parties filed briefs and
participated in the oral hearing before the Board on October
29, 1996.
The record before us includes the file of the
registration sought to be canceled; documents produced by
respondent persuant to petitioner's discovery requests,
subsequently authenticated by a request for admission, and
then introduced by notice of reliance per the admission;
copies of published articles and advertisements, made of
record by notice of reliance; and petitioner's responses to
respondent's interrogatories, also made of record by notice
of reliance.
The pleaded issue of abandonment was neither argued nor
proven, so the sole issue for our resolution is whether the
Cancellation No. 22,849
3
registration should be canceled because the mark is merely
descriptive. Based on this record, we conclude that
petitioner has not established that it is entitled to the
requested relief.
A mark is unregistrable under Section 2(e)(1) of the
Act if it immediately describes a characteristic or feature
of the services with which it is used, or if it conveys
information regarding the nature, function, purpose or use
of the services. In re Tekdyne, Inc., 33 USPQ2d 1949 (TTAB
1995). Petitioner contends that the mark "GLOBAL ADVANTAGE"
is merely descriptive of telecommunication services because
it immediately communicates to potential purchasers of such
services that the services relate to global or worldwide
telecommunications, and that the services confer a
competitive advantage or benefit on the purchaser.
The evidence submitted by petitioner in support of its
claim consists primarily of dictionary definitions and
copies of excerpts from twenty-seven published articles.
These copies are apparently the results of a computerized
search of a data base of periodical publications.
The dictionary definitions of "global" show that it
means "of, or relating to, or involving the entire world,"
and "comprehensive, all-inclusive..." The word "advantage"
is defined as "the quality or state of being superior," "a
more favorable or improved position or condition," and "a
factor or circumstance that gives superiority to its
possessor or that puts him or it in a favorable or improved
Cancellation No. 22,849
4
position..." No listing is provided for the composite term
which is the subject of this action for cancellation,
"GLOBAL ADVANTAGE."
The excerpts from the articles published in periodicals
show the composite term "global advantage" used in reference
to a variety of activities, some of which involve different
businesses. Typical examples are as follows: "...if there
is a vendor operating in the U.S. as well as Europe, we
should be able to get a global advantage commercially...";
"...firms can gain a global advantage by embracing workplace
diversity..."; "In today's highly competitive international
marketplace, other countries have created their own public-
private R&D ventures in an effort to gain significant global
advantages in developing and marketing..."; "America's
global advantage in technology and marketing between 1959
and 1973..."; and "...initial expansion in domestic cases
may lay the groundwork for continued expansion should global
advantages become more common in the industry."
Of the twenty-seven articles quoted by petitioner, only
three even arguably relate to telecommunications. The
others run through a wide range of goods and services,
including automobiles, clothing, books, banking, foreign
trade, the internet, the Soviet Union, board games and
pension fund investment. In some of the articles, the
activity which is being discussed in not exactly clear.
Notwithstanding that the registered term is used in
these published articles in both its singular and plural
Cancellation No. 22,849
5
forms, many of these excerpts evidence use of "global
advantage" to mean a benefit or competitive advantage
throughout the world.
Increasing worldwide competitiveness is, of course, a
desirable outcome for any business which operates
internationally, including one providing telecommunications
services. In a broad sense, this would be a desirable
characteristic for services to possess.
The basic problem for petitioner, however, is that
generally speaking, in order to be held merely descriptive,
a mark must immediately convey information as to the
qualities or characteristics of the service with which it is
used "with a degree of particularity." Plus Products v.
Medical Modalities Associates, Inc., 211 USPQ 1199, 1204-
1205 (TTAB 1981); Holiday Inns, Inc. v. Monolith
Enterprises, 212 USPQ 949, 952 (TTAB 1981); In re TMS Corp.
of the Americas, 200 USPQ 57,59 (TTAB 1978); and In re Diet
Tabs, Inc., 231 USPQ 587,588 (TTAB 1986).
Respondent's position is that the materials submitted
by petitioner establish that "GLOBAL ADVANTAGE" is, in a
broad sense, suggestive of many things, but that the
evidence does not prove that the term provides, with any
particularity or specificity, information concerning the
nature, features or characteristics of telecommunication
services.
We agree. The record shows that a wide variety of
businesses want to have a "global advantage," but it is not
Cancellation No. 22,849
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at all clear just what that means, either in the
telecommunications field or in any of the multiple
activities to which the other excerpted articles relate.
While the evidence introduced by petitioner indicates that
the term is used in a broad sense to suggest that
businesses, and nations, for that matter, seek to gain
worldwide superiority over their competitors, the evidence
does not show that, as used in connection with
telecommunication services, it immediately and forthwith
conveys any specific or particular information concerning
the nature, features or characteristics of respondent's
services. At most, it is suggestive of the desired result
of the use of respondent's services. However, this does not
make it merely descriptive of those services within the
meaning of Section 2(e)(1) of the Act. See: In re The
Realistic Company, 169 USPQ 610 (CCPA 1971); In re Frank J.
Curran Co., 189 USPQ 560 9TTAB 1975); and In re Universal
Water Systems, Inc., 209 USPQ 165 (TTAB 1980).
For the resons set forth above, we cannot conclude that
Cancellation No. 22,849
7
the mark is merely descriptive of respondent's services
within the meaning of Section 2(e)(1) of the Act.
Accordingly, the petition to cancel is denied.

J. E. Rice

R. F. Cissel

P. T. Hairston
Administrative Trademark Judges
Trademark Trial & Appeal Board