Creativity, Inc.

Trademark Trial and Appeal Board

Aug 5, 1997

EX (T.T.A.B. Aug. 5, 1997)

THIS DISPOSITION IS NOT CITABLE AS
PRECEDENT OF THE TTAB AUG 5, 97
Paper No. 11
EJS
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Creativity, Inc.
________
Serial No. 74/596,434
_______
David M. Carter of Carter & Schnedler for Creativity, Inc.
Gerald C. Seegars, Trademark Examining Attorney, Law Office
106 (Mary I. Sparrow, Managing Attorney)
_______
Before Simms, Seeherman and Quinn, Administrative Trademark
Judges.
Opinion by Seeherman, Administrative Trademark Judge:
Creativity, Inc. has appealed from the refusal of the
Trademark Examining Attorney to register IN PLAIN ENGLISH as
a trademark for "books concerning computers and
technology."1 Registration has been refused pursuant to
Sections 2(d) and 2(e)(1) of the Trademark Act, 15 U.S.C.
1052(d) and 1052(e)(1).
The case has been fully briefed; an oral hearing was
not requested.
Ser No. 74/596,434
2
Turning first to the refusal pursuant to Section 2(d),
it is the Examining Attorney's position that applicant's
mark, as used on its identified goods, so resembles the mark
PLAIN ENGLISH, registered on the Supplemental Register for
"computer programs,"2 as to be likely to cause confusion or
mistake or to deceive.
Our determination of this issue is based on an analysis
of all of the relevant factors, as set forth in In re E. I.
du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA
1973). Considering the marks first, we find that they are
virtually identical. Although applicant's mark has the
initial word IN, the addition of this word does nothing to
change the commercial impression of the mark. Both look and
sound very much alike, and both have the same connotation of
"simple, clearly understood language." For this reason,
this case differs from those cited by applicant in which no
likelihood of confusion was found between marks with
different first words, but the same second words.
With respect to the goods, we recognize that
applicant's goods are books concerning computers and
technology, and the cited registration is for computer
programs. However, it is not necessary that the goods of
the parties be similar or competitive, or even that they

1 Application Serial No. 74/596,434, filed November 8, 1994,
and asserting first use and first use in commerce on May 23,
1993.
Ser No. 74/596,434
3
move in the same channels of trade to support a holding of
likelihood of confusion. It is sufficient that the
respective goods of the parties are related in some manner,
and/or that the conditions and activities surrounding the
marketing of the goods are such that they would or could be
encountered by the same persons under circumstances that
could, because of the similarity of the marks, give rise to
the mistaken belief that they originate from the same
producer. In re International Telephone & Telegraph Corp.,
197 USPQ 910, 911 (TTAB 1978).
In this case, the goods in the cited registration are
identified broadly as "computer programs," without any
limitation as to their subject matter. It is not clear what
the subject matter of the coputer programs is, but in view
of the nature of the mark the computer programs could well
include the subject of computers and technology. Computer
programs about computers and technology, and books about
computers and technology are likely to appeal to the same
class of consumers, and to be purchased by the same people.
Further, such goods are likely to be sold in the same
channels of trade, for example, a store specializing in
computer-oriented products is likely to sell both computer
programs about computers and books about computers.
Consumers, encountering these goods at the same store and

2 Registration No. 1,373,141, issued November 26, 1985; Section
Ser No. 74/596,434
4
sold under the virtually identical marks at issue here,
would be likely to believe that the goods emanate from the
same source.
Further, and contrary to applicant's assertion, the
purchasers of applicant's and the registrant's goods are not
likely to be highly sophisticated. Because of the
widespread use of computers in virtually all facets of
American life, computer-oriented materials are no longer
purchased and used only by computer experts. Moreover, the
nature of the marks involved herein, PLAIN ENGLISH and IN
PLAIN ENGLISH, indicate that the books and computer programs
would not be directed to computer professionals, but would
be helpful to those less sophisticated about computers.
This is borne out by applicant's specimens, which state that
DOS is "the foundation for every single program that runs on
your computer. So why should it be a mystery to you?" We
would also point out that even sophisticated consumers would
be unlikely to note the minor difference between applicant's
mark, IN PLAIN ENGLISH, and the registered mark, PLAIN
ENGLISH, or, even if they did note this difference, they
would be unlikely to assume that this slight difference
indicated that the products sold under the marks emanated
from different sources.
Applicant has pointed to the fact that the cited mark
is registered on the Supplemental Register, and that it

8 affidavit accepted.
Ser No. 74/596,434
5
coexists on that register with the mark (IN PLAIN ENGLISH)
for educational legal books,3 presumably to show that PLAIN
ENGLISH is a weak mark which is not entitled to a broad
scope of protection. In this instance, the fact that the
cited registration is registered on the Supplemental
Register may be considered to establish prima facie that, at
least at the time of registration, the registered mark
possessed a merely descriptive significance. In re Texas
Instruments Incorporated, 193 USPQ 678 (TTAB 1976).
However, even a weak mark is entitled to protection, and in
the present case, the marks are so similar and the goods are
so related that we find confusion would be likely to occur
if they were used contemporaneously.
Accordingly, the refusal of registration pursuant to
Section 2(d) is affirmed.
This brings us to the refusal of registration pursuant
to Section 2(e)(1), on the ground that applicant's mark is
merely descriptive of books concerning computers and
technology. The test for determining whether a mark is
merely descriptive is whether the involved term immediately
conveys information concerning a quality, characteristic,
function, ingredient, attribute or feature of a product or
service. In re Venture Lending Associates, 226 USPQ 285,
286 (TTAB 1985). Moreover, the question of whether a

3 Registration No. 1,402,649, issued July 22, 1986; Section 8
Ser No. 74/596,434
6
particular term is merely descriptive must be determined not
in the abstract, but in relation to the goods or services
for which registration is sought, the context in which the
mark is used, and the significance that the mark is likely
to have, because of the manner in which it is used, to the
average purchaser as he encounters goods bearing the mark in
the marketplace. In re Engineering Systems Corp., 2 USPQ2d
1075 (TTAB 1986).
We find that applicant's mark, IN PLAIN ENGLISH,
immediately and directly conveys to purchasers and potential
purchasers information about a significant characteristic of
applicant's goods, namely, that they are written in easy-to-
understand language. The NEXIS articles submitted by the
Examining Attorney show that the phrase "in plain English"
is readily understood to have such a meaning.4 Applicant,
too, shows its recognition that this is the meaning that
would be ascribed to the phrase by using, in its specimens,
sentences such as "It takes very special writers to turn
computer gobblygook (sic) into plain English." Moreover,
applicant touts the fact that its books are written in
understandable language. The cover page of its specimen
contains the highlighted phrase "Computer Books in Language

affidavit accepted.
4 See, for example, "...the 41-page guide provides no-nonsense
information in plain English," ("The Times," April 1, 1995);
"This short volume is one of those rarities--a book for
prospective buyers and new users that delivers useful, basic
Ser No. 74/596,434
7
You Can Understand and Use," while the second page of the
specimen includes the following statements:
This book, with a minimal amount of
"computerese" helps you tame DOS. Here,
in plain English, we make learning DOS a
pleasure!
Computers are a lot easier than you
think, IF they are explained in language
you can understand and use. The IN
PLAIN ENGLISH series does just that,
presenting you with books written by the
best COMMUNICATORS in the computer
field, writers who know their subject
and relate it to you in everyday,
comprehensible, PLAIN English.
Applicant argues that a substantial degree of
imagination, thought and perception is required for a
consumer to determine what the goods are once he or she sees
the mark, and points out that the mark does not contain the
words books, computers or technology. However, the test for
determining if a mark is merely descriptive is not whether
one can guess the goods from viewing the mark. As stated
above, whether a phrase is merely descriptive must be
determined not in the abstract but in relation to the goods
for which registration is sought. When the mark IN PLAIN
ENGLISH is viewed in connection with books concerning
computers and technology, it conveys that the books are
written in clear and understandable language.
Accordingly, the refusal of registration is affirmed on
this ground, too.

information in plain English...." ("The Commercial Appeal,"
Ser No. 74/596,434
8

March 26, 1995).
Ser No. 74/596,434
9
Decision: The refusals made pursuant to Sections 2(d)
and 2(e)(1) are affirmed.
R. L. Simms
E. J. Seeherman
T. J. Quinn
Administrative Trademark Judges
Trademark Trial and Appeal Board