Donald S. Dowden

Trademark Trial and Appeal Board

Sep 29, 2004

No. 75716024 (T.T.A.B. Sep. 29, 2004)

Mailed: Sept. 29, 2004
UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Donald S. Dowden
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Serial No. 75716024
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Donald S. Dowden of Cooper & Dunham LLP for Donald S.
Dowden.
Stephanie M. Davis, Trademark Examining Attorney, Law
Office 103 (Michael Hamilton, Managing Attorney).
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Before Seeherman, Holtzman and Drost, Administrative
Trademark Judges.
Opinion by Seeherman, Administrative Trademark Judge:
Donald S. Dowden, a U.S. citizen, has appealed from
the final refusal of the Trademark Examining Attorney to
register FEDERAL LAW PUBLISHING as a mark for services
ultimately identified as "publication of newsletters
featuring information on intellectual property law."1
1 Application Serial No. 75716024, filed May 27, 1999, and
asserting a bona fide intention to use the mark in commerce. The
services were originally identified as "services related to
promoting the distribution of newsletters discussing intellectual
property law," then amended to "services related to promoting,
through advertising, direct mail, the Internet and the leasing of
THIS DISPOSITION IS NOT CITABLE
AS PRECEDENT OF THE TTAB
Ser No. 75716024
2
Registration has been refused pursuant to Section 2(e)(1)
of the Trademark Act, 15 U.S.C. §1052(e)(1), on the ground
that applicant's mark is merely descriptive of his
identified services.2
Applicant and the Examining Attorney filed briefs.3
Applicant did not submit a reply brief, nor did it request
an oral hearing. With his brief, applicant submitted a
copy of a third-party registration for LAW AND ORDER.
Trademark Rule 2.142(d) provides that the record in the
application should be complete prior to the filing of an
appeal, and that the Trademark Trial and Appeal Board will
ordinarily not consider additional evidence filed after the
appeal is filed. Because the evidence submitted with
customer data bases, the distribution of newsletters discussing
intellectual property law," and then to "services related to
promoting, through advertising, direct mail, the Internet, and
the distribution of newsletters discussing intellectual property
law." After applicant filed its appeal brief, the Examining
Attorney requested and was granted a remand of the application in
order to obtain an acceptable identification of services, and it
was at this point that applicant amended the identification to
that which we have indicated above.
2 In the final Office action the Examining Attorney also
maintained a refusal of registration on the ground of likelihood
of confusion, citing Registration No. 682920 for FEDERAL
PUBLICATIONS INC. and design for "periodical newsletter
containing digests of government procurement information and a
government contracts citator." However, in her appeal brief the
Examining Attorney withdrew the refusal on this ground.
3 As noted, the Examining Attorney requested remand of the
application after applicant filed his appeal brief. When
proceedings in the appeal were resumed, applicant was given an
opportunity to file a supplemental appeal brief, but did not do
so.
Ser No. 75716024
3
applicant's brief is manifestly untimely, it has not been
considered. The Examining Attorney has also submitted
evidence with her brief, specifically, several definitions
of "law." Although this evidence is also technically
untimely, the Board may take judicial notice of dictionary
definitions. University of Notre Dame du Lac v. J. C.
Gourmet Food Imports Co., Inc., 213 USPQ 594 (TTAB 1982),
aff’d, 703 F.2d 1372, 217 USPQ 505 (Fed. Cir. 1983). We
have considered the definition taken from an on-line
version of a dictionary which is also in printed form,
i.e., the Merriam-Webster Online Dictionary. However,
those definitions which were taken from exclusively on-line
dictionaries and encyclopedias have not been considered.
See In re Total Quality Group Inc., 51 USPQ2d 1474, 1476
(TTAB 1999) (when Examining Attorneys intend to rely on
Internet evidence that otherwise would normally be subject
to judicial notice (such as dictionary definitions), such
evidence must be submitted prior to appeal).
We affirm the refusal of registration.
A mark is merely descriptive, and therefore prohibited
from registration by Section 2(e)(1), if it immediately
conveys knowledge of the ingredients, qualities or
characteristics of the goods or services with which it is
used. See In re Gyulay, 820 F.2d 1216, 3 USPQ2d 1009 (Fed.
Ser No. 75716024
4
Cir. 1987). It does not have to describe every quality,
characteristic, function, attribute or feature of a product
or service; it is enough if it describes a single,
significant quality, attribute, etc. In re Venture Lending
Associates, 226 USPQ 285, 286 (TTAB 1985).
The Examining Attorney has pointed out that applicant,
during the course of prosecution, offered a disclaimer of
the words FEDERAL and PUBLISHING, and asserts that
applicant has thereby acknowledged the descriptiveness of
these words. (In offering the disclaimers, applicant
stated, "It is respectfully submitted that these
disclaimers avoid the refusal to register based on the
allegedly merely descriptive nature of the mark as a
whole." Response filed April 2, 2001.) Therefore, in her
brief, the Examining Attorney has focused on the word LAW,
asserting that this word is also descriptive, as it tells
consumers the nature of the subject matter of applicant's
newsletters, which are identified as featuring information
on intellectual property law. The Examining Attorney also
contends that these three descriptive words, when combined
as the mark FEDERAL LAW PUBLISHING, do not result in a mark
with a separate, nondescriptive meaning. Rather, they
convey that applicant will publish information about a
field of federal law.
Ser No. 75716024
5
In his brief, applicant's only argument as to why his
mark should not be considered merely descriptive is a
reference to a third-party registration for LAW AND ORDER
for legal services, and the statement that if that mark is
not merely descriptive, then applicant's mark should not be
considered merely descriptive either. As noted earlier,
this registration is not part of the record, but even if it
were, the mark is distinguishable because it is unitary and
a double entendre, LAW AND ORDER being a well-known phrase.
Thus, the registration of LAW AND ORDER without a
disclaimer of "law" does not show that the word "law" is
not descriptive of such services; disclaimers of individual
words are not required in such a situation.
We agree with the Examining Attorney that applicant's
mark as a whole is merely descriptive of his identified
services, "publication of newsletters featuring information
on intellectual property law." The word PUBLISHING
obviously describes publication services, while
intellectual property law is a type of FEDERAL LAW. Thus,
the combined term FEDERAL LAW PUBLISHING immediately
conveys to consumers what applicant does, i.e., he
publishes material on the topic of federal law. The fact
that applicant's newsletters feature one aspect of federal
law does not avoid a finding of mere descriptiveness.
Ser No. 75716024
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Simply because applicant has chosen to identify the subject
matter of his newsletters more broadly does not mean that
"federal law" does not describe newsletters featuring
intellectual property law, any more than the designation
"vegetable" would not describe peas. We also point out
that, although the newsletters are identified as featuring
information on intellectual property law, they are not
limited to this subject matter.
Decision: The refusal of registration is affirmed.