Douglas A. Shachnow

Trademark Trial and Appeal Board

Mar 3, 2015

No. 85712639 (T.T.A.B. Mar. 3, 2015)

This Opinion is Not a
Precedent of the TTAB

Mailed: March 3, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

In re Douglas A. Shachnow
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Serial No. 85712639

_____

Daniel S. Polley of Daniel S. Polley, P.A.,
for Douglas A. Shachnow.
Michael A. Wiener, Trademark Examining Attorney, Law Office 108,
Andrew Lawrence, Managing Attorney.
_____

Before Wolfson, Gorowitz and Hightower,
Administrative Trademark Judges.

Opinion by Gorowitz, Administrative Trademark Judge:
In this case, Douglas A. Shachnow (“Applicant”) seeks registration on the
Principal Register of the mark for the following services, as
amended,
Travel information, travel information services; providing
a website featuring expedited access to travel
information; providing an interactive website that
expedites access to travel information and provides links
Serial No. 85712639
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to the websites of others in the field of travel in
International Class 39.1
The application contains the following description of the mark: “The mark consists
of the wording ‘WORLD BROWSER’ to the left of a hand-held magnifier which
encloses a globe image.”
The Trademark Examining Attorney has refused registration of Applicant’s
mark under Section 6 of the Trademark Act on the ground that a disclaimer is
required of the literal portion of the mark, WORLD BROWSER, because it is merely
descriptive of Applicant’s services. When the refusal was made final, Applicant
appealed and requested reconsideration. After the Examining Attorney denied the
request for reconsideration, the appeal was resumed. We affirm the refusal to
register.
I. Evidentiary Matter.
In its brief, Applicant “invites the Board and the Examining Attorney to view a
3-minute video demo on Applicant’s online home page/sign on screen.” Appeal Brief,
p. 6, 14 TTABVUE at 7. It is not clear whether this video is intended to constitute
evidence in this case. However, evidence submitted after the filing of an appeal is
untimely and will not ordinarily be considered by the Board. Trademark Rule
2.142(d); 37 CFR § 2.142(d). Accordingly, we have not considered the video.
Moreover, while evidence downloaded from the internet may be admissible if
complete information as to the source or context of the evidence is provided, merely

1 Application Serial No. 8571263 was filed on August 24, 2012, based upon Applicant’s
allegation of a bona fide intention to use the mark in commerce under Section 1(b) of the
Trademark Act.
Serial No. 85712639
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providing a link to an internet site cannot guarantee its authenticity because the
nature of a website is dynamic, not static. Cf. In re Future Ads LLC, 103 USPQ2d
1571, 1572 n.3 (TTAB 2012) (“the Board will not utilize a link or reference to a
website's internet address to access the site to consider whatever content may
appear therein.”); In re HSB Solomon Associates, LLC, 102 USPQ2d 1269, 1274
(TTAB 2012).
II. Discussion.
A. Descriptiveness of the term WORLD BROWSER.
A term is deemed to be merely descriptive of goods or services, within the
meaning of Section 2(e)(1) of the Trademark Act, if it forthwith conveys an
immediate idea of an ingredient, quality, characteristic, feature, function, purpose
or use of the goods or services. DuoProSS Meditech Corp. v. Inviro Medical Devices
Ltd., 695 F.3d 1247, 103 USPQ2d 1753, 1755 (Fed. Cir. 2012); In re Chamber of
Commerce of the U.S., 675 F.3d 1297, 102 USPQ2d 1217, 1219 (Fed. Cir. 2012); In
re Abcor Development Corp., 588 F.2d 811, 200 USPQ 215, 217-18 (CCPA 1978).
Whether a term is merely descriptive is determined not in the abstract, but in
relation to the goods or services for which registration is sought, the context in
which it is being used on or in connection with the goods or services, and the
possible significance that the term would have to the average purchaser of the goods
or services because of the manner of its use; that a term may have other meanings
in different contexts is not controlling. In re Chamber of Commerce of the U.S., 102
USPQ2d at 1219 (citing In re Bayer Aktiengesellschaft, 488 F.3d 960, 82 USPQ2d
Serial No. 85712639
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1828, 1831 (Fed. Cir. 2007)); In re Bright-Crest, Ltd., 204 USPQ 591, 593 (TTAB
1979).
In his brief, the Examining Attorney noted that “the term ‘WORLD’ refers to the
earth, which merely denotes the scope of the travel information.” Examining
Attorney’s Brief, p. 4, 16 TTABVUE 5. The definition is consistent with a definition
of “world” from Dictionary.com.2 Further, the phrase “see the world,” which is
defined as “to travel to many different countries,”3 supports the Examining
Attorney’s position that when used in connection with travel services, the term
“WORLD” immediately conveys the idea that travel services may relate to many
different countries. The Examining Attorney also submitted evidence of the
USPTO’s treatment of the word “WORLD” as merely descriptive for travel-related
services, consisting of five registrations which are either on the Supplemental
Register or include a disclaimer of the word “WORLD.” See, for example,
Reg. No. 3840647 -

2 We take judicial notice that one of the definitions of “world” on Dictionary.com is “the
earth or globe, considered as a planet.” Dictionary.com.
http://dictionary.reference.com/browse/world (Random House, Inc. 2015).

The Board may take judicial notice of dictionary definitions, Univ. of Notre Dame du Lac v.
J.C. Gourmet Food Imps. Co., 213 USPQ 594 (TTAB 1982), aff’d, 703 F.2d 1372, 217 USPQ
505 (Fed. Cir. 1983), including online dictionaries that exist in printed format or have
regular fixed editions. In re Red Bull GmbH, 78 USPQ2d 1375, 1377 (TTAB 2006).

3 MacMillan Dictionary, using the American English definition of “see the world,” is located
at: http://www.macmillandictionary.com/dictionary/american/world (Macmillan Publishers
Limited 2015).

Serial No. 85712639
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Services include: Providing a website featuring
information on travel
Disclaimer: WORLD
Status: Registered;

Reg. No. 2569193 – WORLD CHOICE TRAVEL
Services include: Travel information services; travel
agency services, namely, making reservations and
bookings for transportation
Disclaimer: WORLD and TRAVEL
Status: Section 8 &15 accepted and acknowledged; and

Reg. No. 4089269 – WORLD ADVENTURES
Services: Providing a web site featuring travel
information and commentary
Register: Supplemental
Status: Registered.

These registrations reflect that the word “WORLD” is considered descriptive by the
USPTO when used in connection with travel-related services. Third-party
registrations can be used to demonstrate that a term may have a commonly
accepted meaning. “Such third party registrations show the sense in which the word
is used in ordinary parlance and may show that a particular term has descriptive
significance as applied to certain goods or services.” Institut National Des
Appellations D'Origine v. Vintners International Co., 958 F.2d 1574, 22 USPQ2d
1190, 1196 (Fed. Cir. 1992). See also In re Box Solutions Corp., 79 USPQ2d 1953,
1955 (TTAB 2006) (“Third-party registrations can be used in the manner of a
dictionary definition to illustrate how a term is perceived in the trade or industry.”);
Trademark Manual of Examining Procedure (TMEP) §§ 1213 and 1213.03(a)
(January 2015) (disclaimers are required of unregistrable components, e.g., a
merely descriptive term).
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To counter this evidence, Applicant introduced six registrations on the Principal
Register for marks containing the word “WORLD” for travel-related services,
wherein the word “WORLD” is not disclaimed. The marks in these registrations are
distinguishable from those cited by the Examining Attorney because all but one is
unitary.4 Descriptive matter is not disclaimed if it is part of a unitary mark. TMEP
§ 1213.05(b). See for example,
Reg. No. 3831328 –

Services include: Arranging and coordinating travel
arrangements … arranging travel tours
Status: Registered;

Reg. No. 2569193 – THE WORLD’S TRAVEL
INSPIRATION ENGINE
Services include: Arranging and coordinating travel
arrangements … arranging travel tours
Status: Registered; and

Reg. No. 4415404 – TRAVEL THE WORLD ONE HOP AT
A TIME

4 The only possible exception is a registration for the mark WORLD HUM. However, the
question whether the word “WORLD” should have been disclaimed is not before us, nor is
the record in that case. In any event, while consistency in examination is important, we
cannot be bound by prior decisions and must decide each case that comes before us on its
record. In re Nett Designs, Inc., 236 F.3d 1339, 57 USPQ2d 1564, 1566 (Fed. Cir. 2001).

Serial No. 85712639
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Services include: Arranging and coordinating travel
arrangements and providing on on-line searchable
database featuring information on travel
Status: Registered.

Each of these marks employs the word “WORLD” in a slogan, and because slogans
are considered unitary, the individual words in them are not disclaimed. Leading
Jewelers Guild Inc. v. LJOW Holdings LLC, 82 USPQ2d 1901, 1905 n.7 (TTAB
2007). Therefore, even if deemed descriptive, the word “WORLD” would not be
disclaimed in any of the registrations cited by Applicant, except perhaps for one;
and one prior registration will not dictate the result in this case.
Based on the evidence of record, we find the word “WORLD” immediately
conveys a feature of Applicant’s services, namely that the information relates to
world-wide travel. As such, the word “WORLD” is merely descriptive of a feature of
Applicant’s travel information-related services.
We look next at the word “BROWSER.” Both the Examining Attorney (in the
Office Action dated December 19, 2012) and the Applicant (in the Request for
Reconsideration dated December 19, 2013) submitted the following definition of
“browser” from the Merriam-Webster On-Line Dictionary:
1 : one that browses
2 : a computer program used for accessing sites or
information on a network (as the World Wide
Web).5
Under both definitions, the word “BROWSER” is descriptive of Applicant’s
services. With respect to the first definition (one who browses), the definition of

5 http://www.merriam-webster.com/dictionary/browser.
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“browse” from Oxford Dictionaries is “scan through a text, website, or collection of
data to gain an impression of the contents.”6 In the context of Applicant’s site, this
definition of “BROWSER” immediately conveys a use of Applicant’s services, which
is to scan through Applicant’s website to gain an impression of its contents (world
travel information).
“Browse” is also defined as: “to view the contents of a file or a group of files.
Browser programs generally let you view data by scrolling through the documents
or databases.”7
Relying on the definition of “BROWSER,” Applicant argues that “a browser is
not a service … a browser refers to the computer program that is used to provide
access. Thus, a browser is a product.” Appeal Brief, p. 3, 14 TTABVUE at 4. The
Examining Attorney counters this argument by asserting that
[t]he term “BROWSER” refers to software enabling users
to access, find, and read information on the Internet. The
Applicant’s services are travel information services,
including such services identified as being accessed
online. The word “BROWSER” in the mark merely
describes a feature [of] the services, namely, how the
applicant’s travel information services are being accessed:
through software enabling users to access, find, and read
the travel information on the Internet.
Examining Attorney’s Brief, unnumbered p. 8, 16 TTABVUE at 9. Moreover, “the
word ‘BROWSER’ merely describes one significant feature of the applicant’s

6 We take judicial notice of the definition of “browse” from Oxford Dictionaries,
http://www.oxforddictionaries.com/definition/american_english/browse.
7 Alan Freedman, The Computer Glossary, The Complete Illustrated Dictionary (7th ed.
1995).
Serial No. 85712639
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services: the method by which the applicant’s travel information services are
accessed.” Id., unnumbered p. 9, 16 TTABVUE at 10.
We look next at the combination of the terms. When two descriptive terms
are combined, the determination of whether the composite mark also has a
descriptive significance turns upon the question of whether the combination of
terms evokes a new and unique commercial impression. If each component retains
its descriptive significance in relation to the goods or services, the combination
results in a composite that is itself descriptive. See Duopross Meditech Corp., 103
USPQ2d 1753 (SNAP SIMPLY SAFER merely descriptive for “medical devices,
namely, cannulae; medical, hypodermic, aspiration and injection needles; medical,
hypodermic, aspiration and injection syringes”); In re Oppedahl & Larson LLP, 373
F.3d 1171, 71 USPQ2d 1370 (Fed. Cir. 2004) (PATENTS.COM merely descriptive of
computer software for managing a database of records that could include patents
and for tracking the status of the records by means of the Internet).
Applicant acknowledges the Examining Attorney’s position that the combination
of the terms “world” and “browser” merely details the scope of the travel services
that are available via the web. However, Applicant contends that this is only “one
possible uncommon interpretation of the combination of the terms.” Appeal Brief, p.
3, 14 TTABVUE at 4. Applicant argues that its mark is registrable because it is a
double entendre connoting “on the one hand, an individual who browses the world
through traveling and, on the other, goods that allow one to access a website
containing information about the world.” Id. However, even if the mark conveys the
Serial No. 85712639
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impression of a user browsing the world through traveling, this is also merely
descriptive of a feature of the goods; and even a mark encompassing a double
entendre is considered merely descriptive unless one of its meanings is not merely
descriptive in relation to the involved goods or services. In re Leonhardt, 109
USPQ2d 2091, 2098 (TTAB 2008).
In this case, all connotations of the term WORLD BROWSER are descriptive of
Applicant’s services, namely, providing travel information online. As discussed
supra, the term WORLD BROWSER immediately conveys a use of Applicant’s
services, which is to scan through Applicant’s website to obtain travel information
regarding many countries. The other connotation of the term is that Applicant’s
services consist of the provision of access to an interactive website relating to
worldwide travel information.
In conclusion, we find that as used in connection with Applicant’s services, each
of the words “WORLD” and “BROWSER” retains its descriptive significance when
combined to create the term WORLD BROWSER and therefore, that the composite
term WORLD BROWSER is merely descriptive of Applicant’s services.
B. The term WORLD BROWSER must be disclaimed.
“The Director may require the applicant to disclaim an unregistrable
component of a mark otherwise registrable.” Section 6 of the Trademark Act. “A
mark or component is unregistrable if, ‘when used on or in connection with the
goods of the applicant,’ it is ‘merely descriptive . . . of them.’” In re Stereotaxis Inc.,
429 F.3d 1039, 77 USPQ2d 1087, 1089 (Fed. Cir. 2005) (quoting Trademark Act
Serial No. 85712639
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Section 2(e)(1)). Failure to comply with a disclaimer requirement is grounds for
refusal of registration. See In re Omaha National Corp., 819 F.2d 1117, 2 USPQ2d
1859 (Fed. Cir. 1987); In re Richardson Ink Co., 511 F.2d 559, 185 USPQ 46 (CCPA
1975); In re Ginc UK Ltd., 90 USPQ2d 1472 (TTAB 2007); In re National Presto
Industries, Inc., 197 USPQ 188 (TTAB 1977); In re Pendleton Tool Industries, Inc.,
157 USPQ 114 (TTAB 1968). As discussed supra, the term “WORLD BROWSER” is
merely descriptive of Applicant’s travel information services and thus is an
unregistrable component of Applicant’s mark. Accordingly the mark
is not registrable in the absence of a disclaimer of the
wording “WORLD BROWSER.”
Decision: The refusal to register the mark is
affirmed. However, if Applicant submits the required disclaimer of WORLD
BROWSER to the Board within thirty days, this decision will be set aside as
to the affirmance of the disclaimer requirement.8 See Trademark Rule
2.142(g), 37 C.F.R. § 2.142.

8 The standardized printing format for the required disclaimer text is as follows: “No claim
is made to the exclusive right to use WORLD BROWSER apart from the mark as shown.”
TMEP 1213.08(a)(i).