Ernest Industries

Trademark Trial and Appeal Board

Feb 10, 2009

No. 78942883 (T.T.A.B. Feb. 10, 2009)

Mailed:
10 February 2009
AD

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Ernest Industries
________

Serial No. 78942883
_______

Edward H. Rosenthal of Frankfort Kurnit Klein & Selz, P.C.
for Ernest Industries.

Lourdes D. Ayala, Trademark Examining Attorney, Law Office
106 (Mary I. Sparrow, Managing Attorney).
_______

Before Quinn, Drost and Mermelstein, Administrative
Trademark Judges.

Opinion by Drost, Administrative Trademark Judge:

On August 2, 2006, applicant Ernest Industries filed
an application to register the mark MUSEUM OF SUPERNATURAL
HISTORY, in standard character form, on the Principal
Register for services ultimately identified as
“entertainment services, namely, providing a web site
featuring articles, stories, and information in the field
of hypothetical and mythical beings, beasts, animals and
THIS OPINION IS NOT A
PRECEDENT OF THE
TTAB
Ser. No. 78942883
2
preternatural creatures” in Class 41.1 Applicant has
disclaimed the word “History.”
The examining attorney refused to register applicant’s
mark on the ground that the mark was merely descriptive
under Section 2(e)(1) of the Trademark Act, 15 U.S.C.
§ 1052(e)(1). In addition, the examining attorney has
required a disclaimer of the term “Museum.”
The examining attorney argues that “applicant features
an online museum that features historical supernatural
information or historical information relating to the
existence of beings or creatures outside the natural world
which is provided to its consumers on-line.” Brief at
unnumbered p. 5. The examining attorney also argues that
based “on the evidence and definitions submitted to the
applicant in this case, the mark is descriptive as a whole
and the term MUSEUM must be disclaimed because the
applicant features an online museum that provides
historical supernatural information or historical
information relating to the existence of beings or
creatures outside the natural world.” Brief at 8.
Applicant maintains that its mark is not merely
descriptive because its “services here relate only to a

1 Serial No. 78942883. The application is based on applicant’s
allegation of a bona fide intent to use the mark in commerce.
Ser. No. 78942883
3
website and not a ‘building, place, or institution.’ There
will be no physical museum associated with Applicant or its
services… Applicant will neither have a physical location
nor will it be acquiring, conserving, studying, exhibiting,
displaying or interpreting objects.” Brief at 6.
Furthermore, applicant argues that it “will not use its
mark in connection with a ‘museum’ of any sort – online or
elsewhere.” Reply Brief at 6.
After the examining attorney made the refusals final,
applicant appealed to this board.
“A mark is merely descriptive if it ‘consist[s] merely
of words descriptive of the qualities, ingredients or
characteristics of’ the goods or services related to the
mark.” In re Oppendahl & Larson LLP, 373 F.3d 1171, 71
USPQ2d 1370, 1371 (Fed. Cir. 2004), quoting, Estate of P.D.
Beckwith, Inc. v. Commissioner, 252 U.S. 538, 543 (1920).
“Such qualities or properties include color, odor,
function, dimensions, or ingredients.” In re Gyulay, 820
F.2d 1216, 3 USPQ2d 1009, 1010 (Fed. Cir. 1987) (internal
quotation marks omitted). Descriptiveness of a mark is not
considered in the abstract, but in relation to the
particular goods or services for which registration is
sought. In re Abcor Dev. Corp., 588 F.2d 811, 200 USPQ
215, 218 (CCPA 1978).
Ser. No. 78942883
4
The examining attorney relies on several dictionary
definitions, submitted during the prosecution of the
application, to support her refusal. These definitions
include:
Museum – A building, place, or institution devoted to
the acquisition, conservation, study, exhibition and
educational interpretation of objects having
scientific, historical, or artistic value.

Supernatural – Of or relating to the existence outside
the natural world.

History – A chronological record of events, as of the
life or development of a people or an institution,
often including an explanation of or commentary on
those events.

The American Heritage Dictionary of the English Language
(3d ed. 1992). See First Office Action at 2.
The examining attorney has also submitted examples of
“online museums.” While some are the online version of
traditional museums, several appear to exist only online.
Online Museum of EARLY BASEBALL MEMORABILA [sic]

MoOM - The Museum of Online Museums [examples]
The On-Line Skateboard Museum
The Virtual Absinthe Museum

The Aviation History Online Museum

Virtual Library museums pages
A distributed directory of on-line museums

American Association of University Women Online Museum
We are proud to offer this new online museum, a
virtual clearinghouse of AAUW history.

Ser. No. 78942883
5
Wolfman Jack’s Online Museum2

The examining attorney also included a page from a
website (apparently not owned by applicant, see Response
dated January 15, 2008 at 2), that contains the following
language:
Surnateum
the Museum of Supernatural History

For decades, the Museum of Supernatural History
(Surnateum) has been exploring the strange, parallel
universe at the frontier of our reality. The
Surnateum is far more than a website designed to
entertain and enlighten you. It is the virtual front-
end for one of the most astounding collections of
authentic magical artefacts and strange stories
gathered from around the world by the Collectors and
Curators for more than a century.

The left hand column contains the following list:
Museum
- History
- Collections

2 The examining attorney also included a Google printout for
several “online” museums. See, e.g., Olga’s Gallery – Online Art
Museum - “One of the largest online painting museums. New
exhibits weekly”; The Black Inventor Online Museum – “A look at
the great and often unrecognized pioneers in the field of
invention and innovation”; and The Apple Online Museum –
“Dedicated to the historical background of Apple Computer, Inc.”
However, the examining attorney failed to include the actual
webpages from these sites. We note that applicant has
specifically discussed one of these entries (Reply Brief at 5,
Olga’s Gallery), but truncated search engine results are normally
entitled to little weight. See In re Bayer Aktiengesellschaft,
488 F.3d 960, 82 USPQ2d 1828, 1833 (Fed. Cir. 2007) (“Search
engine results — which provide little context to discern how a
term is actually used on the webpage that can be accessed through
the search result link — may be insufficient to determine the
nature of the use of a term or the relevance of the search
results to registration considerations”). While the results here
are more comprehensible than many search engine results, we give
this evidence only limited weight.
Ser. No. 78942883
6
- Special Collections

What’s new?
- Latest acquisitions
- A word from the curator
- Stories
- From our vaults

Activities
- Events
- Hire a storyteller
- Exhibition

This evidence suggests that there is nothing unusual about
a website featuring historical information about
supernatural things being referred to as a “Museum of
Supernatural History.”
Applicant has submitted several examples of
registrations in which no disclaimer of the term “museum”
was required, but these registrations are for goods or
services that are not museums and/or unitary terms. See
Response dated June 26, 2007, Ex. B (INTERNATIONAL SPY
MUSEUM for retail store services and goods such as books;
WORLD FIGURE SKATING MUSEUM & HALL OF FAME for goods such
as paper shopping bags, tote bags, mugs, and t-shirts;
MALIBU SURFING MUSEUM for clothing; MUSEUM OF INTRODUCTIONS
for conducting trade shows in the field of rugs, carpets,
Ser. No. 78942883
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and other floor coverings; A MUSEUM IN A BOOK for books;
UNMUSEUM; EXPEDITIONS@FIELDMUSEUM and MUSEUMLAND.3
Applicant also submitted a page from its website that
indicates that the website is “Opening Fall 2007” and it
contains the heading: “Museum of SuperNatural History -
From the Abominable Snowman … to Zeugodons.”4 One of the
links on applicant’s webpage is to “Cryptozoology A-Z.”
Cryptozoology is defined as “the study of evidence tending
to substantiate the existence of, or search for, creatures
whose reported existence is unproven, as the Abominable
Snowman or the Loch Ness monster.” The Random House
Dictionary of the English Language (unabridged) (2d ed.
1987). We take judicial notice of this definition.
University of Notre Dame du Lac v. J.C. Gourmet Food
Imports Co., 213 USPQ 594, 596 (TTAB 1982), aff'd, 703 F.2d
1372, 217 USPQ 505 (Fed. Cir. 1983).
We now look at the individual terms in applicant’s
mark, keeping in mind that ultimately the question is
whether the mark as a whole is merely descriptive. The key

3 With its appeal brief, applicant refers to, and attaches
registrations for the last two marks. The examining attorney
does not specifically discuss these additional registrations so
they are not of record. 37 CFR § 2.142(d). We include them in
our discussion because, in the event the examining attorney’s
general discussion was directed to these marks, they are
similarly unpersuasive.
4 It is not clear what a zeugodon is but the drawing on the
webpage suggests that it could refer to a sea serpent.
Ser. No. 78942883
8
term in dispute appears to be the word “museum.” As noted
previously, applicant argues that it is not a museum
because it is only online and, furthermore, it argues that
the mark will not be used in association with a museum
online or otherwise. However, the evidence convinces us
that there is nothing incongruous about using the term
“museum” in association with a website that serves the
function of a museum. The evidence shows that there are
online museums that are both connected with traditional
museums as well as those that appear to be primarily or
exclusively available online. Some are specifically
referred to as “online” or “virtual” museums. Indeed,
there is an online “Museum of Supernatural History” that
describes itself as “the virtual front-end for one of the
most astounding collections of authentic magical artefacts
and strange stories gathered from around the world.”
Therefore, the term “museum,” when used to refer to an
institution devoted to the study, exhibition and
educational interpretation of objects having scientific,
historical, or artistic value would be at least descriptive
for those services.
While applicant argues that it is not planning to use
the term in association with an online museum, its
identification of services and even its webpage indicates
Ser. No. 78942883
9
that its services can accurately be described as an online
museum. Applicant’s services involve “providing a web site
featuring articles, stories, and information in the field
of hypothetical and mythical beings, beasts, animals and
preternatural creatures.” These services describe what an
online museum would be expected to provide. This
information can be used for the study of the beliefs in
these mythical beings and preternatural creatures.
Further, the fact that applicant’s services might also be
entertaining does not distract from the fact that it is
providing information about mythical beings, beasts,
animals and preternatural creatures. For example, the
Surnateum, the Museum of Supernatural History, describes
itself as “far more than a website designed to entertain
and enlighten you.” This suggests that an online museum
can indeed be a source of, inter alia, entertainment.
The term “supernatural” is also descriptive of
applicant’s services. As indicated earlier, supernatural
is defined as “of or relating to the existence outside the
natural world.” Applicant’s services includes providing
information about “preternatural creatures.” Preternatural
is defined as “out of the ordinary course of nature;
exceptional or abnormal” and “outside of nature;
supernatural.” The Random House Dictionary of the English
Ser. No. 78942883
10
Language (unabridged) (2d ed. 1987). Certainly, mythical
beings and preternatural creatures would comprise subject
matter outside the natural world. Therefore, the term
“supernatural” describes a feature of applicant’s services
concerning mythical beings and preternatural creatures.
Also, the word “history” is similarly descriptive. We note
that the term can be defined in numerous ways, including
“the branch of knowledge dealing with past events.” The
Random House Dictionary of the English Language
(unabridged) (2d ed. 1987). Applicant’s services would
include providing articles and information on the history
of beliefs about mythical beings and preternatural
creatures. Therefore, that term also describes its
services.
However, we must consider whether the mark in its
entirety is merely descriptive of the services. P.D.
Beckwith, Inc., 252 U.S. at 545-46. Merely because the
individual words may describe a product or service, when
the terms are combined, they may be more than merely
descriptive. See, e.g., In re Colonial Stores Inc., 394
F.2d 549, 157 USPQ 382, 385 (CCPA 1968) (“[T]he term
‘sugar’ and ‘spice’ used individually are well known and
well understood by the purchasing public. However, when
combined and used on bakery goods, we think they may
Ser. No. 78942883
11
function as an indication of more than a mere description
of the ingredients of the goods on which the mark is used
and, on the record made below, are not ‘merely
descriptive’”).
In this case, when the terms are combined into the
mark MUSEUM OF SUPERNATURAL HISTORY, we find that the mark
is merely descriptive of applicant’s services. The mark
exactly describes a feature of applicant’s services, i.e.
that it will be an online museum that provides information
and articles about the history of the beliefs in, or
existence of, supernatural beings including mythical beings
and preternatural creatures. We add that inasmuch as we
have found the mark to be merely descriptive, we do not
need to address the issue of whether the term “Museum” must
be disclaimed.
Decision: The examining attorney’s refusal to
register on the ground that the mark is merely descriptive
is affirmed.