Gabriel Castillo

Trademark Trial and Appeal Board

Dec 15, 1998

No. 75043780 (T.T.A.B. Dec. 15, 1998)

Paper No. 12
12/16/98 HRW
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Gabriel Castillo
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Serial No. 75/043,780
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Thomas E. Anderson of Gifford, Krass, Groh, Sprinkle,
Patmore, Anderson & Citkowski, P.C. for applicant.
Karla Perkins, Trademark Examining Attorney, Law Office 106
(Mary I. Sparrow, Managing Attorney).
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Before Simms, Quinn and Wendel, Administrative Trademark
Judges.
Opinion by Wendel, Administrative Trademark Judge:
Gabriel Castillo has filed an application to register
the mark LATIN AMERICAN PEOPLE DEVELOPMENTS for “magazines
in the field of providing information regarding Latin
Americans.”1
Registration has been finally refused on the ground
that the mark is merely descriptive under Section 2(e)(1)

1 Ser. No. 75/043,780, filed Jan. 16, 1996, based on a bona fide
intent to use.
Ser No. 75/043,780
2
of the Trademark Act. Applicant and the Examining Attorney
have filed briefs, but the request for an oral hearing was
withdrawn.
The Examining Attorney maintains that applicant’s mark
LATIN AMERICAN PEOPLE DEVELOPMENTS is merely descriptive of
the subject matter of applicant’s magazines, namely
“developments of the Latin American people”. In the first
place, she points out that LATIN AMERICAN PEOPLE is clearly
descriptive when used in connection with magazines
providing information with respect to “Latin Americans” and
that applicant has failed to argue to the contrary. Thus,
according to the Examining Attorney, the only question lies
in the connotation, and descriptiveness, of the word
DEVELOPMENTS when used in connection with applicant’s
magazines.
The Examining Attorney argues that the word
DEVELOPMENTS, as used in connection with magazines dealing
with information about Latin Americans, would be viewed as
meaning “significant events.” In support of her position,
she has made of record the definitions found for
“development” in Webster’s II New Riverside University
Dictionary (1988), one of which is “a significant event.”
In addition, the Examining Attorney has submitted a
representative sampling of excerpted articles found on the
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Nexis database which use the term “developments” in a
descriptive manner in connection with the subject matter of
various publications. As examples she notes the following
in her brief:
Associates are also called upon to contribute to
in-house newsletters showcasing recent developments
in the firm’s various practice areas. The Legal
Intelligence, Mar. 7, 1997;
“Listeners are going to lose,” said Robert Unmacht,
editor of The M Street Journal, a newsletter that
tracks developments in the industry. Newsday, Feb.
17, 1997;
Hot off the press, this book discusses the latest
issues and developments in videoconference technology.
PC Week, Feb. 17, 1997;
...according to Online Banking Report, a newsletter
that tracks developments in electronic banking. Los
Angeles Times, Dec. 17, 1996; and
...shareholders are less than thrilled to be
inheriting the company’s chemical business, said
Gimme Credit, a newsletter that tracks corporate
developments. St. Louis Post Dispatch, Dec. 15, 1996.
On the basis of this evidence she argues that the mark
LATIN AMERICAN PEOPLE DEVELOPMENTS merely describes the
subject matter or contents of applicant’s magazines, i.e.,
significant events of or relating to Latin American people.
Applicant, on the other hand, contends that the
combination of LATIN AMERICAN PEOPLE with DEVELOPMENTS does
not result in a phrase which immediately conveys
information with respect to the nature of applicant’s
Ser No. 75/043,780
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goods. Instead, according to applicant, the purchaser must
mentally rearrange the mark before they even begin to
understand the scope of the publication. Applicant further
argues that not only does the mark standing alone fail to
describe or even suggest a publication of any type, but
also the term “developments”, unlike “news” or “digest” is
not commonly used in the magazine field to indicate a
magazine publication. Applicant maintains that even the
evidence produced by the Examining Attorney does not show
use of the term “developments” for a magazine or similar
periodical.
A word or phrase is merely descriptive within the
meaning of Section 2(e)(1) if it immediately conveys
information about a characteristic, purpose, function, or
feature of the goods with which it is being used. Whether
or not a mark is merely descriptive is not determined in
the abstract, but in relation to the goods or services for
which registration is sought. See In re Abcor Development
Corp., 588 F.2d 811, 200 USPQ 215 (CCPA 1978). Titles of
periodicals are not treated any differently from marks for
other products and if the title immediately reveals the
contents or subject matter of the periodical, the mark is
merely descriptive. See In re Distribution Codes, Inc.,
Ser No. 75/043,780
5
199 USPQ 508 (TTAB 1978); In re The Gracious Lady Service,
Inc., 175 USPQ 380 (TTAB 1972).
Thus, the question of whether LATIN AMERICAN PEOPLE
DEVELOPMENTS is merely descriptive must be resolved taking
into consideration the contents of the magazine with which
it is intended to be used. The fact that the word “digest”
or “news” has not been included in the mark is irrelevant.
In order to be merely descriptive the mark need not convey
the information in itself that it is the title of a
magazine; it is sufficient if it conveys information as to
the subject matter of the magazine upon which it appears.
See Andy Warhol Enterprises, Inc. v. Time, Inc., 700 F.Supp
760, 9 USPQ2d 1454 (S.D.N.Y. 1988)[INTERVIEW merely
descriptive of contents of magazine]; In re Waverly Inc.,
27 USPQ2d 1620 (TTAB 1993)[MEDICINE merely descriptive of
contents of medical journal]. For additional examples, see
2 J.T. McCarthy, McCarthy on Trademarks and Unfair
Competition, § 10:8 (4th Ed. 1996).
In the present case, we agree that LATIN AMERICAN
PEOPLE DEVELOPMENTS immediately conveys the information to
purchasers that this is a magazine about Latin Americans
and developments or events which relate to these people.
The Examining Attorney has adequately shown that the term
“developments” has a recognized meaning as “significant
Ser No. 75/043,780
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events” and that publications about the “significant
events” in a particular field are often described as
tracking the “developments” in that field. Although there
may be no evidence of record that others have used the word
“developments” in magazine titles, this does not eliminate
the descriptiveness of the word as intended to be used by
applicant for its particular product. See In re Bright-
Crest, Ltd., 204 USPQ 591 (TTAB 1979)[fact that applicant
may be first or only one to use a term not controlling on
issue of descriptiveness]. Thus, LATIN AMERICAN PEOPLE
DEVELOPMENTS when viewed on applicant’s magazine would
immediately convey the information that the magazine
features articles and the like with respect to significant
events involving Latin Americans. We do not agree with
applicant that it is only after mentally rearranging the
mark that any descriptiveness becomes apparent; we consider
LATIN AMERICAN PEOPLE DEVELOPMENTS to be just as
descriptive as DEVELOPMENTS of LATIN AMERICAN PEOPLE.
Accordingly, we find the mark LATIN AMERICAN PEOPLE
DEVELOPMENTS to be merely descriptive of the subject matter
of the magazine upon which applicant intends to use it.
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Decision: The refusal to register under Section
2(e)(1) is affirmed.
R. L. Simms
T. J. Quinn
H. R. Wendel
Trademark Administrative Judges,
Trademark Trial and Appeal Board
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