IDG Books Worldwide, Inc.

Trademark Trial and Appeal Board

Apr 30, 2002

No. 74650282 (T.T.A.B. Apr. 30, 2002)

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re IDG Books Worldwide, Inc.
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Serial No. 74/650,282
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Mark B. Harrison for IDG Books Worldwide, Inc.
Michael Webster, Trademark Examining Attorney, Law Office
102 (Thomas Shaw, Managing Attorney).
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Before Hanak, Hairston and Walters, Administrative
Trademark Judges.
Opinion by Hanak, Administrative Trademark Judge:
IDG Books Worldwide, Inc. (applicant) seeks to
register on the Supplemental Register WEBMEDIA in typed
drawing form for “books in the field of computers,
communications and information technology.” The intent-to-
use application was filed on March 22, 1995. On February
12, 1997 applicant submitted an amendment to allege use,
along with three specimens showing use of its mark. The
specimens were the front cover of one of applicant’s books.
This specimen is reproduced below.
Ser. No. 74/650,282
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Ser. No. 74/650,282
The Examining Attorney has refused registration on the
basis that applicant’s “drawing displays the mark as
WEBMEDIA” and that “this differs from the display of the
mark on the specimen, where it appears as WEBMEDIA MAGIC.”
(Examining Attorney’s brief page 4). When the refusal to
register was made final, applicant appealed to this Board.
Applicant and the Examining Attorney filed briefs.
Applicant did not request an oral hearing.
The leading case dealing with a situation where an
applicant attempts to register what is arguably only a part
of its trademark is In re Servel, Inc., 181 F.2d 192, 85
USPQ257 (CCPA 1950). In that case, applicant sought to
register SERVEL despite the fact that the specimens of use
showed that the title of applicant’s periodical was SERVEL
INKLINGS. In reversing the refusal to register SERVEL per
se, the Court stated that “the courts in a proper case may
recognize the right to registration of one part of an
owner’s mark consisting of two parts.” 85 USPQ at 260.
In view of the holding in Servel, the Board has been
quite liberal in allowing applicants to register what are
arguably only portions of the trademarks shown on the
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specimens of use. For example, this Board allowed
registration of DUMPMASTER based upon the following
specimen of use:
In so doing, this Board stated that “there can be no
question but that the composite shown above constitutes two
distinct terms, each of which is capable of distinguishing
applicant’s goods from like goods, if they were to be used
separably as trademarks.” In re Dempster Bros., Inc., 132
USPQ 300 (TTAB 1961). In allowing registration of
DUMPMASTER per se, the Board was not troubled by the fact
that the words DEMPSTER and DUMPMASTER were totally
intertwined in that they shared the same large first letter
and the same large final letter (i.e. the D and the R).
In a more recent decision, this Board allowed the
registration of the mark TINEL-LOCK based upon the
following specimen of use:
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Ser. No. 74/650,282
In so doing, the Board was not concerned with the fact that
the mark sought to be registered (TINEL-LOCK) was joined
with hyphens to the model number (TRO6AI) and the generic
term (RING). In re Raychem Corp., 12 USPQ2d 1399 (TTAB
1989).
In stark contrast to the Dempster and Raychem cases,
in the present case the mark sought to be registered
(WEBMEDIA) is physically separated from the word MAGIC in
that the term WEBMEDIA is totally enclosed within a
rectangle. The word MAGIC is not within the same
rectangle. Indeed, the word MAGIC is not within any
rectangle or other enclosure. Moreover, extending from the
lower left portion of the rectangle enclosing the term
WEBMEDIA is a line which bypasses the word MAGIC and
directs the reader’s attention to the following words: “A
Practical Guide to Building Multimedia Web Sites.” These
words describe with greater particularity the nature of
applicant’s goods, namely, “books in the field of
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computers, communications and information technology.”
In view of the foregoing, we find that as depicted in
applicant’s specimens of use, the word WEBMEDIA clearly
stands apart from the word MAGIC. By seeking registration
on the Supplemental Register, applicant has arguably
conceded that the word WEBMEDIA is merely descriptive of
its “books in the field of computers, communications and
information technology.” However, if through use the word
WEBMEDIA acquires distinctiveness indicating applicant’s
particular books, then based upon the specimens of use, we
find that consumers would view WEBMEDIA per se as
applicant’s mark.
Decision: The refusal to register on the basis that
WEBMEDIA per se could not in the future function as
applicant’s mark based upon the specimens of use is
reversed.
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