IMARK Communi-cations, Inc.

Trademark Trial and Appeal Board

Apr 19, 2001

No. 75769784 (T.T.A.B. Apr. 19, 2001)

4/19/01
Paper No. 14
RFC
UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re IMARK Communications, Inc.
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Serial No. 75/769,784
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James C. Wray for IMARK Communications, Inc.
M. Catherine Faint, Trademark Examining Attorney, Law
Office 103 (Daniel Vavonese, Acting Managing Attorney).
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Before Cissel, Quinn and Rogers, Administrative Trademark
Judges.
Opinion by Cissel, Administrative Trademark Judge:
On August 6, 1999, applicant filed the above-
referenced application to register the mark shown below
on the Principal Register for “providing conferences and
expositions,” in Class 41. The application was based on
applicant’s claim of use of the mark in interstate commerce
in connection with the services since June of 1998.
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF
THE TTAB
Ser No. 75/769,784
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The Examining Attorney found the recitation of
services to be indefinite and required amendment thereto.
Additionally, citing Section 6 of the Lanham Act, she
required applicant to disclaim the terms “BROADBAND YEAR”
apart from the mark as shown.
Applicant amended the application to recite its
services as “arranging and conducting business conferences
and expositions,” in Class 35, but refused to enter the
required disclaimer.
The Examining Attorney repeated and made final the
disclaimer requirement, attaching to her second Office
Action dictionary definitions of “broadband” as an
adjective meaning “of, relating to, or having a wide band
of electromagnetic frequencies: broadband communications”;
and of “year” as meaning “a period of approximately the
duration of a calendar year…” The Examining Attorney
quoted the following from the advertisement submitted as a
specimen of use with the application: “In just five days
under one roof you’ll discover how to integrate multiple
broadband technologies… for managing and growing network
bandwidth.” The cover of the brochure characterizes
applicant’s conference as “The Event for High-Bandwidth
Networking.” The Examining Attorney reasoned that the
words “broadband” and “year” are “merely descriptive of
Ser No. 75/769,784
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applicant’s services, namely a conference or exposition
relating to uses for wide band electromagnetic frequencies
held during a specific period of time.” (February 28, 2000
Office Action, p. 2).
Applicant responded to the final refusal with a
request for reconsideration. In support of its position,
applicant included an advertisement for a conference to be
held in June of 2000. The mark sought to be registered is
used throughout this publication in reference to
applicant’s services. The heading on the cover of this
advertisement is “BROADBAND TECHNOLOGY: What’s Next?” The
language along the bottom of thecover of the brochure
characterizes applicant’s conference as “THE MAIN EVENT FOR
BUILDING, PROVIDING, AND SELLING BROADBAND SERVICES.”
Inside the brochure, a headline touts applicant’s
conference as “The World’s Only 100% Broadband Exposition.”
The Examining Attorney was not persuaded by
applicant’s evidence or arguments. The final requirement
for a disclaimer of “BROADBAND YEAR” was maintained.
Applicant again requested reconsideration of the
requirement for a disclaimer. Included with applicant’s
second request for reconsideration was a copy of a page
from applicant’s Website. The first line on this document
states that the eighth annual BROADBAND YEAR 2000
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conference is “the main event for building, providing, and
selling broadband services.” Under the heading “The Future
of Broadband is in Your Hands,” a box contains the
following message: “Attention Communications & Network
Professionals: Broadband Connections is (sic) for you!
Click here.”
Applicant timely filed a Notice of Appeal, which was
followed by an appeal brief. The Examining Attorney timely
filed her responsive brief on appeal, and applicant filed a
reply brief. Applicant did not request an oral hearing
before the Board.
The sole issue before us in this appeal is the
propriety of the requirement for a disclaimer of “BROADBAND
YEAR” apart from the mark as a whole. Based on careful
consideration of the record in this application and the
arguments and authorities on this issue, we find that these
terms are merely descriptive in connection with applicant’s
services and therefore that they must be disclaimed.
The underlying statutory rules which govern this
appeal are not in dispute. If a word immediately and
forthwith provides prospective purchasers or users of the
services with information about a significant feature,
characteristic, purpose or function of the services, it is
merely descriptive of the services, and hence is
Ser No. 75/769,784
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unregistrable under Section 2(e)(1) of the Lanham Act. In
re Abcor Development Corp., 588 F.2d 811, 200 USPQ 215,
217-218, (CCPA 1978). Section 6(a) of the Act provides
that an applicant may be required to disclaim an
unregistrable component of a mark which is otherwise
registrable. Therefore, if the words the Examining
Attorney has required applicant to disclaim are merely
descriptive of the services recited in the application, the
requirement to disclaim them is appropriate.
The word “BROADBAND” is merely descriptive of
applicant’s services because a significant feature or
characteristic of applicant’s conferences is that they
are focused on broadband technology and broadband services.
Both advertisements of record, as noted above, make it
abundantly clear that the subject of applicant’s
conferences is broadband technology. The requirement for
applicant to disclaim this descriptive term is therefore
plainly appropriate.
When the word “YEAR” is combined with the descriptive
word “BROADBAND,” the resulting combination is also merely
descriptive of applicant’s services within the meaning of
Section 2(e)(1) of the Act. Applicant’s use of the word
“YEAR” as part of its service mark appears to be in
reference either to the particular calendar year in which
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applicant’s conference is being conducted or to
developments in the broadband field in the year since the
previous conference was held. It is not necessarily clear
which one of these meanings is conveyed by the mark, but in
either case, the combined term, “BROADBAND YEAR,”
immediately and forthwith conveys significant information
concerning applicant’s services, namely that the subject of
the conferences applicant conducts is a year in the
development of broadband technology.
DECISION: The requirement for a disclaimer of
“BROADBAND YEAR” is affirmed. Applicant is allowed thirty
days from the mailing date of this ruling in which to file
the required disclaimer under Trademark Rule 2.142(g). If
applicant does so, the decision affirming the requirement
will be set aside.
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