in3media, Inc.

Trademark Trial and Appeal Board

Jun 1, 2011

No. 77171708 (T.T.A.B. Jun. 1, 2011)

Mailed: June 1, 2011

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re in3media, Inc.
________

Serial No. 77171708
_______

John C. McElwaine and Charles G. Zug of Nelson Mullins
Riley & Scarborough, L.L.P. for in3media, Inc.

Jason Paul Blair, Trademark Examining Attorney, Law Office
104 (Chris Doninger, Managing Attorney).
_______

Before Rogers, Chief Administrative Trademark Judge, and
Kuhlke and Wellington, Administrative Trademark Judges.

Opinion by Kuhlke, Administrative Trademark Judge:

Applicant, in3media, Inc., has filed an application to
register in standard characters RADIO-INFO.COM for services
ultimately identified as “providing online news and
information in the field of radio broadcasting; providing
on-line electronic bulletin boards for transmission of
messages among computer users concerning radio
entertainment, radio personalities and the radio industry”
in International Class 38 and “providing online news and
information in the field of radio entertainment
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Serial No. 77171708
2
personalities and radio entertainment programming” in
International Class 41.1
Registration was originally refused under Section
2(e)(1) of the Trademark Act, 15 U.S.C. §1052(e)(1), on the
basis that RADIO-INFO.COM is merely descriptive of
applicant’s services and it has not acquired
distinctiveness under Section 2(f) of the Trademark Act, 15
U.S.C. §1052(f). On May 6, 2009, the examining attorney
issued a new refusal on the basis that RADIO-INFO.COM is
generic and incapable of identifying applicant’s services
under Section 23(c) of the Trademark Act, 15 U.S.C. §1091.
Applicant maintains its position that it may register
RADIO-INFO.COM on the Principal Register and has appealed
the refusals based on genericness under Section 23(c) and
the failure to acquire distinctiveness under Sections
2(e)(1) and 2(f).
When a proposed mark is refused registration as
generic, the examining attorney has the burden of proving
genericness by “clear evidence." In re Hotels.com LP, 573
F.3d 1300, 91 USPQ2d 1532, 1533 (Fed. Cir. 2009). See also
In re Merrill Lynch, Pierce, Fenner & Smith, Inc., 828 F.2d

1 Application Serial No. 77171708, filed on May 3, 2007, based on
an allegation of first use and first use in commerce on June 1,
2000, under Section 1(a) of the Trademark Act, 15 U.S.C.
§1051(a), and asserting a claim of acquired distinctiveness under
Section 2(f) of the Trademark Act, 15 U.S.C. §1052(f).
Serial No. 77171708
3
1567, 4 USPQ2d 1141, 1143 (Fed. Cir. 1987); and In re Gould
Paper Corp., 834 F.2d 1017, 5 USPQ2d 1110, 1111 (Fed. Cir.
1987). The critical issue is to determine whether the
record shows that members of the relevant public primarily
use or understand the term sought to be registered to refer
to the category or class of goods or services in question.
H. Marvin Ginn Corp. v. International Ass’n of Fire Chiefs,
Inc., 782 F.2d 987, 228 USPQ 528, 530 (Fed. Cir. 1986); In
re Women's Publishing Co. Inc., 23 USPQ2d 1876, 1877 (TTAB
1992). Making this determination “involves a two-step
inquiry: First, what is the genus of goods or services at
issue? Second, is the term sought to be registered ...
understood by the relevant public primarily to refer to
that genus of goods or services?” Ginn, 228 USPQ at 530.
Evidence of the public’s understanding of a term may be
obtained from any competent source, including testimony,
surveys, dictionaries, trade journals, newspapers and other
publications. Merrill Lynch, 4 USPQ2d at 1143, and In re
Northland Aluminum Products, Inc., 777 F.2d 1556, 227 USPQ
961, 963 (Fed. Cir. 1985).
“An inquiry into the public’s understanding of a mark
requires consideration of the mark as a whole. Even if
each of the constituent words in a combination mark is
generic, the combination is not generic unless the entire
Serial No. 77171708
4
formulation does not add any meaning to the otherwise
generic mark.” In re 1800Mattress.com IP LLC, 586 F.3d
1359, 92 USPQ2d 1682, 1684 (Fed. Cir. 2009) quoting In re
Steelbuilding.com, 415 F.3d 1293, 75 USPQ2d 1420, 1421
(Fed. Cir. 2005).
Finally, “[t]he test is not only whether the relevant
public would itself use the term to describe the genus, but
also whether the relevant public would understand the term
to be generic.” 1800Mattress.com, 92 USPQ2d at 1685
(“Thus, it is irrelevant whether the relevant public refers
to online mattress retailers as ‘mattresses.com.’ Instead,
as the Board properly determined, the correct inquiry is
whether the relevant public would understand, when hearing
the term ‘mattress.com,’ that it refers to online mattress
stores.”)
We find that the genus of services at issue in this
case is adequately defined by applicant’s identification of
services, specifically, “providing online news and
information in the field of radio broadcasting; providing
on-line electronic bulletin boards for transmission of
messages among computer users concerning radio
entertainment, radio personalities and the radio industry
... and “providing online news and information in the field
of radio entertainment personalities and radio
Serial No. 77171708
5
entertainment programming.” Thus, the term RADIO-INFO.COM
is generic if the relevant public understands it to refer
to such online information services. See 1800Mattress.com,
92 USPQ2d at 1684 (genus of services is “online retail
store services in the field of mattresses, beds, and
bedding ... [a]ccordingly, the mark is generic if the
relevant public understands MATTRESS.COM to refer to such
online services.”)
Applicant asserts that it provides “two different
genera of services ... (1) the online provision of news
and information (in the fields of the radio broadcasting
industry, radio entertainment personalities, and radio
entertainment programming); and (2) the provision of online
electronic bulletin boards to enable the relevant public to
discuss topics in the aforementioned fields.” Supp. Br.
pp. 2-3. Applicant argues that “a word that has been used
on a wide range of different types of products or services
that are not within the same species may be less likely to
be considered generic.” Id. The essence of applicant’s
services is the provision of news and information in the
field of radio by either the applicant providing
information in the field of radio broadcasting, radio
personalities and radio entertainment programming (the news
and information services in International Classes 38 and
Serial No. 77171708
6
41) or the applicant providing the means by which others
provide information to each other in the field of radio
(the electronic bulletin board services in International
Class 38). Thus, to the extent the identification of
services includes “two genera” they do not constitute “a
wide range of different types” of services. Moreover, even
if we were to find that the term is only generic for the
provision of online information, that is sufficient to
refuse registration for all of the class 38 services. In
re Analog Devices, Inc., 6 USPQ2d 1808 (TTAB 1988)
(registration is properly refused where term is generic for
one or more, but not all, items in an application). See
also In re Eddie Z’s Blinds and Drapery, Inc., 74 USPQ2d
1037, 1042 (TTAB 2005) (BLINDSANDDRAPERY.COM generic for
retail store services featuring blinds, draperies, and
other wall coverings, conducted via the Internet; “So long
as BLINDSANDDRAPERY.COM is generic for one of the recited
services, it must be refused registration. It need not be
shown to be generic for each of the recited services.”)
Accordingly, the term RADIO-INFO.COM is generic if the
relevant public understands it to refer to such online
information services. 1800Mattress.com, 92 USPQ2d at 1684.
Turning to the second inquiry, the examining attorney
and applicant did not specifically delineate the “relevant
Serial No. 77171708
7
public”; however, in its brief, applicant stated that
“Applicant is a provider of news, information, and bulletin
boards primarily targeted to persons in the radio
broadcasting industry as well as its fans.” Br. p. 11.
Thus, the relevant public includes people in the industry
and the general public interested in radio broadcasting,
personalities and programming. The examining attorney does
not address this issue and the record does not point to a
different conclusion.
Highlighting the various references to “radio,” “news”
and “information” in the identification of services, the
examining attorney argues that applicant’s “own recitation
of services describes the common commercial or generic name
for the services.” Br. p. 4. In addition, the examining
attorney argues that the term “‘INFO’ is a commonly-used
abbreviation for ‘information’ [and] the definition of the
term ‘NEWS’ is ‘information.’” Finally, the examining
attorney argues that the top-level domain .COM “merely
indicates an Internet address and adds no source-
identifying significance.” Br. p. 5. Having determined
that the separate parts of the mark are generic, the
examining attorney also argues that the separate terms,
when combined, are not incongruous and do not evoke a
Serial No. 77171708
8
unique commercial impression but rather retain their
generic significance. Specifically, he argues:
Combining the terms, because ‘RADIO’ is generic
for the topic of Applicant’s services, namely,
‘radio broadcasting, radio entertainment, radio
personalities and the radio industry,’ and ‘radio
entertainment personalities and radio
entertainment programming,’ as well as ‘INFO’
being generic for ‘news’ and ‘information,’ and
‘.COM’ not adding any source-identifying
significance for online services, the combined
expression is generic and incapable of denoting
source. As attached in previous Office actions,
sufficient evidence exists to demonstrate that
‘RADIO INFO’ and ‘RADIO INFORMATION’ is widely
used to describe the class or genus of services
providing news and information relating to radio
operation, broadcasting, and entertainment.

Br. p. 9.

In support of his argument that RADIO-INFO.COM is
generic, he submitted various dictionary definitions,
including the following:
INFO – n. informal Information; abbreviation;

INFORMATION – n. facts provided or learned about
something or someone; and

RADIO – n. the activity or industry of
broadcasting sound programs to the public.

The New Oxford American Dictionary (2d ed. 2005).2

In addition, he submitted printouts from several
third-party websites using the terms “radio” and
“information” or “info” in conjunction with providing
Serial No. 77171708
9
information in the field of radio (e.g., ham radio
information) over the Internet. A few examples are set
forth below, including examples that use the words “radio”
and “info” or “information” in their web addresses
(emphasis added):
Welcome to the S-Meter Website. Check your
signal and listen to others on remote receivers.
Read thousands of pages of ham radio information.
Download virus-free radio-related design
programs. (Smeter.net);

Hawaii Ham Radio Information Pages (the website
provides information about ham radio usage)
(chem.hawaii.edu/uham/);

Radio Information ... What is a radio format? A
radio format, or programming format, or
programming genre refers to the overall content
broadcasting over a radio station. Some stations
broadcast multiple genres on set schedule. Over
the years, formats have evolved and new ones have
been introduced. ... Contemporary hit music
radio/CHR Dubbed mainstream pop music radio, CHR
(contemporary hit radio) stations play a variety
of popular music of today and the past few years
(or decades).
(www.houseoffantasia.com/unradio.html);

Research Triangle Amateur Radio Info ... Feel
free to distribute this info however and wherever
you want. Of course nothing is guaranteed to be
correct but it is usually close. Local Ham Radio
Clubs and Organizations Local Ham radio Related
Businesses (www.virhistory.com);

Community Radio Info and Links – Links and
information about Community Radio Stations across
the United States
(www.eagle973.com/community.html);

2 See also, The American Heritage Dictionary of the English
Language (4th ed.) INFO n. informal Information.
Serial No. 77171708
10

Radio Info For Listeners Station Finder Broadcast
Schedules Listener Comments; For Broadcasters
Promotional Resources Satellite Feed Information
Broadcaster TTP Broadcaster FAQ’s
(www.truthforlife.org/radio-info/);

The Center for Radio Information The Center for
Radio Information was born in 1977 to perform a
computer analysis of leading radio stations for
the magazine “TV-Radio Age” ... Today, CRI
furnishes data on both radio and TV stations for
the SmartPlus computer media buying service of
Media Resources Plus. (www.the-cri.com);

The Radio Information Board Your source for radio
information. (Radioinfoboard.com); and

Radio Information & Resource Page General Radio
Information Batlabs – Motorola Radio Discussion
Batlabs- Radio Information (www.jtx203.com/1-
RadioInformation.html).

We find RADIO-INFO.COM to be a compound term and
properly analyzed under the Gould analysis. Gould, 5
USPQ2d at 1111-1112; In re Wm. B. Coleman Co., Inc., 93
USPQ2d 2019 (TTAB 2010); In re DNI Holdings Ltd., 77 USPQ2d
1435 (TTAB 2005); Eddie Z’s, 74 USPQ2d 1037. The
dictionary definitions establish that each component is
generic for significant aspects of the services. RADIO is
the generic term for the field of the services and INFO is
the generic term for the type of services. The examples
from the Internet serve to illustrate the public’s
understanding of “radio” and “info” or “information” used
in combination to refer to services that provide
Serial No. 77171708
11
information in the field of radio. See 1800Mattress, 92
USPQ2d at 1684 and In re Reed Elsevier Properties Inc., 482
F.3d 1376, 82 USPQ2d 1378 (Fed. Cir. 2007). Further, the
inclusion of the TLD .com in this case does not present an
“exceptional circumstance” and, as such, is wholly without
source-identifying significance. Eddie Z’s, 74 USPQ2d at
1042. Thus, we conclude that RADIO-INFO.COM to be “no more
than the sum of its parts.” 1800Mattress.com, 92 USPQ2d at
1684.
While it could be argued that unlike MATTRESS.COM, the
proposed mark here includes three components “radio” “info”
and “.com” and, therefore, “bears closer conceptual
resemblance to a phrase than a compound word,” the evidence
of record includes examples of use of the composite RADIO
INFO and RADIO INFORMATION as a whole. In re American
Fertility Society, 188 F.3d 1341, 51 USPQ2d 1832, 1837
(Fed. Cir. 1999). As noted above, the examples from the
Internet provide support for the public’s understanding of
“radio” and “info” or “information” used in combination to
refer to services that provide information in the field of
radio.
In view thereof, we find that under both the Gould and
the American Fertility standards RADIO-INFO.COM is generic
Serial No. 77171708
12
for applicant’s services which include the provision of
information in the field of radio over the Internet.
Applicant asserts that the “Examining Attorney
essentially argues that anything related to the word
“radio” could be included within Applicant’s recitation of
services [and] this argument is flawed and disingenuous.”
Reply Br. p. 4. To the extent this point was argued, it
does not properly frame the issue. The point is that the
terms RADIO and INFO are generic for the services of
providing information in the field of radio, including
those specified in applicant’s identification. The fact
that some examples pertain to other types of radio
information (e.g., ham radio) simply serve as examples
within that broad field of radio information. Moreover,
certain examples do provide information regarding radio
broadcasting and entertainment. See, e.g., the excerpts
from www.houseoffantasia.com; truthforlife.org; and
www.the-cir.com.
Applicant points to its survey conducted to show
acquired distinctiveness. Overall, we find this survey to
be lacking in probative value. The participants in the
survey were limited to people already on applicant’s
website which has the effect of skewing the results in
applicant’s favor. After the participants have already
Serial No. 77171708
13
come to applicant’s website they were asked the following
questions:
Do you associate RADIO-INFO.COM with the website
of one, or more than one company?

Do you believe RADIO-INFO.COM to be the brand
name of the website located at the URL www.radio-
info.com?

The survey did not follow the “Teflon” methodology
discussed in E.I. du Pont deNemours & Co. v. Yoshida Int’l,
Inc., 393 F. Supp. 502, 185 USPQ 597 (EDNY 1975). For
example, the survey does not adequately reflect the
difference between a brand name and a domain name.
Applicant argues that 80% of the participants of the
survey “associated RADIO-INFO.COM as the website of one
company [and] 481 of 515 people who participated in the
survey answered that they believed RADIO-INFO to be the
brand name of the website.” Supp. Br. p. 7. Aside from
the serious flaws in the survey, as noted in Hotels.com
“consumers may automatically equate a domain name with a
brand name.” In re Hotels.com LP, 573 F.3d 1300, 91 USPQ2d
1532, 1536, quoting In re Hotels.com L.P., 87 USPQ2d 1100,
1109 (TTAB 2008).
Applicant also points to several third-party
registrations for marks containing the term “INFO”
registered on the Supplemental Register or on the Principal
Serial No. 77171708
14
Register based on a showing of acquired distinctiveness
under Section 2(f). While the Office strives for
consistency, the decisions made to allow third-party
registrations are not binding on the Board. As stated in
In re Nett Designs Inc., 57 USPQ2d 1564, 1566 (Fed. Cir.
2001) (internal citation omitted):
The Board must decide each case on its own
merits. Even if some prior registrations had
some characteristics similar to Nett Designs’
application, the PTO’s allowance of such prior
registrations does not bind the Board or this
court. Needless to say, this court encourages
the PTO to achieve a uniform standard for
assessing registrability of marks. Nonetheless,
the Board (and this court in its limited review)
must assess each mark on the record of public
perception submitted with the application.
Accordingly, this court finds little persuasive
value in the registrations that Nett Designs
submitted to the examiner or in the list of
registered marks Nett Designs attempted to submit
to the Board.

Applicant argues that the cases dealing with magazines
are analogous and we should treat online information
services similarly. See In re Waverly Inc., 27 USPQ2d
1620, 1622-1623 (TTAB 1993). It has been recognized that
titles of magazines present a particular dilemma because
“unlike most goods whose appearance will convey their
nature, periodicals must depend principally on their titles
to convey their character [and c]ourts have been reluctant
to find a magazine title generic, perhaps in part because
Serial No. 77171708
15
the magazines in such cases were not literally the class
title designated but were about that class.” Id. quoting
CES Publishing Corp. v. St. Regis Publications, Inc., 531
F.2d 11, 188 USPQ 612, 615 (2d Cir. 1975). Here, a domain
name is an address and when used as a trademark, it is not
a title. Moreover, in this case, RADIO-INFO.COM, is the
service, namely, online radio information. This is even
more directly generic than HOTELS.COM where the term hotel
simply named a key aspect of the information/reservation
services. Hotels.com LP, 91 USPQ2d 1532. As the examining
attorney herein stated: “[A] magazine is not the same
thing as information itself. Applicant’s service of
providing information, however, is the same thing as the
actual information itself. Because there is an extra step
of separation between a magazine and the information
itself, the In re Waverly dicta does not apply to the
present case.” Br. p. 9. The Board has not extended the
specific treatment of magazine titles in a genericness
analysis to domain names for online information services
and we decline to do so now.
Finally, the printouts of articles referencing
applicant’s website, attached to applicant’s March 4, 2008
Response, do not present a mixed record sufficient to rebut
the examining attorney’s prima facie showing that the term
Serial No. 77171708
16
RADIO-INFO.COM is generic for applicant’s services.
Merrill Lynch, 4 USPQ2d at 1141. See, e.g., “Newsday”
(November 27, 2007) (Shock jock gets new job ... “You’d
think the bridges would be burned at a couple places.” Tom
Taylor, news editor at the trade industry Web site Radio-
Info.com, said. “You wonder where else they could go.”);
and “The Houston Chronicle” (November 8, 2007) (In battle
of news stations, it may not be about quality; Though the
race is close between Channels 11 and 13, what’s on before
broadcast matters ... Chris Baker’s dismissal from Clear
Channel’s KPRC (950 AM) and KTRH (740 AM) continues to be
the buzz. It was the most-viewed thread of the day on the
message boards at www.radio-info.com.).
In short, applicant’s evidence does not rebut the
evidence establishing that the separate terms in
combination have a meaning identical to the common meaning
of the separate components. Hotels.com, 91 USPQ2d at 1537.
We are satisfied from the evidence of record that
RADIO-INFO.COM is a generic designation within the
guidelines set forth in Ginn and applied in similar
circumstances. In other “.com” cases, the USPTO has
presented evidence of other similar uses of the .com
combination and the Federal Circuit has approved of such
evidence. See 1800Mattress.com, 92 USPQ2d 1682
Serial No. 77171708
17
(MATTRESS.COM generic for online retail stores in the field
of mattresses); Hotels.com, 91 USPQ2d 1532 (HOTELS.COM
generic for online reservation services); and Reed
Elsevier, 82 USPQ2d 1378 (LAWYERS.COM generic for provision
of online information exchange in the field of law). While
the record in this case may not include the same number of
third-party uses of RADIO and INFO or INFORMATION, we find
that they are sufficient, at a minimum, to corroborate the
evidence of the plain meaning of the terms. It is clear
from this record that the relevant public “would readily
understand the term to identify a commercial website
providing” information about the radio industry. Reed
Elsevier, 82 USP2d 1378.
Because we find RADIO-INFO.COM generic, we do not
address applicant’s arguments that the designation is only
merely descriptive and that there is sufficient acquired
distinctiveness to allow registration under Section 2(f).
Decision: The refusal of registration on the ground
of genericness under Section 23 is affirmed.