Intermedia Advertising Group, Inc.

Trademark Trial and Appeal Board

Mar 19, 2004

No. 76092228 (T.T.A.B. Mar. 19, 2004)

Mailed: March 19, 2004
Paper No. 14
GDH/gdh
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Intermedia Advertising Group, Inc.
________
Serial No. 76092228
_______
Francie R. Gorowitz of O'Melveny & Myers LLP for Intermedia
Advertising Group, Inc.
Idi Aisha Clarke, Trademark Examining Attorney, Law Office 105
(Thomas G. Howell, Managing Attorney).
_______
Before Quinn, Hohein and Hairston, Administrative Trademark
Judges.
Opinion by Hohein, Administrative Trademark Judge:
Intermedia Advertising Group, Inc. has filed an
application to register the mark "REWARDTV" for "business
marketing and consulting services; conducting business research
and surveys, promoting the sale of goods and services of others
through promotional contests on the Internet; and providing a
website which features advertisements for the goods and services
of others on the Internet" in International Class 35 and
"entertainment services, namely, providing an on-line computer
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT
OF THE TTAB
Ser. No. 76092228
2
game; [and] entertainment services, namely, providing information
on-line about television programs" in International Class 41.1
Registration has been finally refused under Section
2(e)(1) of the Trademark Act, 15 U.S.C. §1052(e)(1), on the
ground that, when used in connection with applicant's services,
the mark "REWARDTV" is merely descriptive of them.
Applicant has appealed. Briefs have been filed, but an
oral hearing was not requested. We reverse the refusal to
register.
It is well settled that a mark is considered to be
merely descriptive of goods or services, within the meaning of
Section 2(e)(1) of the Trademark Act, if it forthwith conveys
information concerning any significant ingredient, quality,
characteristic, feature, function, purpose, subject matter or use
of the goods or services. See, e.g., In re Gyulay, 820 F.2d
1216, 3 USPQ2d 1009 (Fed. Cir. 1987) and In re Abcor Development
Corp., 588 F.2d 811, 200 USPQ 215, 217-18 (CCPA 1978). It is not
necessary that a mark describe all of the properties or functions
of the goods or services in order for it to be considered to be
merely descriptive thereof; rather, it is sufficient if the mark
describes a significant attribute or idea about them. Moreover,
whether a mark is merely descriptive is determined not in the
abstract but in relation to the goods or services for which
registration is sought, the context in which it is being used or
1 Ser. No. 76092228, filed on July 19, 2000, based upon an allegation
of a bona fide intention to use such term in commerce and subsequently
amended to allege, as to the services in both classes, a date of first
use anywhere and in commerce of August 1, 2001.
Ser. No. 76092228
3
is intended to be used on or in connection with those goods or
services and the possible significance that the mark would have
to the average purchaser of the goods or services because of the
manner of such use. See In re Bright-Crest, Ltd., 204 USPQ 591,
593 (TTAB 1979). Thus, "[w]hether consumers could guess what the
product [or service] is from consideration of the mark alone is
not the test." In re American Greetings Corp., 226 USPQ 365, 366
(TTAB 1985).
However, a mark is suggestive if, when the goods or
services are encountered under the mark, a multi-stage reasoning
process, or the utilization of imagination, thought or
perception, is required in order to determine what attributes of
the goods or services the mark indicates. See, e.g., In re Abcor
Development Corp., supra at 218, and In re Mayer-Beaton Corp.,
223 USPQ 1347, 1349 (TTAB 1984). As has often been stated, there
is a thin line of demarcation between a suggestive mark and a
merely descriptive one, with the determination of which category
a mark falls into frequently being a difficult matter involving a
good measure of subjective judgment. See, e.g., In re Atavio, 25
USPQ2d 1361 (TTAB 1992) and In re TMS Corp. of the Americas, 200
USPQ 57, 58 (TTAB 1978). The distinction, furthermore, is often
made on an intuitive basis rather than as a result of precisely
logical analysis susceptible of articulation. See In re George
Weston Ltd., 228 USPQ 57, 58 (TTAB 1985).
Applicant, in its response to the mere descriptiveness
refusal raised in the initial Office action, has acknowledged
that its "services include the hosting of an entertainment based
Ser. No. 76092228
4
web-site" and that "some of the content of the web-site may
relate to television ... and to games and promotions, which may
result in the granting of rewards, possibly rendering the
individual words [REWARDS and TV] descriptive of features of the
services." Applicant maintains, however, that the combination of
such words "creates a compound term which is not merely
descriptive" because, contrary to the Examining Attorney's
contention, its "services do not consist of providing television
related awards." In particular, as applicant further explains by
way background in its main brief:
Applicant conducts marketing and
advertising services through a website that
provides an on-line computer game. To play
the game, consumers are required to watch
specific television shows and answer a series
of questions about the shows. They are
awarded points for correct answers. The
consumers can then redeem their points by
entering sweepstakes to win prizes, which may
not be related to TV, e.g. payment of an
exorbitant phone bill, tickets to movie
theaters, and gift cards for department
stores. On the website, Applicant advertises
its clients' products, which may also be
awarded as prizes and offers to send further
information about such products to the
consumers.
In view thereof, and while relying principally on a
case which is not citable precedent,2 applicant argues in its
main brief that it "has created a word combination that is not
recognizable as describing a particular characteristic of
Applicant's services" inasmuch as "[t]here is no such thing as a
'rewardtv' nor is there any action that can be termed a
2 In re In re On Technology Corp., 41 USPQ2d 1475 (TTAB 1996), which is
designated as an "Unpublished" decision and thus "is not citable as
precedent of the TTAB."
Ser. No. 76092228
5
'rewardtv.'" Applicant therefore maintains that the mark
"REWARDTV" is suggestive rather than merely descriptive of its
services because "imagination, thought or perception is required
to reach a conclusion about Applicant's services." Any doubt in
this regard, applicant adds, should be resolved in its behalf and
its mark should be published for opposition in accordance with
the Board's established practice.3
The Examining Attorney, on the other hand, asserts that
"no amount of imagination, thought or perception is required to
determine the nature of the services" because "[t]he words REWARD
and TV refer to rewards or prizes given to those who watch TV."
In consequence thereof, the Examining Attorney insists that the
mark "REWARDTV" is merely descriptive of applicant's services
because, when used in connection therewith, the mark "conveys to
consumers that the applicant offers recompense in the form of
merchandise to people who watch particular television programs."
In support thereof, the Examining Attorney cites the
definitions of the following words which are of record from The
American Heritage Dictionary of the English Language (3rd ed.
1992): (i) "reward," which is defined in relevant part as "1.
Something given or received in recompense for worthy behavior
...."; (ii) "TV," which is set forth as denoting "Television";
and (iii) "television," which is listed as variously meaning "1.
The transmission of visual images of moving and stationary
objects, generally with accompanying sound, as electromagnetic
3 See, e.g., In re Conductive Systems, Inc., 220 USPQ 84, 86 (TTAB
1983); In re Morton-Norwich Products, Inc., 209 USPQ 791 (TTAB 1981);
and In re Gourmet Bakers, Inc., 173 USPQ 565 (TTAB 1972).
Ser. No. 76092228
6
waves and the reconversion of receive waves into visual images.
2. a. An electronic apparatus that receives electromagnetic waves
and displays the reconverted images on a screen. b. The
integrated audible and visual content of the electromagnetic
waves received and converted by such an apparatus. 3. The
industry of producing and broadcasting television programs." In
addition, the Examining Attorney refers to applicant's specimens
of use, which are printouts from its website, and argues that
"applicant explains the services by using the terms in the mark
descriptively."
As examples of the above, the Examining Attorney points
to the following excerpts, among others, which appear on the
specimens of use for applicant's entertainment services in
International Class 41 (bold in original):
"What is RewardTV? It's the FREE TV
Trivia site that awards cash & prizes for
watching TV!"; and
"The RewardTV Rewards Program (the
'Program') is open to members of RewardTV ...
and is subject to the following Rewards
Program Rules. ....
....
How to Play RewardTV Games
....
To play, go to http://www.rewardtv.com
and sign in using your email address and
password. Click on the 'Play' button. Under
'Active Shows,' click on a Primetime Show
which you watched during the preceding 19-27
hours, depending on the time zone in which
you reside. .... You will then be asked a
series of multiple-choice trivia and survey
questions about that Primetime Show and the
commercial advertising that aired during its
broadcast. .... Use your mouse to click on
the answer you wish to submit. For each
Ser. No. 76092228
7
correct answer you submit for a question
about a Primetime Show, you will receive 100
TV Points. .... TV Points will not be
deducted for incorrect answers. In order to
complete a RewardTV Game, you must answer all
questions in sequential order. All submitted
answers are final. After you have finished
playing, the amount of TV Points you earned
will be displayed and automatically credited
to your Account.
....
How to Redeem TV Points
....
TV Points in your Account may be
redeemed only for available products and/or
services ('Rewards') listed in the Rewards
Catalog ('Rewards Catalog') on the Site,
provided that your Account contains the
minimum number of TV Points required for
redemption of the requested Reward. ....
REWARDS ARE AVAILABLE FOR REDEMPTION IN
LIMITED QUANTITIES AND ON A FIRST COME, FIRST
SERVE BASIS. .... REWARDTV IS NOT
RESPONSIBLE FOR, AND MAKES NO GUARANTEE
ABOUT, THE AVAILABILITY OF ANY REWARD AT ANY
GIVEN TIME INCLUDING BUT NOT LIMITED TO
REWARDS LISTED IN THE REWARDS CATALOG ....
....
Reward Fulfillment
All Rewards will be fulfilled within
approximately 6-8 weeks from submission of
the Redemption Request Form ..., unless
otherwise specified in the rules and
restrictions listed in the Rewards Catalog
for a particular Reward. ANY REWARDS TO BE
FULFILLED TO MEMBERS UNDER THE AGE OF 18 MAY
BE ... FULFILLED IN THE NAME OF THE MEMBER'S
PARENT OR GUARDIAN. REWARDTV DOES NOT
GUARANTEE FULFILLMENT WITHIN THE ESTIMATED
TIME AND IS NOT LIABLE FOR ANY FAILURE TO
FULFILL A REWARD WITHIN THE ESTIMATED TIME.
....
ALL REWARDS ARE PROVIDED SOLELY BY
VENDORS. REWARDTV MAKES NO REPRESENTATION OR
WARRANTY IN ANY RESPECT IN CONNECTION WITH
ANY REWARD. A VENDOR MAY SUBSTITUTE A REWARD
WITH A DIFFERENT REWARD OF EQUAL OR GREATER
VALUE. .... REWARDS ARE NOT TRANSFERABLE OR
SUBSTITUTABLE FOR CASH OR TV POINTS.
....
Tax Information
All federal, state, local, and other
taxes on a Reward are the sole responsibility
of the Member who redeems that Reward."
Ser. No. 76092228
8
Similarly, the specimens of use for applicant's various
business marketing, research, survey, consulting and promotional
services, including the providing of an Internet website which
features advertisements for goods and services, mention "Our
latest winners -- and the cool stuff they got" and list "This
Week's Top Rewards" as "Pay My Telephone Bill," "National
Amusements/Multiplex Cinemas," "$50 Wal-Mart® Gift Card," "Canon
Hi 8mm Camcorder" and "Olympus Digital Camera." Other excerpts
from applicant's website, which were made of record with the
final refusal to register, refer to applicant's "RewardTV"
services as "the place where you get stuff for watching TV" and
"the frequent flyer program for TV lovers." Moreover, as the
Examining Attorney points out, a "page of the applicant's website
has a section entitled 'REWARDS for watching' where some of the
reward links are titled, 'Hollywood Insider,' 'Food Me,' and 'Pay
My Bills.'"
With respect to applicant's argument that, even if the
terms "REWARD" and "TV" are individually descriptive of its
services, the combination thereof into the mark "REWARDTV" is
nonetheless suggestive of such services, the Examining Attorney
correctly concedes that "a mark which combines descriptive terms
may be registrable if the composite creates a unitary mark with a
separate, nondescriptive meaning," citing In re Sun Microsystems
Inc., 59 USPQ2d 1084 (TTAB 2001). The Examining Attorney
contends, however, that in this case "no separate, nondescriptive
meaning is formed, arguing that:
Ser. No. 76092228
9
No novel spellings or unique juxtapositions
are apparent in the mark to support a finding
of a nondescriptive or suggestive meaning.
The combination of REWARD and TV does not
lend itself to any other meaning or
significance other than identifying a quality
or feature of the services, namely that
rewards are given for watching TV.
In order to know who should be given
rewards, the applicant must be able to
determine who has actually watched the
television programs. One way to track
viewers is to have them provide answers to
questions that only a person who watched the
program would know. The fact that the
applicant chose a trivia game as a method of
identifying viewers does not amount to a
series of questions or steps that would
invoke imagination, thought or perception in
a consumer[']s mind such that it would make
the mark nondescriptive. The mark is not
suggestive merely because the trivia game
feature of the services is not part of the
mark. It is not necessary that a term
describe all of the purposes, functions,
characteristics or features of the services
to be merely descriptive. It is enough if
the term describes one attribute of the
services. In re H.U.D.D.L.E., 216 USPQ 358
(TTAB 1982). Ultimately, the mark REWARDTV
describes at least one feature of the
applicant's services, namely, that viewers
get rewards for watching television.
While we agree with the Examining Attorney that the
term "REWARD" describes a significant feature or characteristic
of applicant's services in that such term designates any of the
prizes and awards which participants in applicant's services are
eligible to win if they correctly answer questions concerning
television programs they have viewed and that the term "TV"
describes the subject matter of such questions, we concur with
applicant that the mark "REWARDTV" is suggestive rather than
merely descriptive of its services. Literally, none of
applicant's services consists of or involves the rewarding of
Ser. No. 76092228
10
television or a reward for television, although plainly such
services include, as a significant aspect thereof, providing
prizes and awards as rewards to viewers of certain television
programs who correctly answer trivia questions about the show or
shows they have watched. While such rewards clearly appear to be
the inducement by which applicant, through the television show
trivia game it provides as entertainment services on its website,
is able to conduct market research and advertise various goods
and services of others, we are constrained to agree with
applicant that it requires a multi-step reasoning process,
involving thought and perception, to arrive at the Examining
Attorney's conclusion that a feature or characteristic of
applicant's services which is described by the mark "REWARDTV" is
that "viewers get rewards for watching television." Instead, as
applicant persuasively emphasizes in its reply brief, it is
actually the case that "consumers are required to watch specific
television shows and answer a series of questions about the
shows" (italics in original). Strictly speaking, therefore,
"consumers are not rewarded for watching television, but rather,
they are eligible to be rewarded for proper responses to trivia
questions" based on watching such shows. Thus, in order to reach
the Examining Attorney's conclusion, a mental process involving
imagination, thought and perception is "required to associate
Applicant's mark with features of Applicant's services," which is
indicative of a suggestive mark instead of one which is merely
descriptive.
Ser. No. 76092228
11
Stated otherwise, there is just enough ambiguity in the
mark "REWARDTV" that it fails to convey forthwith information
concerning a significant characteristic or feature of applicant's
services. The immediacy required for applicant's mark to be
considered merely descriptive of its services is therefore
lacking.
Finally, because at the very least we have doubt that
applicant's mark would immediately convey a characteristic or
feature of its services, we resolve such doubt, in accordance
with the Board's settled practice, in favor of the publication of
applicant's mark for opposition.
Decision: The refusal under Section 2(e)(1) is
reversed.