International Data Group, Inc.

Trademark Trial and Appeal Board

Sep 22, 1998

No. 74695276 (T.T.A.B. Sep. 22, 1998)

Paper No. 11
CEW
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF THE
TTAB SEPT 22, 98
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
___________
Trademark Trial and Appeal Board
___________
In re International Data Group, Inc.
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Serial No. 74/695,276
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Mark B. Harrison of Spencer & Frank for applicant.
Jennifer M. B. Krisp, Trademark Examining Attorney, Law
Office 107 (Thomas Lamone, Managing Attorney).
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Before Seeherman, Hairston and Walters, Administrative
Trademark Judges.
Opinion by Walters, Administrative Trademark Judge:
International Data Group, Inc. has filed a trademark
application to register the mark WEB COMMERCE for
“magazines, magazine supplements, catalogues, manuals,
brochures, pamphlets, guides, newsletters, journals and
books in the fields of computers, on-line services, high
technology, communications and information services,” in
International Class 16, and “providing on-line magazines,
Serial No. 74/695,276
2
magazine supplements, catalogues, manuals, brochures,
pamphlets, guides, newsletters, journals and books in the
fields of computers, on-line services, high technology,
communications and information services,” in International
Class 42.”1 The application includes a disclaimer of the
term WEB apart from the mark as a whole.2
The Trademark Examining Attorney has finally refused
registration under Section 2(e)(1) of the Trademark Act, 15
U.S.C. 1052(e)(1), on the ground that applicant’s mark is
merely descriptive of its goods and services.
Applicant has appealed. Both applicant and the
Examining Attorney have filed briefs, but an oral hearing
was not requested. We affirm the refusal to register.
The Examining Attorney contends that WEB COMMERCE
refers to “the concept of carrying out commercial and
business related activities on the World Wide Web”; that
the term is “universally understood when used in the sense
of a ‘noun’ to identify a collective set of activities
centered on utilizing digital technology, specifically
Internet technology, in order to promote goods and services
and consummate monetary business transactions”; that WEB

1 Serial No. 74/695,276, filed June 29, 1995, based on an allegation of
a bona fide intention to use the mark in commerce.
Serial No. 74/695,276
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2 In its response of June 4, 1996, applicant concedes that “WEB is short
for ‘World Wide Web,’” which is part of the on-line global information
network.
Serial No. 74/695,276
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COMMERCE merely describes the subject matter of applicant’s
print and on-line publications; and that, while WEB
COMMERCE “has several related connotations,” each of these
connotations is merely descriptive in connection with the
identified goods and services. The Examining Attorney
submitted numerous excerpts from the LEXIS/NEXIS database
in support of her position.
Applicant contends that WEB COMMERCE is “merely
suggestive of the wide range of topics covered by
applicant’s goods and services”; and that it is a “vague
and ambiguous [term], with multiple definitions that have
suggestive connotations with respect to the applicant’s
publications and on-line services.” In this regard,
applicant posits the following.
[P]rinted publications titled WEB COMMERCE could
deal with 1) jobs or employment opportunities on
the worldwide web; or 2) business establishments
on the worldwide web; or 3) affairs or matters
concerning the worldwide web of a very general
nature; or 4) business dealings on the worldwide
web; or 5) how to operate a business on the
worldwide web; or 6) the volume or amount of
trade on the worldwide web; or 7) hardware or
software for use on the worldwide web. Or, using
the examiner’s definition, a topic of a
particular article might even deal with “the
commercial implications of businesses becoming
on-line users of the worldwide web” or “the
possibilities for commercial growth and
development among all entities which utilize the
worldwide web as a means of interactive
communication and information dissemination.”
Serial No. 74/695,276
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Applicant contends that the evidence submitted by the
Examining Attorney shows merely that the term WEB COMMERCE
is used in multiple contexts with a variety of meanings,
not that it has any special significance or meaning in the
relevant industry.
The test for determining whether a mark is merely
descriptive is whether the involved term immediately
conveys information concerning a quality, characteristic,
function, ingredient, attribute or feature of the product
or service in connection with which it is used, or intended
to be used. In re Bright-Crest, Ltd., 204 USPQ 591 (TTAB
1979); In re Engineering Systems Corp., 2 USPQ2d 1075 (TTAB
1986). It is not necessary, in order to find a mark merely
descriptive, that the mark describe each feature of the
goods, only that it describe a single, significant quality,
feature, etc. In re Venture Lending Associates, 226 USPQ
285 (TTAB 1985). Further, it is well-established that the
determination of mere descriptiveness must be made not in
the abstract or on the basis of guesswork, but in relation
to the goods or services for which registration is sought,
the context in which the mark is used, and the impact that
it is likely to make on the average purchaser of such goods
or services. In re Recovery, 196 USPQ 830 (TTAB 1977).
Serial No. 74/695,276
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The evidence submitted by the Examining Attorney,
several examples of which follow, indicates a consistent
use of the term WEB COMMERCE to refer to the electronic
offering and sale of goods and services via the World Wide
Web.
“The technology will allow for universally secure
data transfer – be it credit card transactions,
corporate data transfers or Web commerce -–
between different Web clients and Web servers, …”
[Electronic Marketplace Report, April 18, 1995.]
“ATM Technology Secures Payments” – “… designed
to be a full end-to-end Internet security system,
… WebSafe can support payment applications, Web
commerce, certification authorities, privacy
enhanced mail and electronic data interchange
(EDI).” [Financial Services Report, November 8,
1995.]
“Still, most industry experts don’t expect any of
these hurdles to permanently derail Web commerce.
Indeed, signs of change are evident. More and
more catalogers are going onto the Web.”
[Electronic Marketplace Report, October 17,
1995.]
“… currency on the Web is still a dicey digital
issue. In fact, security – or lack thereof –
emerges as another barrier to Web commerce, …”
[Rochester Business Journal, October 6, 1995.]
“… friction associated with trade mediated by
phone, fax, and FedEx. Some of that friction,
however, is being transferred to the IS
department, which must make Web commerce work to
the corporation’s benefit.” [Datamation, June
15, 1995.]
“… and 14th largest [bank] in North America, is
the second bank to use Open Market software to
host Web commerce for its merchants. It joins
Serial No. 74/695,276
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First Union Bank In Charlotte, N.C., …”
[InformationWeek, July 22, 1996.]
“Web Yellow Pages Let Your PC Do the Walking” –
“… Big Yellow’s Business Guide offers helpful
information on developing a cost-effective online
strategy and links to Web commerce sites.” [PC
Magazine, July, 1996.]
“Microsoft Gets Sought-after eShop” – “… with
last week’s acquisition of eShop Inc., which
provides eShop Plaza, a virtual shopping mall,
and other Web commerce technology.” [InfoWorld,
June 17, 1996.]
“For Burlington, like other businesses exploring
Web commerce, bridging the knowledge and culture
gap within the company can be more difficult than
ringing up an online sale.” [LAN Times, June 17,
1996.]
“Web Database Server; Interactive Pages Created
Easily with WebBase Pro” – “… the professional
version is well-suited for developing some
interesting forms of Web commerce and interactive
server-to-server communications.” [InfoWorld,
June 10, 1996.]
“Prodigy [has] allowed customers to purchase a
wide variety of goods online for years. To date,
the biggest impediment to Web commerce has been
the potential risk of sending your credit card
number or other transaction data over an
inherently insecure …”
…
“Bill Gates gave a demonstration of a Web
commerce application that Microsoft has developed
with Wal-Mart. The application allows an online
shopper to send criteria to a store, then receive
…” [PC Magazine, May 28, 1996.]
There appears to be no question that there are numerous
issues pertaining to doing “Web commerce,” from the
security of sales transactions to setting up a Web site for
Serial No. 74/695,276
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doing business (which could include topics ranging from
what software to use to the economics of such an endeavor).
However, the breadth of the field described by the term WEB
COMMERCE does not render this term with a specific
connotation suggestive as opposed to merely descriptive.
See, In re Analog Devices Inc., 6 USPQ2d 1808 (TTAB 1988),
aff’d. 871 F.2d 1097, 10 USPQ2d 1879 (Fed. Cir. 1989).
In the present case, it is our view that, when applied
to applicant’s goods and services, the term WEB COMMERCE
immediately describes, without conjecture or speculation, a
significant feature or function of applicant’s goods and
services, namely, that applicant’s print and on-line
publications pertain to the full range of issues relevant
to doing business, i.e., selling goods and services, via
the World Wide Web. Nothing requires the exercise of
imagination, cogitation, mental processing or gathering of
further information in order for purchasers of and
prospective customers for applicant’s services to readily
perceive the merely descriptive significance of the term
WEB COMMERCE as it pertains to applicant’s goods and
services.
Serial No. 74/695,276
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Decision: The refusal under Section 2(e)(1) of the
Act is affirmed.
E. J. Seeherman
P. T. Hairston
C. E. Walters
Administrative Trademark Judges,
Trademark Trial and Appeal Board