International Data Group, Inc.

Trademark Trial and Appeal Board

Dec 4, 1998

No. 74631975 (T.T.A.B. Dec. 4, 1998)

Paper No. 15
HANAK/md
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF THE TTAB DEC 4, 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. 74/631,975
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Mark Harrison of Spencer, Frank & Schneider for
International Data Group, Inc.
G. T. Glynn, Trademark Examining Attorney, Law Office 102
(Myra K. Kurzbard, Managing Attorney)
_______
Before Simms, Hanak and Hohein, Administrative Trademark
Judges.
Opinion by Hanak, Administrative Trademark Judge:
International Data Group, Inc. (applicant) seeks to
register _ _ _ _ FAQS for “books in the field of business
and general reference.” The intent-to-use application was
filed on February 9, 1995.
The Examining Attorney refused registration pursuant
to Section 2(e)(1) of the Lanham Trademark Act on the basis
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2
that applicant’s mark is merely descriptive of applicant’s
goods.
When the refusal was made final, applicant appealed to
this Board. Applicant and the Examining Attorney filed
briefs. Applicant did not request a hearing.
As has been repeatedly stated, a term is descriptive
if it forth with conveys an immediate idea of the
ingredients, qualities or characteristics of the goods.”
In re Abcor Development Corp., 588 F.2d 811, 200 USPQ 215,
218 (CCPA 1978). Moreover, the descriptiveness of a mark
is not determined in the abstract, but rather it is
determined in relationship to the goods for which
registration is sought. Abcor Development, 200 USPQ at
218.
In the first Office action, the Examining Attorney
stated that “applicant’s mark merely describes the fast
quequing system topical information contained in
applicant’s computer books.” In this regard, it should be
noted that applicant’s initial description of its goods was
as follows: “Books in the fields of computers, computing,
computer software, business and general reference.” In
support of his argument, the Examining Attorney made
reference to the Anacronyms, Initialisms & Abbreviations
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3
Dictionary (1994) where in the anacronym FAQS was defined
as “fast quequing system [data processing].”
In response, applicant stated that “the term FAST
QUEQUING SYSTEM has no relevance with respect to
applicant’s books, and consumers, upon viewing applicant’s
books would be hard pressed to immediately connect the term
FAQS with the term FAST QUEQUING SYSTEM.” Furthermore,
applicant stated that “as is clear from the covers
applicant’s books, the designation FAQS is used by
applicant as an abbreviation for the phrase FREQUENTLY
ASKED QUESTIONS.” (Applicant’s response dated January 17,
1996 at page 3). Finally, applicant also amended its
identification of goods to the present identification
recited earlier in this opinion, namely, “books in the
field of business and general reference.”
In the second action, the Examining Attorney made
final his refusal to register applicant’s mark on the basis
that it is merely descriptive of both books in the field of
business and general reference.” However, on this occasion
the Examining Attorney did not contend that as applied to
applicant’s goods FAQS meant “fast quequing system,” but
rather that applicant’s mark, as applied to applicant’s
goods, “immediately informs and merely describes to the
perspective purchaser and/or product user the salient
Ser No. 74/631,975
4
attribute of these books, i.e., frequently asked questions
in the field of business technology and general reference
technology.” In support of his refusal, the Examining
Attorney made reference to the Dictionary of Computer Words
which define the anacronym FAQ as follows: “Acronym for
frequently asked questions. Any of a number of questions
that might be asked newcomers to a source of information on
the Internet… a list FAQs and their answers is compiled by
each news group and its freely available to Internet
users.”
Based upon the foregoing, we find that the anacronym FAQS
is commonly understood to mean “frequently asked
questions.” Indeed, as previously noted, applicant even
conceded that “the designation FAQS is used by applicant as
an abbreviation for the phrase FREQUENTLY ASKED QUESTIONS.”
(Applicant’s paper dated January 17, 1996 at page 3).
Moreover, the Examining Attorney attached to his appeal
brief photocopies of selected pages from four other
dictionaries demonstrating that the anacronym FAQS means
“frequently asked questions.” The excerpts from these four
additional dictionaries simply lend further support to the
conclusion that FAQS is a widely recognized abbreviation
for “frequently asked questions.” We note that in its
reply brief, applicant request that the excerpts from these
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5
four dictionaries attached to the Examining Attorney’s
brief “be stricken from the record” because they “were not
previously made of record during the examination process.”
(Applicant’s reply brief page 1). However, it is well
settled that this Board may take judicial notice of
dictionary definitions. B.V.D. Licensing v. Body Action
Design, 846 F.2d 727, 6 USPQ2d 1719, 1720 (Fed. Cir. 1988).
The fact that it was the Examining Attorney who brought to
the Board’s attention these four additional dictionary
listings does not preclude this Board from taking judicial
notice of them.
We find that as applied to “books in the field of
business and general reference,” the anacronym FAQS would
forthwith convey to consumers and important quality or
characteristics of said books namely, the format of such
books. That is to say, consumers of books in the field of
business and general reference –- upon seeing the
designation FAQS on said books -– would immediately
understand that said book is arranged in a manner in which
common questions are posed followed by the answers. No
thought or imagination would be required of purchasers of
books in the field of business and general reference to
understand and that the designation FAQS immediately
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conveys important information concerning the format of the
book.
Finally, we note that applicant has acknowledged that
“the term FAQS may be descriptive as applied to books in
the field of computers, computing and computer software.”
(Applicant’s brief page 4). While it may be true that the
anacronyms FAQS is most commonly used in connection with
sites on the Internet, this does not mean the abbreviation
FAQS is not also descriptive of books in the field of
business and general reference.
Finally, we note that at page 2 of its reply brief
applicant argues that because in the first Office action
the Examining Attorney attributed on meaning to FAQS and
that in the second (and final) Office action the Examining
Attorney attribute another meaning FAQS, that this
demonstrates “the Examining Attorney’s own uncertainty as
to the basis for a descriptiveness refusal” and thus “is
sufficient to raise some question or doubt as to whether or
not this mark is descriptive.” Had applicant’s
identification of goods remained the same, applicant’s
argument might possibly have some merit. However, as
previously noted, applicant’s original description of its
goods read as follows: “Books in the fields of computer,
computing, computer software, business and general
Ser No. 74/631,975
7
reference.” In view of applicant’s own chosen description
of goods, it was not surpassing that the Examining Attorney
raised a descriptive refusal based upon the meaning of FAQS
as a data processing term, namely, “fast queuing system.”
Thereafter, not only did applicant delete from its own
identification of goods all referenced to computers,
computing and computer software, but in addition applicant
explicitly stated, as previously noted on two occasions,
that “the designation FAQS is used by applicant as an
abbreviation for the phrase frequently asked questions.”
Thus, given applicant’s change in its description of goods
and applicant’s own admission, it was not all improper for
the Examining Attorney to refuse registration based upon
the fact that FAQS is understood to mean “frequently asked
questions,” and that as applied to books in the field of
business and reference, this anacronym would forthwith
convey important information concerning the format of such
books.
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Decision: The refusal to register is affirmed.
R. L. Simms
E. W. Hanak
G. D. Hohein
Administrative Trademark
Judges, Trademark Trial and
Appeal Board
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