J. Patrick Berry

Trademark Trial and Appeal Board

Apr 3, 2012

No. 77834679 (T.T.A.B. Apr. 3, 2012)

Mailed:
April 3, 2012

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re J. Patrick Berry
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Serial Nos. 77819705, 77834679, 77834681 and 77834686
_______

Doreen L. Costa and Jennifer A. Lazo of Baker Botts, L.L.P.
for J. Patrick Berry.

Dominic J. Ferraiuolo, Trademark Examining Attorney, Law
Office 102 (Karen M. Strzyz, Managing Attorney).
_______

Before Seeherman, Kuhlke and Bergsman, Administrative
Trademark Judges.
Opinion by Seeherman, Administrative Trademark Judge:
This is a consolidated appeal involving four
applications filed by J. Patrick Berry (“applicant”). On
October 6, 2011, applicant requested that the appeals be
consolidated because the marks at issue are substantially
similar, the goods are the same, and registration has been
refused on the same basis. The Board consolidated the
appeals prior to briefing.
Applicant is seeking to register the marks SCORED
NOVELLA (Serial No. 77819705), SCORED SHORT STORY (Serial
No. 77834679), SCORED STORY (Serial No. 77834681) and SCORED
NOVEL (Serial No. 77834686), for “audio books, namely, pre-
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Serial Nos. 77819705, 77834679, 77834681 and 77834686
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recorded CDs, audio cassettes and downloadable e-books,
featuring fictional or non-fictional stories and music
specially adapted such that the customized spoken narrative
is paired with different variations of music based on the
desired interpretation of the audio book.” Application
Serial No. 77819705 was filed on September 3, 2009; the
other three applications were filed on September 25, 2009.
All of the applications are based on Section 1(b) of the
Trademark Act, asserting an intent to use the marks in
commerce.
Registration has been refused pursuant to Section
2(e)(1) of the Trademark Act, 15 U.S.C. § 1052(e)(1), on the
ground that applicant’s marks are merely descriptive of his
identified goods. Specifically, the examining attorney
contends that the marks immediately convey to purchasers
that the literary form that is the subject of the audio book
is musically scored.
Applicant and the examining attorney filed consolidated
appeal briefs, and applicant filed a consolidated reply
brief.1

1 Although we have considered applicant’s reply brief, we must
say that many of the arguments made in it are not appropriate for
a reply brief, which is supposed to respond to arguments made by
the examining attorney in his brief. For example, in his main
brief applicant appears to have accepted that the second word in
each of his marks is descriptive, and concentrated his arguments
on the word SCORED: “A consumer of audio books may believe that
Serial Nos. 77819705, 77834679, 77834681 and 77834686
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We affirm the refusal as to all four applications.
A term is deemed to be merely descriptive of goods or
services, within the meaning of Section 2(e)(1) of the
Trademark Act, 15 U.S.C. §1052(e)(1), if it forthwith
conveys an immediate idea of an ingredient, quality,
characteristic, feature, function, purpose or use of the
goods or services. In re Abcor Development Corp., 588 F.2d
811, 200 USPQ 215, 217-18 (CCPA 1978). A term need not
immediately convey an idea of each and every specific
feature of the applicant’s goods or services in order to be
considered to be merely descriptive; rather, it is
sufficient that the term describes one significant
attribute, function or property of the goods or services.
In re H.U.D.D.L.E., 216 USPQ 358 (TTAB 1982); In re

the term ‘scored’ in some way refers to some significant aspect
of the term ‘novella,’ ‘short story,’ ‘story’ or ‘novel,’ such as
the plot, message, theme or main characters of Applicant’s audio
books.” Brief, p. 5. That is certainly the way that the
examining attorney (and, we must add, this Board) interpreted
applicant’s position in his main brief; in fact, the examining
attorney stated, “Applicant does not argue that the wordings
‘novella’, ‘short story’, ‘story’ and ‘novel’ are not merely
descriptive of its [sic] goods, namely the literary content or
literary form of the subject matter featured on the audio books.”
Examiner’s brief, unnumbered p. 3. However, in his reply brief
applicant contends that “‘NOVELA,’ ‘SHORT STORY,’ ‘STORY’ and
‘NOVEL’ may offer some information about Applicant’s products,
but this does not render them descriptive. ... In fact, the
dictionary definitions in the record further illustrate that the
terms, even standing alone, do not directly describe Applicant’s
goods.” Reply brief, p. 10. Applicant goes on, in his reply
brief, to discuss various meanings for the word “novel” and the
supposed ambiguity of the word “story.”

Serial Nos. 77819705, 77834679, 77834681 and 77834686
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MBAssociates, 180 USPQ 338 (TTAB 1973). Whether a term 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 on or in
connection with the goods or services, and the possible
significance that the term would have to the average
purchaser of the goods or services because of the manner of
its use; that a term may have other meanings in different
contexts is not controlling. In re Bright-Crest, Ltd., 204
USPQ 591, 593 (TTAB 1979). In other words, the question is
not whether someone presented only with the mark could guess
the products listed in the description of goods. Rather,
the question is whether someone who knows what the products
are will understand the mark to convey information about
them. In re Tower Tech, Inc., 64 USPQ2d 1314, 1316-1317
(TTAB 2002); In re Patent & Trademark Services Inc., 49
USPQ2d 1537, 1539 (TTAB 1998); In re Home Builders
Association of Greenville, 18 USPQ2d 1313, 1317 (TTAB 1990);
In re American Greetings Corp., 226 USPQ 365, 366 (TTAB
1985).
Dictionary definitions of “novella,” “short story,”
“story” and “novel” show that these are literary forms:
Novella: “story with a compact and pointed plot”
and “a work of fiction intermediate in length and
complexity between a short story and a novel.”
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Short story: “an invented prose narrative shorter
than a novel usually dealing with a few characters
and aiming at unity of effect and often
concentration on the creation of mood rather than
plot”
Story: “3a. a fictional narrative shorter than a
novel; specifically: SHORT STORY b: the intrigue
or plot of a narrative or dramatic work”
Novel: “a fictional prose narrative of
considerable length, typically having a plot that
is unfolded by the actions, speech, and thoughts
of the characters: ‘Uncle Tom’s Cabin is a very
bad novel’ (James Baldwin).” 2

The examining attorney has submitted dictionary
definitions of “score,” the most pertinent of which is “to
write or arrange (music) for a specific performance medium.”
In addition, applicant has submitted definitions for the
word “score” taken from Dictionary.com, and based on the
Random House Dictionary, © 2010, including the following:
15. Music. [noun]

2 The first three definitions are from Merriam-Webster Online
dictionary, www.merriam-webster.com, and were made of record by
the examining attorney. In the application for SCORED NOVEL, the
examining attorney submitted the definition for “novel” when it
is used as an adjective. We take judicial notice of the
definition for “novel” as a noun, taken from The American
Heritage Dictionary of the English Language, 1970. The Board may
take judicial notice of dictionary definitions. University of
Notre Dame du Lac v. J. C. Gourmet Food Imports Co., Inc., 213
USPQ 594 (TTAB 1982), aff’d, 703 F.2d 1372, 217 USPQ 505 (Fed.
Cir. 1983). We point out that applicant was well aware of this
definition of “novel,” and treated “novel” as having this meaning
even in his first response, i.e., the response submitted after
the examining attorney made the adjective definition of record.
For example, applicant made the statement, “Considering the
composite mark SCORED NOVEL, it is likely that a consumer would
believe that ‘SCORED’ in some way refers to some significant
aspect of the ‘NOVEL’, such as the plot, or even the central
message, theme or characters of the novel, rather than connoting
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a. a written or printed piece of music with all
the vocal and instrumental parts arranged on
staves, one under the other.
b. the music itself.
c. the music played as background to or part of a
movie, play, or television presentation.

21. Music. [verb]
a. to orchestrate.
b. to write out in score.
c. to compose the music for (a movie, play,
television show, etc.)3

In addition, the examining attorney has submitted
Internet evidence showing that audio books are advertised as
being “musically scored”:4
Pocahontas: Musically Scored (Audiobook)
www.alibris.com

Valentine by Audio Dove
Audiobook
...

the use of background music in conjunction with the novel.”
Filed June 5, 2010.
3 There are 37 definitions listed for “score” in the submission
from Dictionary.com, including as a noun, a verb used with an
object and a verb used without an object, and informal and slang
definitions.
4 Applicant notes that the examining attorney did not submit the
Google search results page through which he presumably found the
Internet evidence, or identify the specific search terms he
employed. To the extent that applicant believes that this is a
requirement, it is not. Internet web pages will be considered as
long as there is information from which the URL can be
ascertained, whether that information appears on the webpage or
is supplied with an accompanying Office action or response. It
is also preferable that the date the webpage was downloaded be
supplied, although the absence of such information does not make
the evidence unacceptable, it may simply affect its probative
value. In this connection, we note that definitions from
Dictionary.com submitted by applicant do not bear a date, but we
accord them full probative weight since the copyright information
on the webpages themselves show that the definitions were taken
from a recent print dictionary.
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Featuring the works of the most famous authors in
Classical Literature, including William
Shakespeare, William Butler Yeats, Robert Frost,
James Joyce, Emily Dickinson, Edgar Allan Poe,
Carl Sandburg and others. Coupled with the
talents of celebrity performers, this musically
scored presentation is unlike anything else
available.
www.barnesandnoble.com

Gullivers [sic] Travels by Jonathan Swift
Audiobook
...
This is an audio book titled Gulliver’s Travels by
Jonathan Swift and read by Joel Grey. There is
one Cassette for an approximate running time of 45
minutes. It is musically scored.
www.bonanza.com

A musically scored CD of Melea[’s] six newest
stories
www.astory4u.com

It is clear that the second word in each mark, NOVELLA,
SHORT STORY, STORY, NOVEL, describes the literary form of
the audio book. When the word SCORED is combined with the
word identifying a type of literary form, and the marks are
used for audio books featuring stories and specially adapted
music that pairs the narrative with different variations of
music based on the desired interpretation of the audio book,
consumers will immediately understand that the audio book is
of a novella, or short story, or story, or novel (depending
on the literary form described by the second word in the
particular mark) that has been musically scored. Thus, each
Serial Nos. 77819705, 77834679, 77834681 and 77834686
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of the marks is merely descriptive of the identified audio
book.
Applicant argues that, because the word “scored” can
have multiple meanings, the marks are suggestive and
therefore registrable. “A consumer of audio books may
believe that the term ‘scored’ in some way refers to some
significant aspect of the term ‘novella,’ ‘short story,’
‘story’ or ‘novel,’ such as the plot, message, theme or main
characters of Applicant’s audio books.” Brief, p. 5. For
example, because two of the dictionary definitions of
“score” are “the record of points or strokes made by the
competitors in a game or match” and “the total points or
strokes made by one side, individual, play, game, etc.,”5
applicant asserts that the marks would suggest audio books
containing sports- or competition-themed stories.
We are not persuaded by this argument. As previously
noted, the question of mere descriptiveness of a mark is
determined by the context in which it is being used and the
possible significance that the term would have to the
average purchaser of the goods or services because of the
manner of its use or intended use. The fact that a term may
have other meanings in different contexts is not

5 Dictionary.com, based on the Random House Dictionary, © 2010,
http://dictonary.reference.com, submitted June 5, 2010.
Serial Nos. 77819705, 77834679, 77834681 and 77834686
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controlling. See In re Polo International Inc., 51 USPQ2d
1061 (TTAB 1999) (the term DOC in mark DOC-CONTROL for
computer software for document management would be
understood as “document” despite dictionary meaning of
“doctor”). Applicant’s goods are “audio books, namely, pre-
recorded CDs, audio cassettes and downloadable e-books,
featuring fictional or non-fictional stories and music
specially adapted such that the customized spoken narrative
is paired with different variations of music based on the
desired interpretation of the audio book.” The pairing of
different variations of music to go with the spoken
narrative, thus, is a significant characteristic of the
goods.6 When the marks SCORED NOVELLA, SCORED SHORT STORY,
SCORED STORY and SCORED NOVEL are viewed in connection with
such goods, consumers will immediately understand that the

6 Applicant asserts that “the Examining Attorney has not
identified any evidence that even infers, let alone proves, his
claim that the ‘musically scored’ feature of an audio book (or
lack thereof) is highly likely to be a major decisional factor in
the consumer’s decision of whether or not to purchase Applicant’s
audio book products.” Reply brief, p. 5. It appears that
applicant is attempting to add a requirement of materiality to
the test for showing that a mark is merely descriptive. However,
applicant has not pointed to any case law that states that an
examining attorney must show that to be merely descriptive a mark
must describe a feature that is “highly likely to be a major
decisional factor in the consumer’s decision” to purchase.
Applicant’s identification of goods, namely, that the audio books
contain a spoken narrative which is paired with different
variations of music based on the desired interpretation of the
audio book, is sufficient to show that having a score is a
significant characteristic of the goods.

Serial Nos. 77819705, 77834679, 77834681 and 77834686
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word SCORED in the mark refers to audio books that have been
musically scored, and that each mark as a whole describes
audio books of a particular literary form and which have a
musical score.
We recognize that if imagination, thought or perception
is required in order to reach a conclusion on the nature of
the goods, then the mark is suggestive. In re Gyulay, 820
F.2d 1216, 3 USPQ2d 1009 (Fed. Cir. 1987). However, if one
meaning of a mark clearly and directly conveys to consumers
information about the nature of the goods, and one
interpretation would require mental gymnastics, consumers
will view the mark as conveying the readily understood
meaning. Thus, although “score” or “scored” has several
different definitions, including definitions having to do
with sports, performance evaluation, accounting or
indebtedness, it is not reasonable to expect that consumers
will “sift through numerous possible meanings for the term
‘scored’ and ... make guesses or insert additional meaning
into the phrase in order to understand the nature of
Applicant’s goods,” as applicant argues in contending that
his marks are suggestive. Brief, p. 6. For example,
consumers seeing the mark SCORED NOVEL for an audio book
that pairs the narrative with music based on the narrative,
will understand the mark as describing an audio book of a
Serial Nos. 77819705, 77834679, 77834681 and 77834686
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novel which is accompanied by musical scoring, rather than
first think that SCORED is a term used to indicate a point
in a game, and from that make a guess as to whether the
content of the novel that is the subject of the audio book
has something to do with games or sports. In fact, although
applicant accuses the examining attorney of failing to
consider the marks in their entireties, it is applicant that
appears to be doing that, by looking to the word SCORED per
se and the meaning that this word may have by itself,
instead of looking at the word in the context of the entire
mark involved in each appeal. Whether or not the word
SCORED, when used in connection with a story about sports,
may have the meaning of a points scored in a game, when the
term is combined with the descriptive term for a literary
form, such as SCORED SHORT STORY, and used for an audio book
having a musical accompaniment that is paired with the
narrative, the word SCORED will be understood as referring
to the literary format that is the subject of the audio
book, and SCORED SHORT STORY will be viewed as describing an
audio book containing a short story with a musical score.
Applicant also argues that his marks have an
incongruity that prevents them from being merely descriptive
because movies contain musical scores, but books do not.
Although actual books are read, and therefore there is no
Serial Nos. 77819705, 77834679, 77834681 and 77834686
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auditory component to them, the goods at hand are audio
books, and by definition they have an auditory component.
Because audio books can have a score to go with the
narration and, in fact, the evidence shows that there are
audio books with musical scores that are advertised as such,
consumers will not view the mark as incongruous.
Applicant also contends that, while “musical score” or
“musically scored” may have a meaning to consumers, when
“scored” is viewed without the modifier “musically” it would
not have such an association. We acknowledge that the
Internet evidence, as detailed above, uses the phrase
“musically scored” and not “scored” per se in advertising
the particular audio books. However, given the dictionary
definition of “score”/”scored,” which shows that this term
has a meaning in connection with music even if the word
“music” or “musically” is not used in conjunction with it,
and given that applicant’s audio books feature “music
specially adapted such that the customized spoken narrative
is paired with different variations of music based on the
desired interpretation of the audio book,” consumers will
readily understand that applicant’s marks, used in the
context of these goods, describe the musical scoring of the
particular novella, short story, story or novel.
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We have considered all of applicant’s arguments,
including those not specifically addressed herein, but find
them unpersuasive. Based on the evidence of record, we find
that applicant’s marks SCORED NOVELLA, SCORED SHORT STORY,
SCORED STORY and SCORED NOVEL, used for “audio books,
namely, pre-recorded CDs, audio cassettes and downloadable
e-books, featuring fictional or non-fictional stories and
music specially adapted such that the customized spoken
narrative is paired with different variations of music based
on the desired interpretation of the audio book,”
immediately and directly convey information about a
characteristic of the audio books, namely that the audio
books are musically scored works of the literary form named
in the particular mark.
Decision: The refusals of registration as to the four
applications are affirmed.