J. Paul Martha

Trademark Trial and Appeal Board

Sep 29, 1998

No. 75027858 (T.T.A.B. Sep. 29, 1998)

Paper No. 9
Hohein/md
9/29/98
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re J. Paul Martha
________
Serial No. 75/027,858
_______
David V. Radack. Esq. for J. Paul Martha.
Alan C. Atchison, Trademark Examining Attorney, Law Office 102
(Myra K. Kurzbard, Managing Attorney).
_______
Before Simms, Hohein and Chapman, Administrative Trademark
Judges.
Opinion by Hohein, Administrative Trademark Judge:
J. Paul Martha has filed an application to register the
mark "IBL INTERNATIONAL BASKETBALL LEAGUE" for "entertainment
services, namely organizing and conducting basketball
competitions and exhibitions."1
Registration has been finally refused in view of
applicant’s failure to comply with the requirement, pursuant to
Section 6(a) of the Trademark Act, 15 U.S.C. §1056(a), for a
disclaimer of the phrase "INTERNATIONAL BASKETBALL LEAGUE," which

1 Ser. No. 75/027,858, filed on December 5, 1995, which alleges a bona
fide intention to use the mark in commerce. The words "BASKETBALL
LEAGUE" have been disclaimed pursuant to a requirement therefor by the
Examining Attorney.
Ser. No. 75/027,858
2
the Examining Attorney contends is merely descriptive of
applicant’s services within the meaning of Section 2(e)(1) of the
Trademark Act, 15 U.S.C. §1052(e)(1). Specifically, the
Examining Attorney has required that applicant amend its present
disclaimer of the words "BASKETBALL LEAGUE" to include a
disclaimer of the term "INTERNATIONAL".
Applicant has appealed. Briefs have been filed, but an
oral hearing was not requested. We affirm the disclaimer
requirement.
Applicant, relying upon a third-party registration
mentioned for the first time in its brief,2 asserts that its
disclaimer of the words "BASKETBALL LEAGUE" should not have to be
amended to include a disclaimer of the term "INTERNATIONAL".
Specifically, while noting that the Examining Attorney has made
of record "several third[-]party registrations which include
disclaimers of the term 'INTERNATIONAL' as well as a dictionary
definition" of such term, applicant insists that:

2 We note, however, that not only is the reference to such registration
untimely under Trademark Rule 2.142(d), but in any event a mere
listing of a third-party registration is insufficient to make it of
record inasmuch as the Board does not take judicial notice of
registrations which reside in the Patent and Trademark Office. See,
e.g., In re Duofold Inc., 184 USPQ 638, 640 (TTAB 1974). The proper
procedure for making information concerning a third-party registration
of record is, instead, to submit either a copy of the actual
registration or the electronic equivalent thereof, i.e., a printout of
the registration which has been taken from the Patent and Trademark
Office’s own computerized database. See, e.g., In re Consolidated
Cigar Corp., 35 USPQ2d 1290, 1292 (TTAB 1995) at n. 3; In re Smith &
Mehaffey, 31 USPQ2d 1531, 1532 (TTAB 1994) at n. 3; and In re Melville
Corp., 18 USPQ2d 1386, 1388-89 (TTAB 1991) at n. 2. Nevertheless,
since the Examining Attorney has not only elected not to object to
consideration of the information concerning the third-party
registration, but has treated it as being of record by discussing it
in his brief, we have considered such evidence for whatever probative
value it may have. See In re Nuclear Research Corp., 16 USPQ2d 1316,
1317 (TTAB 1990) at n. 2.
Ser. No. 75/027,858
3
[T]he term "INTERNATIONAL" can function
to distinguish Appellant’s services from the
services of others and is not descriptive
matter (such as the words "BASKETBALL
LEAGUE", which Appellant has disclaimed)
which must be disclaimed. Countering the
third[-]party registrations cited by the
Examining Attorney, Appellant makes of record
United States Service Mark Registration No.
1,546,808 for the mark "INTERNATIONAL
FOOTBALL LEAGUE" ("the ’808 Registration").
Although this registration has been
cancelled, it is evidence of United States
Trademark Office precedent where the term
"INTERNATIONAL" was not disclaimed.
Furthermore, the ’808 Registration is
more relevant than the third[-]party
registrations in that it is almost exactly
like Appellant’s mark, IBL INTERNATIONAL
BASKETBALL LEAGUE, the only difference being
that the term "BASKETBALL" in Appellant’s
mark has been substituted for the "FOOTBALL"
in the ’808 Registration.
Therefore, "based on the closest precedent in the ... Patent and
Trademark Office," applicant argues that the requirement for a
disclaimer of the word "INTERNATIONAL" is improper.
The Examining Attorney, on the other hand, argues that
because the phrase "INTERNATIONAL BASKETBALL LEAGUE" immediately
identifies "features of the applicant’s services, namely, an
international league of basketball players and/or competitions,"
the term "INTERNATIONAL" is merely descriptive thereof and must,
like the words "BASKETBALL LEAGUE," also be disclaimed. In
support of his position, the Examining Attorney has made of
record a definition from Webster’s II New Riverside University
Dictionary (1988) which lists "international" as an adjective

Ser. No. 75/027,858
4
meaning "1. Of, pertaining to, or involving two or more nations.
2. Extending across two or more national borders."3
The Examining Attorney has also furnished with his
final refusal copies of the following third-party registrations
to show that it is the current practice of the Patent and
Trademark Office to require a disclaimer of the term
"INTERNATIONAL" in connection with marks which contain such term
and are registered for sporting events or competitions:
(1) Reg. No. 2,013,099, issued on
November 5, 1996, for the mark "INTERNATIONAL
SENIOR GAMES" and design for, inter alia,
"organizing and conducting a series of
competitions consisting of sports and
cultural activities ... for individuals over
the age of fifty years"; the words
"INTERNATIONAL SENIOR GAMES" are disclaimed;
(2) Reg. No. 1,988,026, issued on July
23, 1996, for the mark "INTERNATIONAL MARTIAL
ARTS GAMES KOIDE" for "organizing exhibitions
for martial arts purposes and entertainment
in the nature of martial arts games"; the
words "INTERNATIONAL MARTIAL ARTS GAMES" are
disclaimed;
(3) Reg. No. 1,977,806, issued on June
4, 1996, for the mark "INTERNATIONAL HOCKEY
SCHOOLS" and design for "educational
services, namely, conducting training camps
in the field of hockey"; the words
"INTERNATIONAL HOCKEY SCHOOLS" are
disclaimed;
(4) Reg. No. 1,757,293, issued on March
9, 1993, for the mark "IJSBA INTERNATIONAL
JET SPORTS BOATING ASSOCIATION" and design
for "organizing, promoting, and conducting
personal watercraft races and events"; the

3 The same dictionary, the record shows, defines "basketball" in
relevant part as a noun connoting "[a] game played between two teams
of five players each, the object being to throw the ball through an
elevated basket on the opponent’s side of the rectangular court" and
lists "league" in pertinent part as signifying "[a]n association of
sports teams or clubs that compete chiefly among themselves."
Ser. No. 75/027,858
5
words "INTERNATIONAL JET SPORTS BOATING
ASSOCIATION" are disclaimed; and
(5) Reg. No. 1,536,845, issued on April
25, 1989, for the mark "IWF INTERNATIONAL
WRESTLING FEDERATION" and design for
"entertainment services, namely staging
wrestling exhibitions and musical
performances"; the words "INTERNATIONAL" and
"WRESTLING FEDERATION" are disclaimed.
The Examining Attorney, in view of the above evidence,
maintains that (footnote omitted):
The applicant has already conceded the
descriptiveness of the two terms "BASKETBALL
LEAGUE" by entering a disclaimer of the
terms. The only issue on appeal involves the
descriptiveness of the term INTERNATIONAL in
relation to the applicant’s services. The
third[-]party registrations provided by the
Examining Attorney all involved sporting
activities, e.g., [games,] martial arts,
hockey, watercraft races and wrestling. The
services identified in those registrations
also involved sporting event competitions.
The term "INTERNATIONAL" was disclaimed along
with the other descriptive wording in these
marks ....
These disclaimers of the term
"INTERNATIONAL" in connection with sporting
competitions underscore the terms descriptive
meaning. See 15 U.S.C. Section 1056; TMEP
section 1213. As used by others in the
sports competition field, "INTERNATIONAL"
describes the scope or nature of the sporting
events. For example, the sporting events may
involve international competitions between
different countries or may feature
participants from different countries.
Therefore, the term is considered descriptive
of a feature of these services.
The applicant’s mark "IBL INTERNATIONAL
BASKETBALL LEAGUE" is no different from the
third[-]party registrations discussed above.
The applicant’s services involve an
association or league featuring international
basketball competitions. Therefore,
"INTERNATIONAL BASKETBALL LEAGUE" consists of
descriptive and generic terms and all three
terms are considered merely descriptive of
Ser. No. 75/027,858
6
the applicant’s services under Section
2(e)(1) of the Trademark Act.
As to applicant’s reliance "on Registration No.
1,546,808, a cancelled registration for the mark ’INTERNATIONAL
FOOTBALL LEAGUE,’ as precedent for allowing its mark," the
Examining Attorney insists that: "[T]he vast majority of
registrations containing the term ’INTERNATIONAL’ for sporting
competitions have either disclaimed the term or were registered
on the Supplemental Register. On balance, Office practice has
been to hold the term ’INTERNATIONAL’ descriptive and therefore
to require a disclaimer of the term." Finally, the Examining
Attorney additionally points out that:
The ... Board and federal courts have
considered and held the term "INTERNATIONAL"
merely descriptive in relation to different
services. For example, the mark
"INTERNATIONAL BANKING INSTITUTE" was held
merely descriptive in connection with
organizing seminars and conferences related
to international topics and issues. In re
Institutional Investor, Inc.[,] 229 USPQ 614
(TTAB 1986); "INTERNATIONAL TRAVELERS CHEQUE"
was held merely descriptive of financial
services. International Travelers Cheque Co.
v. Bankamerica Corp., 211 USPQ 753 (7th Cir.
1981); "INTERNATIONAL TRAVEL AGENTS’ TRAINING
SCHOOL" was held generic in relation to
travel agency and travel agent school
services. Travel Bug Ltd. v. Muscarello, 4
USPQ2d 1444 (N.D. Illinois 1987).
It is well settled that a term or phrase is considered
to be merely descriptive of goods or services, within the meaning
of Section 2(e)(1) of the Trademark Act, if it immediately
describes an ingredient, quality, characteristic or feature
thereof or if it directly conveys information regarding the
nature, function, purpose or use of the goods or services. See
Ser. No. 75/027,858
7
In re Abcor Development Corp., 588 F.2d 811, 200 USPQ 215, 217-18
(CCPA 1978). It is not necessary that a term or phrase 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 term or phrase describes a
significant attribute or idea about them. Moreover, whether a
term or phrase 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 those goods or services and the possible
significance that the term or phrase would have to the average
purchaser of the goods or services because of the manner of its
use. See In re Bright-Crest, Ltd., 204 USPQ 591, 593 (TTAB
1979). Consequently, "[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).
We agree with the Examining Attorney that, utilizing
the above test, the phrase "INTERNATIONAL BASKETBALL LEAGUE," as
applied to the entertainment services of organizing and
conducting basketball competitions and exhibitions "immediately
describes [a league or] association of basketball teams involved
in international competition." As the Examining Attorney has
accurately observed, "[t]he applicant has not denied that its
services involve international competitions," as the term
"international" is defined in the dictionary definition of
record, and the third-party registrations demonstrate that
Ser. No. 75/027,858
8
current Patent and Trademark Office practice is to treat such
term as merely descriptive when applied to activities involving
sporting events or competitions. Accordingly, and in light of
case law precedent, because the term "INTERNATIONAL" conveys
forthwith a significant feature or characteristic of applicant’s
services, it is merely descriptive thereof within the meaning of
Section 2(e)(1) and must therefore be disclaimed as required by
the Examining Attorney pursuant to Section 6(a).
Decision: The requirement for a disclaimer of the term
"INTERNATIONAL" is affirmed. Nevertheless, in accordance with
Trademark Rule 2.142(g), this decision will be set aside and
applicant’s mark will be published for opposition if applicant,
no later than thirty days from the mailing date hereof, amends
its present disclaimer to one which appropriately disclaims the
words "INTERNATIONAL BASKETBALL LEAGUE".4
R. L. Simms
G. D. Hohein
B. A. Chapman
Administrative Trademark Judges,
Trademark Trial and Appeal Board

4 See In re Interco Inc., 29 USPQ2d 2037, 2039 (TTAB 1993). For the
proper format for a disclaimer, attention is directed to TMEP
§§1213.09(a)(i) and 1213.09(b).