Louis R. Bucalo

Trademark Trial and Appeal Board

Mar 12, 2001

No. 75486133 (T.T.A.B. Mar. 12, 2001)

3/12/01
Paper No. 9
RFC
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Louis R. Bucalo
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Serial No. 75/486,133
_______
Amy F. Divino of Steinberg & Raskin for Louis R. Bucalo.
Robert L. Lorenzo, Trademark Examining Attorney, Law Office
111 (Craig Taylor, Managing Attorney).
_______
Before Cissel, Hohein and Chapman, Administrative Trademark
Judges.
Opinion by Cissel, Administrative Trademark Judge:
On May 15, 1998, applicant filed the above-referenced
application to register the mark “NEWSPHONE” on the
Principal Register for “providing of news information that
customers access by telephone,” in Class 41. The
application was based on applicant’s assertion that he
possessed a bona fide intention to use the mark in commerce
in connection with the services.
The Examining Attorney refused registration under
Section 2(e)(1) of the Lanham Act on the ground that the
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF
THE TTAB
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mark applicant seeks to register is merely descriptive of
the services identified in the application because the mark
identifies the fact that the services are reporting the
news via telephone. He also required that applicant amend
the recitation of services to be more definite, and pointed
out that telephone information services are properly
classified in International Class 42.
Applicant responded by amending the recitation of
services in the application to read as follows: “telephone
information services featuring local, national and
international news that customers access by telephone,” in
Class 42. Applicant also argued that the refusal to
register under Section 2(e)(1) is improper because the mark
is at most suggestive, rather than merely descriptive of
the services set forth in the amended recitation.
Submitted in support of applicant’s position was a
copy of the file history of a prior-filed application, S.N.
75/432,597, by which a third party sought to register the
mark “SNOWPHONE” for “providing information regarding
school and business closings due to whether via telephone,
radio, tv, global computer network.” Applicant argued that
that application had been passed to publication, and that
consistent administration of the Lanham Act by the United
States Patent & Trademark Office requires that the instant
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application also be approved for publication. Applicant
also submitted a list of third-party registrations from a
search report for what applicant asserted were similar
marks registered on the Principal Register without any
disclaimers and without reliance on Section 2(f) of the
Lanham Act.
The Examining Attorney accepted the amended recitation
of services, but was not persuaded by applicant’s evidence
or arguments, so the refusal to register based on Section
2(e)(1) was repeated and made final. In support thereof,
he submitted dictionary definitions of “news” as
“information about recent events and happenings, especially
as reported by newspapers, periodicals, radio, or
television”; and of “phone” as a reference to the
telephone. He repeated his conclusion that in relation to
the services identified the application, the term sought to
be registered would immediately convey to prospective
purchasers the fact that applicant’s services consist of
providing news by means of the telephone.
Also submitted with the final refusal in support of
the Examining Attorney’s position were copies of fifteen
third-party registrations for marks which combine the term
“phone” with other wording. The registrations either
contain disclaimers of the word “phone” or the marks are
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registered on the Principal Register under Section 2(f) or
on the Supplemental Register.
Citing In re Hub Distributing, Inc., 218 USPQ 284
(TTAB 1983), the Examining Attorney noted in his final
refusal that he had not considered the third-party
registrations listed by applicant in his response to the
refusal to register. He pointed out that a search report
is not evidence of the existence of the registrations
listed therein, and, citing Weyerhaeuser Co. v. Katz, 24
USPQ2d 1230 (TTAB 1992), instructed applicant how to make
properly of record copies of the registrations themselves.
In addition, the Examining Attorney submitted copies
of a number of excerpts from articles retrieved from the
Nexis
database of publications. It is clear from
consideration of this evidence that news is now available
to consumers via wireless telephones.
Applicant timely filed a Notice of Appeal, followed by
an appeal brief. Attached as exhibits to applicant’s brief
were copies of the third-party registrations listed in the
search report applicant had submitted in response to the
first Office Action.
The Examining Attorney properly objected to the
additional evidence submitted with applicant’s brief.
Trademark Rule 2.142(d) provides that the record in an
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application should be complete prior to filing the Notice
of Appeal. The Board may, in its discretion, permit
additional evidence to be submitted after that time, but
the rule allows this to be done only in response to a
request by either the applicant or the Examining Attorney.
In the case at hand, neither made such a request, so the
additional materials submitted with applicant’s appeal
brief have not been considered. If the Examining Attorney
had responded to the list of registrations as if the
registrations were properly of record, we would not sustain
his objection to the subsequent submission of actual copies
of them. However, in his second Office Action, the
Examining Attorney did not respond to the merits of the
list of registrations submitted by applicant. Instead, the
Examining Attorney advised applicant that he had not made
the registrations properly of record by submitting a mere
list. As noted above, the Examining Attorney explained to
applicant how to make the third-party registrations of
record, but applicant did not do so prior to the filing of
his Notice of Appeal or by concurrently filing a request
for reconsideration. Thus, when applicant submitted the
copies with his brief, the Examining Attorney, in his
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brief1, timely objected, so under Trademark Rule 2.142(d),
we cannot consider the exhibits.
Applicant did not request an oral hearing before the
Board.
The test for determining whether a mark is merely
descriptive within the meaning of Section 2(e)(1) of the
Lanham Act is well settled. A mark is unregistrable under
this section if it immediately and forthwith provides
information about a significant quality, characteristic,
function, feature, purpose or use of the goods or services
with which it is, or is intended to be, used. In re
MetPath Inc., 223 USPQ 88 (TTAB 1984), and In re Bright-
Crest, Ltd., 204 USPQ 591 (TTAB 1979).
As noted above, applicant seeks to register
“NEWSPHONE” for a telephone information service featuring
local, national and international news that customers can
access by telephone. Applying the ordinary meanings of the
words “NEWS” and “PHONE,” when the mark combining these two
words is considered in connection with the service of
providing news by telephone, it is clear that the mark
1 We accept the Examining Attorney’s explanation of the clerical
mistake that led to the late mailing of his appeal brief. We
therefore have considered it as if it had been timely mailed.
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7
describes the purpose or function of the services.
Applicant makes a number of unpersuasive arguments.
One is that when the descriptive words “news” and “phone”
are combined, whatever information the resulting mark
provides about applicant’s services is “vague” and
“indirect.”(brief, p.4). To the contrary, the combination
of these descriptive words itself provides specific
information with respect to the recited services, namely
that the services consist of providing news by phone.
Applicant submitted no evidence in support of the theory
that the mark is descriptive only in a “vague” or
“indirect” sense.
Applicant contends that a person would have to engage
in a multi-stage reasoning process to determine the
attributes of applicant’s services from consideration of
the mark. As the Examining Attorney points out, however,
whether a mark is merely descriptive is determined not in
the abstract, but rather in relation to the goods or
services for which registration is sought, the context in
which the mark is used, or will be used, in connection with
those goods or services, and the possible significance
which the mark would have, because of that context, to the
average purchaser of the goods or services in the
marketplace where they are sold. In re Abcor Development
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Corp., 588 F.2d 811, 200 USPQ 215 (CCPA 1978). The test is
not whether someone could look at only the mark and
correctly speculate as to significant characteristics,
purposes or functions of the services with which it is
used. The test is whether one who understands what the
services are would be provided with information as to their
characteristics, purposes or functions by consideration of
the mark. This test is plainly met in the instant case.
That the word “phone” could have other connotations in
connection with other products or activities is not
relevant.
Applicant argues that the term sought to be registered
“is being used in a suggestive and non-descriptive manner.”
(brief, p.4). This application is based on applicant’s
assertion that he intends to use the mark, not on a claim
of actual use of it, however. This record contains no
evidence that applicant has in fact used the mark, much
less that it has been used in a “suggestive and non-
descriptive manner.”
Applicant’s argument that “NEWSPHONE” is a coined term
that combines two words to form an incongruous mark is
similarly not well taken. Applicant provides no evidence
or reasoning in support of this contention. To the
contrary, as noted above, the combination of these two
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descriptive words results in a term which is itself merely
descriptive of the services set forth in the application.
Similarly, whether or not anyone else has ever adopted
the term or used the term sought to be registered in
connection with the same or similar services is immaterial.
In re Gould Paper Corp., 834 F.2d 1017, 5 USPQ2d 1110 (Fed.
Cir. 1987). In view of our ruling with respect to the
third-party registrations submitted by applicant with his
brief, there is no evidence that others have registered,
much less used, marks similar to the one sought to be
registered. Moreover, even if the record contained
evidence of registration by others of the same or similar
marks for the same or similar services, such evidence would
not be determinative of this appeal. The Board is not
bound by previous decisions by Examining Attorneys who
passed other marks to publication. In re Nett Designs,
Inc., 57 USPQ2d 1564 (Fed. Cir. 2001). We are obligated to
decide each case before us on its own record and merits.
In re Cosvetic Laboratories, Inc., 202 USPQ 842 (TTAB
1979).
While the information with regard to the application
to register the mark “SNOWPHONE” is properly of record, it
does not constitute any reason to reach the conclusion that
the mark in the case at hand, “NEWSPHONE,” is not merely
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descriptive of the services recited in the instant
application. Applicant does not contend that “SNOWPHONE”
was registered for the services set forth in that
application, claiming only that it was passed to
publication, but was abandoned before registration. Even
if that mark had been registered for those services,
however, as noted above, the Board would not be bound by
the decision of the Examining Attorney in that application
made on that record with regard to that mark for those
services. The mark, the services and all the other
information of record in that case differ from those in the
application which is the subject of this appeal.
The record in this case clearly demonstrates that
“NEWSPHONE,” if used in connection with a telephone
information service featuring local, national and
international news that customers can access by phone,
would be merely descriptive of the services because it
would immediately and forthwith inform potential customers
of the purpose, function, central feature or characteristic
of the services.
Decision: The refusal to register under Section
2(e)(1) of the Lanham Act is affirmed.
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