Louis R. Bucalo

Trademark Trial and Appeal Board

Mar 14, 2001

No. 75486132 (T.T.A.B. Mar. 14, 2001)

03/14/01
Paper No. 9
RFC
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Louis R. Bucalo
________
Serial No. 75/486,132
_______
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 “ALL-NEWS-PHONE” 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 T.T.A.B.
Ser No. 75/486,132
2
mark applicant seeks to register is merely descriptive of
the services identified in the application because the mark
identifies a characteristic or feature of applicant’s
services, namely, that applicant provides all the news by
phone. The Examining Attorney quoted a dictionary
definition of the word “all” as “being or representing the
entire or total number, amount, or quantity. All the
windows are open. Deal all the cards.” The definition of
the word “news” was given as “information about recent
events or happenings, especially reported by newspapers,
periodicals, radio, or television”; and the word “phone”
was identified as simply a reference to the telephone.
Copies of four third-party registrations were also
submitted in support of the refusal to register. In each
of these registrations, “ALL NEWS” is disclaimed or the
entire mark is registered under Section 2(f) of the Lanham
Act.
The Examining Attorney required applicant to amend the
recitation of services to be more definite, and pointed out
that telephone information services are properly classified
in Class 42.
Applicant responded by amending the recitation of
services in the application to read as follows: telephone
information services featuring local, national and
Ser No. 75/486,132
3
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 were a
number of dictionary definitions for the word “phone” and 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 weather via telephone,
radio, tv, [and] 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 and Trademark Office
requires that the instant application also be approved for
publication.
In addition, applicant 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).
The Examining Attorney accepted the amended recitation
of services, but was not persuaded by applicant’s evidence
Ser No. 75/486,132
4
or arguments, so the refusal to register based on Section
2(e)(1) was repeated and made final. He maintained that
the proposed mark describes applicant’s telephone
information services featuring local, national and
international news that customers access by telephone
because applicant “would be reporting the entire news
events or happenings via telephone to its clients.”
Submitted in support of the Examining Attorney’s final
refusal were copies of fifteen third-party registrations
for marks which combine the term “phone” with other
elements. In each, the term “phone” is disclaimed or the
mark is registered on the Supplemental Register or on the
Principal Register under Section 2(f). The Examining
Attorney argued that these registrations support his
conclusion that “phone” is merely descriptive in connection
with services involving the telephone.
Citing In re Hub Distributing, Inc., 218 USPQ 284
(TTAB 1983), the Examining Attorney noted in the 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
Ser No. 75/486,132
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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, and that radio or
television stations which provide only newscasts are
referred to by the terms “all news” stations, “all news”
radio or “all news” television stations.
Applicant timely filed a Notice of Appeal, followed by
an appeal brief. Submitted 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 appeal
brief. Trademark Rule 2.142(d) provides that the record in
an 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
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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
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
1 We accept the Examining Attorney’s explanation of the clerical
mistake that led to the late mailing of his Appeal brief. We
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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).
In the case before, the mark applicant seeks to
register is merely descriptive of the services set forth in
the amended application because it immediately and
forthwith conveys information about a significant
characteristic, function or feature of the services, namely
that applicant’s telephone information services feature all
news. Applying the ordinary meanings of the words “all,”
“news” and “phone,” when the mark combining these words is
considered in connection with the services of providing
news by telephone, it is clear that the mark describes this
characteristic or feature of the services.
Applicant makes a number of unpersuasive arguments in
support of his contention that the mark is not barred from
registration by Section 2(e)(1). One is that when the
descriptive words “ALL,” “NEWS” and “PHONE” are combined,
whatever information the resulting mark provides about
therefore have considered it as if it had been timely mailed.
Ser No. 75/486,132
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applicant’s service is “vague” and “indirect.” (brief,
p.3). 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 only 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 requiring thought,
imagination or perception in order 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
Corp., 588 F.2d 11, 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 service with which it is used.
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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 individual words which make up the mark could have
other connotations in connection with other products or
services is not relevant.
Applicant argues that the term sought to be registered
“is used in a suggestive and non-descriptive manner.”
(brief, p.3). The 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 “ALL-NEWS-PHONE” is a coined
term that combines three 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
three descriptive words results in a term which is itself
merely descriptive of the services set forth in the
application.
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Similarly, whether or not anyone else has ever adopted
the term or used it in connection with the same or similar
services is immaterial. In re Gould Paper Corp., 834 F.2d
1017, five 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 a conclusion that
the mark in the case at hand, “ALL-NEWS-PHONE,” is not
merely descriptive of the services cited in the instant
application. Applicant does not contend that “SNOWPHONE”
was registered for the services set forth in that
Ser No. 75/486,132
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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 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
“ALL-NEWS-PHONE,” 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 a significant purpose, function, feature or
characteristic of the services.
Decision: The refusal to register under Section
2(e)(1) of the Lanham Act is affirmed.