North South Publica-tions, LLC

Trademark Trial and Appeal Board

Jul 18, 2000

No. 75447252 (T.T.A.B. Jul. 18, 2000)

Paper No. 12
RFC
THIS DISPOSTION IS NOT
CITABLE AS PRECEDENT OF THE TTAB JULY 18, 2000
UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re North South Publications, LLC
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Serial No. 75/447,252
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Carolyn J. Fairless of Otten, Johnson, Robinson, Neff &
Ragonetti, P.C. for North South Publications, LLC.
Irene D. Williams, Trademark Examining Attorney, Law Office
112 (Janice O’Lear, Managing Attorney).
_______
Before Cissel , Hanak and Hohein, Administrative Trademark
Judges.
Opinion by Cissel, Administrative Trademark Judge:
On March 9, 1998, applicant applied to register the
mark “ROCK & ICE” on the Principal Register for what were
subsequently identified by amendment as “paper goods and
printed matter, namely magazines about climbing,” in Class
16. The basis for filing the application was applicant’s
claim of use in interstate commerce since March 1, 1984.
Copies of the February, 1998 issue of the magazine bearing
the mark were submitted as specimens.
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The Examining Attorney refused registration under
Section 2(e)(1) of the Lanham Act on the ground that the
mark is merely descriptive of applicant’s magazines.
In addition to resolving some of the informalities
raised by the Examining Attorney in the first Office
Action, applicant responded to the refusal to register with
argument that its mark is at most suggestive, and hence it
is registrable on the Principal Register without a claim of
distinctiveness under Section 2(f) of the Act.
The Examining Attorney was not persuaded by
applicant’s arguments, and made the refusal to register
based on descriptiveness final in the second Office Action.
Attached to the final refusal to register were copies of
excerpts from articles retrieved from the Nexis  database
of periodical publications. The articles do not show the
term sought to be registered, but they do show that ice
climbing and rock climbing are popular outdoor activities
in the mountains.
Applicant filed a Notice of Appeal from the final
refusal to register. Applicant then filed a brief on
appeal, the Examining Attorney filed her brief, and
applicant filed a reply brief, but applicant did not
request an oral hearing before the Board. We have
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accordingly resolved this appeal based upon the written
record and arguments before us.
After careful consideration of the issue on appeal in
light of these materials, the statute and legal precedent
with the respect to mere descriptiveness under the Lanham
Act, we hold that the refusal to register is improper in
this case because the term sought to be registered is
suggestive, rather than descriptive, of the goods set forth
in the application.
The test for descriptiveness under the Act is well
settled. A term is merely descriptive within the meaning
of the Lanham Act if it immediately and forthwith conveys
information about a siognificant characteristic or feature
of the goods in connection with which it is used. In re
MetPath Inc., 223 USPQ 88(TTAB 1984); In re Bright-Crest,
Ltd., 204 USPQ 591(TTAB 1979). It is the position of the
Examining Attorney that the excerpts retrieved from the
Nexis database show that “Rock and Ice is [sic] part of
the subject matter of the applicant’s magazine…” (First
Office Action), and that, as such, the mark “ROCK & ICE” is
merely descriptive of applicant’s magazine because the
words identify the subject matter of the magazine. In her
second and final Office Action, she refines this
explanation further by stating that “rock and ice are an
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(sic) ingredient, or feature of rock and ice climbing, the
subject matter of the magazine.”
That statement from the final refusal to register
highlights the problem with the Examining Attorney’s
analysis of this application. In accordance with the test
for descriptiveness noted above, if the subject matter of
the magazine were rock and ice, the mark applicant seeks to
register, “ROCK AND ICE,” would be merely descriptive of
the magazine, and hence unregisterable the Principal
Register in the absence of evidence of acquired
distinctiveness under Section 2(f) of the Act. It is
abundantly clear from the application and specimens of use
submitted with it, however, that rock and ice are not the
subjects of applicant’s magazine. As the Examining
Attorney stated in her final refusal, rock and ice climbing
is the subject of the magazine. Rock and ice are the
surfaces on which such climbing is done, but rocks and ice
are not themselves subjects of the magazine; rather,
climbing is.
If a mark does not immediately and directly convey
descriptive information about the product in connection
with which it is used, but instead, some sort of reasoning,
imagination or further thought is required in order to
understand the relationship between the mark and the goods
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in question, then the mark is said to be suggestive, rather
than merely descriptive, of the goods. In re Tennis in the
Round Inc., 199 USPQ 496(TTAB 1978).
This is clearly the situation in the instant case.
Because rock and ice are two of the kinds of surfaces on
which the sport of climbing is conducted, rather than the
subjects of applicant’s magazine, which is climbing, the
mark “ROCK AND ICE” is not merely descriptive of the goods.
The line of demarcation between a suggestive term and
one which is merely descriptive has been described as a
thin one, and a consequence of this fact is that decisions
on this issue are frequently somewhat subjective in nature.
As triers of fact, however, we must attempt to determine
the impact of the mark sought to be registered on the
purchasing public. In re Quick-Print Copy Shop, Inc., 203
USPQ 624 (TTAB 1979), aff'd, 205 USPQ 505 (CCPA 1980). In
the case at hand, doing this has lead us to conclude that
applicant's mark is suggestive, rather than merely
descriptive, of applicant's magazine.
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Accordingly, the refusal to register under Section
2(e)(1) of the Act is improper and must be reversed.
R. F. Cissel
E. W. Hanak
G. D. Hohein
Administrative Trademark Judges
Trademark Trial and Appeal Board
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