Patents+TMS, P.C.

Trademark Trial and Appeal Board

Aug 19, 2004

No. 76467958 (T.T.A.B. Aug. 19, 2004)

Mailed: August 19, 2004
PTH
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
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In re Patents+TMS, P.C.
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Serial No. 76467958
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Brian M. Mattson of Patents+TMS, P.C. for Patents+TMS, P.C.
Katherine Stoides, Trademark Examining Attorney, Law Office
110 (Chris A. F. Pedersen, Managing Attorney).
_______
Before Hairston, Walters and Chapman, Administrative
Trademark Judges.
Opinion by Hairston, Administrative Trademark Judge:
Patents+TMS, P.C. has filed an application to register
PATENT LETTER NEWS on the Principal Register for
“intellectual property newsletter” in class 16 and
“providing information in the field of intellectual
property via websites on global computer networks” in class
42.1
1 Serial No. 76467958, filed on November 18, 2002, which alleges
a date of first use anywhere and in commerce of November 14,
2002.
THIS OPINION IS NOT
CITABLE
AS PRECEDENT OF
THE TTAB
Ser No. 76467958
2
Registration has been finally refused under Section
2(e)(1) of the Trademark Act, 15 U.S.C. §1052(e)(1), on the
ground that, when used in connection with applicant’s goods
and services, the phrase PATENT LETTER NEWS is merely
descriptive of them.
Applicant has appealed. Briefs have been filed, but
an oral hearing was not requested.
The Examining Attorney argues that the phrase PATENT
LETTER NEWS is merely descriptive of applicant’s goods and
services. In particular, the Examining Attorney maintains
that not only are the individual words comprising the mark
descriptive, but when combined, they create a phrase that
is also descriptive. According to the Examining Attorney,
prospective purchasers would immediately understand that
the nature and subject matter of applicant’s goods and
services are namely a letter in either print or electronic
form featuring patent news.
Applicant, in urging reversal of the refusal to
register, argues that even if the individual words
comprising the mark are descriptive, the combination of
PATENT LETTER NEWS creates a distinct commercial
impression. According to applicant, its mark is at most
suggestive and the relevant purchasers or users of its
goods and services would be required to exercise some
Ser No. 76467958
3
thought to determine the precise nature of applicant’s
goods and services. In support of its position, applicant
relies on In re Shutts, 217 USPQ 363 (TTAB 1983) [SNO-RAKE
held not merely descriptive of a snow removal hand tool];
and In re The Noble Co., 225 USPQ 749 (TTAB 1985) [NOBURST
held not merely descriptive of a product that reduces the
likelihood that pipes will burst].
A mark is merely descriptive if “it forthwith conveys
an immediate idea of the ingredients, qualities or
characteristics of the goods [or services].” Abercrombie &
Fitch Co. v. Hunting World, Inc., 537 F.2d 4, 189 USPQ 759,
765 (2nd Cir. 1976) (emphasis added). See also In re Abcor
Development Corp., 588 F.2d 811, 200 USPQ 215, 218 (CCPA
1978). Moreover, in order to be descriptive, the mark must
immediately convey information as to the ingredients,
qualities or characteristics of the goods or services with
a “degree of particularity.” See In re TMS Corporation of
the Americas, 200 USPQ 57, 59 (TTAB 1978); and In re
Entenmanns Inc., 15 USPQ2d 1750, 1751 (TTAB 1990), aff’d,
unpub’d, Fed Cir. February 13, 1991.
If, however, when the goods or services are
encountered under a mark, a multistage reasoning process,
or resort to imagination, is required in order to determine
the attributes or characteristics of the product or
Ser No. 76467958
4
services, the mark is suggestive rather than merely
descriptive. See In re Abcor Development Corp., supra at
218; and In re Atavio, 25 USPQ2d 1361, 1362 (TTAB 1992).
To the extent that there is any doubt in drawing the line
of demarcation between a suggestive mark and a merely
descriptive mark, such doubt is resolved in applicant’s
favor. In re Atavio, supra at 1363.
The Examining Attorney bears the burden of showing
that a mark is merely descriptive of the identified goods
or services. See In re Merrill, Lynch, Pierce, Fenner, and
Smith Inc., 828 F.2d 21567, 4 USPQ2d 1141, 1143 (Fed. Cir.
1987).
We are not persuaded by the Examining Attorney’s
arguments that PATENT LETTER NEWS as a whole is merely
descriptive of the identified goods and services. We
recognize that the individual words have descriptive
significance inasmuch as applicant’s goods and services
consist of newsletters in printed and electronic form
covering, inter alia, patent topics. However, as the Board
stated in In re Wisconsin Tissue Mills, 173 USPQ 319, 320
(TTAB 1972):
It does not follow as a matter of law that
because component words of a mark may be
descriptive, the composite is unregistrable.
The established rule is that a composite must
be considered in its entirety and the question
Ser No. 76467958
5
then is whether the entirety is merely
descriptive. (citation omitted)
In this case, there is no evidence to indicate how the
relevant purchasers and users of applicant’s goods and
services would perceive the composite mark PATENT LETTER
NEWS. We believe it would be rare for such purchasers and
users to refer to the subject matter of the goods and
services as “patent letter news.”
When we consider applicant’s mark PATENT LETTER NEWS
in its entirety, we find on this ex parte record that it is
only suggestive of the identified goods and services. We
reach this conclusion because of the unnatural order of the
words comprising applicant’s mark and the fact that some,
albeit, minimal mental reasoning is required in order to
determine the nature of applicant’s goods and services.
See Aluminum Fabricating Co. v. Season All Window Corp.,
119 USPQ 61 (2nd Cir. 1958) [SEASON ALL held not merely
descriptive of aluminum windows].
To the extent that there is any doubt in this case, we
have resolved that doubt in applicant’s favor.
Decision: The refusal to register is reversed.