Peterson's Guides, Inc.

Trademark Trial and Appeal Board

Aug 4, 1998

No. 74509777 (T.T.A.B. Aug. 4, 1998)

Hearing: Paper No. 17
September 9, 1997 EWH/AKP
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
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In re Peterson’s Guides, Incorporated
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Serial No. 74/509777
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G. Franklin Rothwell of Rothwell, Figg, Ernst & Kurz, P.C.
for Peterson’s Guides, Incorporated
Brian Weber, Trademark Examining Attorney, Law Office 106
(Mary I. Sparrow, Managing Attorney)
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Before Hanak, Quinn and Walters, Administrative Trademark
Judges.
Opinion by Hanak, Administrative Trademark Judge:
Peterson’s Guides, Incorporated (applicant) has
appealed the Examining Attorney’s final refusal to register
the mark THE EDUCATION CHANNEL in typed form for the
services of “distribution of educational television
programming to cable television systems, and to electronic
and telephonic broadcast and narrowcast systems; and
providing education related information by means of
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interactive telephone prerecorded messages” in International
Class 41, and “providing multiple-user access to a global
computer information network for the transfer and
dissemination of education related information; computer
services, namely providing on-line facilities for real-time
interaction with other users concerning educational topics;
computer services, namely leasing access time to a computer
database in the nature of a community bulletin board in the
field of education; and computer services, namely leasing
access time to computer databases in the field of education”
in International Class 42. Registration was refused under
Trademark Act Section 2(e)(1) on the ground that the
proposed mark merely describes the applicant’s services.
Applicant’s intent-to-use application was filed on April 7,
1994.
Applicant and the Examining Attorney filed briefs and
were present at a hearing held on September 9, 1997.
At the outset one matter should be clarified. While
the Examining Attorney has refused registration of THE
EDUCATION CHANNEL for both applicant’s Class 41 and Class 42
services, the Examining Attorney’s arguments on the issue of
mere descriptiveness have always been limited to the class
41 services. In both Office Actions and in his brief, the
Examining Attorney has failed to explain how applicant’s
mark is merely descriptive of the Class 42 services. Hence,
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we find that the Examining Attorney has simply failed to
prove that the mark THE EDUCATION CHANNEL is descriptive of
applicant’s Class 42 services. Turning to a consideration
of applicant’s Class 41 services, we note that in support of
his refusal to register, the Examining Attorney places a
great deal of reliance on two previous Board decisions,
stating that “because the [present] applicant’s mark is so
similar to each of [those in the two cases] and the services
so closely related, the Board’s analysis therein is
particularly relevant in this case.” (Examining Attorney’s
brief page 4). The two cases are In re Weather Channel,
Inc., 229 USPQ 854 (TTAB 1985) (THE WEATHER CHANNEL held
merely descriptive for television programming services
involving weather information) and In re Conus
Communications Co., 23 USPQ2d 1717, 1719 (TTAB 1992) (ALL
NEWS CHANNEL held “generic for a type of television
channel.”).1
While at first blush the mark THE EDUCATION CHANNEL
appears quite similar in structure to the marks THE WEATHER
CHANNEL and ALL NEWS CHANNEL, there are two significant
distinctions between the present case and the former two

1 In point of fact, the Examining Attorney has also relied upon a
third case, namely, In re Kronholm, 230 USPQ 136 (TTAB 1986).
However, we have given little consideration to this third case
because the Board’s brief discussion of mere descriptiveness was
dicta. In this regard, we note that the Board stated that “while
the resolution of this issue [of nonuse as of the filing date]
renders moot the question of mere descriptiveness, we shall also
decide that issue.” 230 USPQ at 137.
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cases which preclude us from finding, on this record, that
there is no doubt that THE EDUCATION CHANNEL is merely
descriptive of applicant’s Class 41 services.
First, in both the Weather Channel and the All News
Channel cases, the records were replete with evidence of
uses by third parties in a descriptive manner of the terms
“weather channel” and “news channel” respectively. In
contrast, in this case we have absolutely no evidence of any
third-party use in a descriptive manner or otherwise of THE
EDUCATION CHANNEL, or anything remotely similar thereto such
as “education channel” or “educational channel.” While
evidence of third party descriptive use is not an absolute
requirement in order to hold that a word or phrase is merely
descriptive, by the same token, “the absence from this
record of evidence of any descriptive use of the term [in
question] … reinforces our view that [applicant’s] mark is
not merely descriptive.” Concurrent Technologies Inc. v.
Concurrent Technologies Corp., 12 USPQ2d 1054, 1058 (TTAB
1989).
Second, the Examining Attorney acknowledges that
applicant’s recited services do not encompass a television
channel or a television network. Thus, as applied to the
Class 41 services recited in the application, the word
“channel” is somewhat ambiguous. In contrast, the services
in the All News Channel case were television broadcasting
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(i.e. a television channel). Likewise, the services in
Kronholm, where COLLEGE CABLE NETWORK was found to be merely
descriptive, were “cable television network services.” 230
USPQ at 136.
We do acknowledge that the Weather Channel case is more
similar to the present case in that the applicant in that
case, like the present applicant, was “not directly involved
in television broadcasting.” 229 USPQ at 855-56. Like the
present applicant, the applicant in the Weather Channel case
prepared television programming which was in turn
disseminated by others (i.e. broadcasters, cable networks
etc.). However, in the Weather Channel case, the Examining
Attorney presented evidence that the term “weather channel”
was the generic name for a type of television station, and
that applicant’s customers for its television programming
services featuring weather information were these very
“weather channels.” (i.e. television transmission companies
featuring a most exclusively weather information). Hence,
the Board held that THE WEATHER CHANNEL was merely
descriptive for applicant’s television programming services
featuring weather information because said phrase “merely
describes the class of users [weather channels] to which the
[applicant’s] services are primarily directed.” 229 USPQ at
856. In contrast, in the present case we have no
information of record showing that the term “education
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channel” or anything similar (e.g. “educational channel”)
are generic terms for any type of channels, networks,
transmissions or broadcasts which feature educational
subject matter.
Accordingly, based on this very sparse record, we are
constrained to find that there exist, at a minimum, doubts
as to whether applicant’s mark THE EDUCATION CHANNEL is
descriptive for the services recited in the application. Of
course, if there are doubts on the issue of mere
descriptiveness, this Board has a policy of resolving said
doubts in favor of the applicant. In re the Stroh Brewery
Co., 34 USPQ2d 1796, 1797 (TTAB 1995).
Decision: The refusal to register is reversed.
E. W. Hanak
T. J. Quinn
C. E. Walters
Administrative Trademark
Judges, Trial Trademark
Trial and Appeal Board
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