RCM Enterprises, Inc.

Trademark Trial and Appeal Board

May 22, 1998

No. 74574975 (T.T.A.B. May. 22, 1998)

Paper No. 8
GDH/AKP
THIS DISPOSITION IS NOT CITABLE
AS PRECEDENT OF THE TTAB MAY 22, 1998
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re RCM Enterprises, Inc.
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Serial No. 74/574,975
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Warren A. Sturm of Sturm & Associates for RCM Enterprises, Inc.
George C. Pologeorgis, Trademark Examining Attorney, Law Office
107 (Thomas Lamone, Managing Attorney).
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Before Hohein, Hairston and Walters, Administrative Trademark
Judges.
Opinion by Hohein, Administrative Trademark Judge:
RCM Enterprises, Inc. has filed an application to
register the phrase "SPECIALTY COFFEE RETAILER" for "magazines
dealing with the business and activities of coffee retailers".1
Registration has been finally refused under Section
2(e)(1) of the Trademark Act, 15 U.S.C. §1052(e)(1), on the basis

1 Ser. No. 74/574,975, filed on September 19, 1994, which alleges dates
of first use of July 5, 1994.
Ser. No. 74/574,975
2
that, when used in connection with applicant’s goods, the phrase
"SPECIALTY COFFEE RETAILER" is merely descriptive of them.
Applicant has appealed. Briefs have been filed, but an
oral hearing was not requested. We affirm the refusal to
register.
It is well settled that a phrase is considered to be
merely descriptive of goods or services, within the meaning of
Section 2(e)(1) of the Trademark Act, if it immediately describes
an ingredient, quality, characteristic or feature thereof or if
it directly conveys information regarding the nature, function,
purpose or use of the goods or services. See In re Abcor
Development Corp., 588 F.2d 811, 200 USPQ 215, 217-18 (CCPA
1978). It is not necessary that a phrase describes all of the
properties or functions of the goods or services in order for it
to be considered to be merely descriptive thereof; rather, it is
sufficient if the phrase describes a significant attribute of
idea about them. Moreover, whether a phrase is merely
descriptive is determined not in the abstract but in relation to
the goods or services for which registration is sought, the
context in which it is being used on or in connection with those
goods or services and the possible significance that the phrase
would have to average purchaser of the goods or services because
of the manner of its use. See In re Bright-Crest, Ltd., 204 USPQ
591, 593 (TTAB 1979). Consequently, "[w]hether consumers could
guess what the product [or service] is from consideration of the
mark alone is not the test." In re American Greetings Corp., 226
USPQ 365, 366 (TTAB 1985).
Ser. No. 74/574,975
3
Applicant essentially argues that the phrase "SPECIALTY
COFFEE RETAILER" is not merely descriptive of the purchasers of
its magazines because, in addition to retailers of specialty
coffees, there "are dozens of others [who are] also interested in
the field," including "sources of coffee beans" and suppliers of
"ancillary goods such a[s] confections and bakery" products. We
agree with the Examining Attorney, however, that the phrase
"SPECIALTY COFFEE RETAILER" merely describes the primary audience
or readership of applicant’s publications, namely, retailers of
specialty coffees.
As the Examining Attorney correctly points out, the
Board in In re Hunter Publishing Co., 204 USPQ 957, 962 (TTAB
1979), stated that "if titles of publications are to be treated
in the same manner as trademarks for other goods in determining
their registrability, and it is the correct practice to preclude
the registration of marks on the Principal Register that serve to
describe the class or classes of users of the merchandise for
which they are used on the ground that they are merely
descriptive designations under Section 2(e)(1), it follows that
registration of tittles of publications should be equally
proscribed if they describe those to whom the magazines are
directed." Likewise, in In re Camel Manufacturing Co., Inc., 222
USPQ 1031, 1032 (TTAB 1984), the Board "embrace[d] the holding
that a mark is merely descriptive if it describes the type of
individuals to whom an appreciable number or all of a party’s
goods or services are directed."
Ser. No. 74/574,975
4
Here, as the Examining Attorney accurately notes,
specialty coffee retailers constitute at least a significant
portion--if not the primary audience or readership--of
applicant’s magazines dealing with the business and activities of
coffee retailers". Applicant, in fact, does not deny that its
publications are principally directed to retailers of specialty
coffees. Moreover, as the Examining Attorney further observes,
the publisher’s note appearing in the premier issue of
applicant’s goods, copies of which issue were submitted by
applicant as specimens, states unequivocally that "Specialty
Coffee Retailer" is "a monthly magazine for managers and owners
of specialty coffee businesses." Lest there be any doubt that
such businesses are known as specialty coffee retailers, the
publisher’s note goes on to state that, "[i]n short, we're a nuts
and bolts business magazine for the specialty coffee retailer"
and that "[t]his magazine is being mailed to 9,000 specialty
coffee retailers."
Thus, while applicant’s magazine, as the specimens
show, also contains advertisements by coffee bean and related
brewing equipment suppliers, and the readership of such
publication would extend to those who provide goods and/or
services to the specialty coffee retailing industry, it is plain
that the primary audience for applicant’s magazines are specialty
coffee retailers. The phase "SPECIALTY COFFEE RETAILER" is
accordingly merely descriptive of applicant’s magazines dealing
with the business and activities of coffee retailers. See, e.g.,
Hunter Co. v. Caulfield Publishing Ltd., 1 USPQ2d 1996, 1998
Ser. No. 74/574,975
5
(TTAB 1986) [term "SYSTEMS USER" held merely descriptive of a
trade journal directed toward users of data processing systems]
and in re Hunter Publishing Co., supra [phrase "JOBBER AND
WAREHOUSE EXECUTIVE" for a trade magazine circulated to jobbers
and warehouse executives in the automotive aftermarket merely
describes "the class or classes of purchasers to whom applicant’s
publication is primarily directed"].
Decision: The refusal under Section 2(e)(1) is
affirmed.
G. D. Hohein
P. T. Hairston
C. E. Walters
Administrative Trademark Judges,
Trademark Trial and Appeal Board