Rogue Valley Trans-portation District

Trademark Trial and Appeal Board

Apr 30, 2002

No. 75510711 (T.T.A.B. Apr. 30, 2002)

4/30/02
Paper No. 14
RFC

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Rogue Valley Transportation District
________

Serial No. 75/510,711
_______

Davis S. D’Ascenzo of Kolisch, Hartwell, Dickenson, McCormack & Heuser for
Rogue Valley Transportation District.

LaVerne T. Thompson, Trademark Examining Attorney, Law Office 116 (Meryl
Hershkowitz, Managing Attorney).
_______

Before Cissel, Hairston and Drost, Administrative Trademark Judges.

Opinion by Cissel, Administrative Trademark Judge:
On June 30, 1998, the above-referenced application was filed by Rogue
Valley Transportation District, which is a publicly owned entity of Jackson
County, Oregon. The application sought registration on the Principal Register of
the mark “INTERACTIVE BUS” for “advertising and promotional services and
advertising and promotional kits.” The application was based on applicant’s
assertion that it possessed a bona fide intention to use the mark in interstate
commerce in connection with these services.
THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
The Examining Attorney required applicant to disclaim the descriptive
term “BUS” apart from the mark as shown, and required amendment to the
recitation of services to clarify the reference to “kits.”
Applicant declined to submit the requested disclaimer, but amended the
application to recite the services as follows: “advertising services, namely,
advertising the goods and services of others in various media on public and
private transportation vehicles; and promotional services, namely, promoting the
use and awareness of public transportation through the creation and display of
various media on public and private transportation vehicles.”
The Examining Attorney then refused registration under Section 2(e)(1) of
the Lanham Act, 15 U.S.C. Section 1052(e)(1), on the ground that the mark
applicant seeks to register is merely descriptive of the services identified in the
amended application. She held that “applicant’s mark merely describes a feature
or characteristic of its interactive advertising services, that its advertisements are
used in connection with the bus vehicles.”
Attached to the refusal to register were copies of excerpts retrieved from
the Nexis automated database of published articles. She argued that this
evidence “shows that interactive advertising is a form of advertising and buses
are commonly used by advertising agencies as a means of advertising goods and
services.”
This is exactly what this evidence does show, i.e., that “Interactive” is a
term used in connection with advertising and that buses are used to advertise
products. Of the dozens of excerpts, however, only four show use of the words
“interactive” and “bus” together. The first is from something identified as
“Brunico Communications, Inc. Kidscreen” dated November 1, 1998. It is not
clear whether this is a printed publication or something available on the Internet,
but the article states that “Cartoon Network’s ‘Dexter’s Duplication Machine’ is a
gigantic traveling bus, dressed up as a laboratory modeled after Cartoon
Network’s leading show, on the road to promote the prime-time launch of the
show as a strip last June. The interactive bus visited 24 cities…” The second
relevant excerpt is from the September 3, 1997, edition of The Chicago Tribune.
It describes “… a season-long promotion during which an interactive bus with
the first-ever ’mobile Website production studio’ will be visiting packed parking
lots of college football stadiums across the country.” The third excerpt is from
the April 30, 1997 addition of The Ethnic Newswatch. It states that “Under her
watch, the department also implemented the nation’s first interactive bus
simulator to expose trainees to the rigors of operating a transit vehicle in a real-
life environment.” The only other excerpt which uses the term sought to be
registered is from the November, 1994 edition of The Journal of Systems
Management. It states that “Allstate arranged to put kiosks in subway stations
(adjacent to the bus arrival area) on the basis of providing the transit authority
the opportunity to provide interactive bus schedules to the public.”
Applicant responded to the refusal to register with argument that
“INTERACTIVE BUS” is not merely descriptive of the services with which
applicant intends to use it. Applicant did not dispute that buses are commonly
used by advertising agencies as a means of displaying advertising for the goods
and services of others, or that “interactive advertising” is a form of advertising,
but contended that neither of these facts supports the conclusion that the
combination of “INTERACTIVE” and “BUS” is merely descriptive of the service
of advertising the goods and services of others in various media on public and
private transportation vehicles or promoting the use and awareness of public
transportation through the creation and display of various media on such
vehicles.
Applicant pointed out that only four of the many excerpts submitted by
the Examining Attorney actually show use of the term applicant seeks to register,
and that none of them uses the term descriptively in connection with services in
the nature of those recited in the application, which do not involve interaction
over the Internet, are not computerized, and are not even electronic. Applicant
reiterated that its services involve advertising placed on vehicles.
Further in support of its contention that its mark is not merely descriptive
of its services, applicant listed nine registered trademarks which combine the
word “INTERACTIVE” with other terms for a variety of goods and services.
These marks include “INTERACTIVE TRAINER,” “INTERACTIVE
DISTRIBUTION,” “INTERACTIVE HOMES,” and INTERACTIVE DAILY,” for,
respectively, hydraulic resistance exercise machines, pre-recorded audio tapes
and publications featuring advice for entrepreneurs, a newsletter dealing with
interactive electronic communications, and computer software which provides
information and graphic displays of residential homes.
The Examining Attorney was not persuaded by applicant’s arguments or
evidence. In her third Office Action, she maintained the refusal to register under
Section 2(e)(1) of the Act, holding that the mark is merely descriptive of the
services, but alternatively, that if this is not the case, that the mark is nonetheless
unregistrable because it is deceptively misdescriptive of the services with which
applicant intends to use it.
Attached to the refusal were copies of a number of third-party
registrations which she contended establish that “interactive” is a term used in
the advertising industry and that buses are often used to present advertising.
She also submitted a dictionary definition of the word “interactive” as “(1).
Acting or capable of acting on each other; (2). computer science. Of or relating to
a two-way electronic or communications system in which response is direct and
continual; (3). Of, relating to, or being a form of television entertainment in
which the signal activates electronic apparatus in the viewer’s home in order for
uses of the apparatus to affect events on the screen, or both.”
Additionally, she advised applicant that the list of registrations submitted
by applicant in response to the refusal to register did not make said registrations
of record, but that copies of the registrations or electronic equivalents of copies
could be submitted.
Applicant requested reconsideration of the refusal. Along with this
request, applicant submitted print and press materials showing applicant’s use of
its mark on buses to advertise the goods or services of others or to promote the
use an awareness of public transportation. Again, applicant did not dispute that
some advertising may be “interactive,” or that its own services involve buses, but
argued that the combination of these two terms does not immediately and
forthwith convey significant information about the services set forth in the
application.
With her fourth Office Action, the Examining Attorney repeated and
made final the refusal to register under Section 2(e)(1) of Lanham Act, citing both
the provision against registration of a mark that is merely descriptive of the
goods or services and the provision barring registration of marks which are
deceptively misdescriptive of them.
Applicant timely filed a Notice of Appeal, followed by its appeal brief.
The Examining Attorney also filed an appeal brief, and applicant filed a reply
brief, but applicant did not request an oral hearing before the Board.
A mark is merely descriptive under Section 2(e)(1) of the Lanham Act if it
immediately and forthwith conveys significant information with regard to a
quality, characteristic, function, feature, purpose or use of the services with
which is, or is intended to be, used. In re Gyulay, 820 F.2d 1216, 3 USPQ2d 1009
(Fed. Cir. 1987). This determination is not conducted in a vacuum, but rather,
whether a mark is merely descriptive must be determined in relation to the
services as they are recited in the application. In re Abcor Development Corp.,
588 F.2d 811, 200 USPQ 215 (CCPA 1978). The fact that the term may have
different meanings in other contexts is not determinative. In re Bright-Crest,
Ltd., 204 USPQ 591 (TTAB 1979).
Section 2(e)(1) of the Lanham Act also provides that a mark which is
deceptively misdescriptive of the services in connection with which it is used or
is intended to be used is similarly unregistrable. Whereas a mark is descriptive if
it conveys accurate information with regard to the services in question, if the idea
conveyed by the mark is false, yet plausible, then the mark is considered to be
deceptively misdescriptive of the services. In re Woodward & Lothrop Inc., 4
USPQ2d 1412 (TTAB 1987).
Based on careful consideration of the record in this application in light of
the arguments made by both applicant and the Examining Attorney, as well as
the relevant legal authority on these issues, we hold that neither cited provision
of Section 2(e)(1) of the Lanham Act supports refusing registration in this case.
Simply put, this record does not show that the combined term “INTERACTIVE
BUS” immediately and forthwith conveys, either accurately or inaccurately, any
significant information about the services recited in this application.
As noted above, it is clear that advertising can be interactive, i.e., it can
utilize a two-way electronic or communication system featuring direct response.
Likewise, is apparent from this record that applicant’s advertising services
involve buses. Applicant is a public transportation company, and the materials
submitted with the request for reconsideration show pictures of buses on which
advertisements are presented.
While applicant’s advertisements may be considered “bus” advertising,
such advertising is not, however, “interactive,” within common usage of this
term as evidenced by the dictionary definition made of record by the Examining
Attorney. Moreover, nothing in this record establishes that there is anything
known as “interactive bus” advertising, or that the word “interactive” is ever
used in connection with advertising on buses. The evidence of record also
supports the conclusion that the mark “INTERACTIVE BUS” is somewhat
incongruous for applicant’s services. It is not clear what “interactive bus”
advertising and promotional services would be. The four excerpts retrieved
from the Nexis database which do show use of the combined term sought to be
registered, “INTERACTIVE BUS,” certainly do not show use of this combination
in a descriptive sense in connection with the kind of advertising and promotional
activities recited in this application.
In summary, because this mark, in it entirety, does not immediately
convey significant information with regard to the services set forth in the
application, and because it likewise does not convey false information with
regard to those services, Section 2(e)(1) of the Lanham Act does not prohibit its
registration.
As noted above, however, the record does establish that the word “BUS”
is merely descriptive of these services. The word describes a feature or
characteristic of the services because buses are used to display applicant’s
advertisements and promotions. Accordingly, the requirement for a disclaimer
of the word “BUS” apart from the mark as shown is plainly appropriate. We
consider the disclaimer requirement made in the first Office Action to have been
merged with the subsequent refusal to register the entire mark under Section
2(e)(1), so if applicant submits such a disclaimer within thirty days of the
issuance of this ruling, the refusal to register will be reversed. In the absence of
the disclaimer, the refusal to register will be affirmed.