Standard Register Co.

Trademark Trial and Appeal Board

Feb 11, 1998

No. 74557722 (T.T.A.B. Feb. 11, 1998)

Paper No. 17
CEW
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF THE TTAB FEB 11,98
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
___________
Trademark Trial and Appeal Board
___________
In re The Standard Register Company
___________
Serial No. 74/557,722
___________
B. Joseph Schaeff of Killworth, Gottman, Hagan & Schaeff for
applicant.
Hannah Fisher, Trademark Examining Attorney, Law Office 104
(Thomas Lamone, Managing Attorney).
____________
Before Sams, Hanak and Walters, Administrative Trademark
Judges.
Opinion by Walters, Administrative Trademark Judge:
The Standard Register Company has filed a trademark
application to register the mark ISG TALK FREE for
“telephone calling cards.”1
The Trademark Examining Attorney has finally refused
registration under Section 2(e)(1) of the Trademark Act, 15
U.S.C. 1052(e)(1), on the ground that applicant’s mark is

1 Serial No. 74/557,722, in International Class 16, filed August 5,
1994, based on an allegation of a bona fide intention to use the mark in
commerce. On March 15, 1995, during the prosecution of this
application, applicant filed an amendment to allege use, alleging a date
of first use and first use in commerce as of July 11, 1994.
Serial No. 74/557,722
2
deceptively misdescriptive in connection with its goods or,
alternatively, under Section 6 of the Trademark Act, 15
U.S.C. 1056, requiring a disclaimer of TALK FREE on the
ground that it is merely descriptive in connection with
applicant’s goods.2
Applicant has appealed. Both applicant and the
Examining Attorney have filed briefs, but an oral hearing
was not requested. We reverse the refusal to register.
In its brief, applicant describes its goods as follows:
[Applicant’s] goods consist of paper or plastic
cards imprinted with information used to make long
distance telephone calls. The cards are designed
to include an authorization code. When the 800
number is dialed and the authorization code is
entered, the caller may make his or her telephone
calls for the allotted amount of time. . .
[Applicant’s] calling cards sometimes contain
memory permitting a cash value to be programmed
into the cards which are prepaid. [Applicant]
typically distributes prepaid calling cards
bearing the mark to companies which further
distribute the cards to their customers. These
cards allow the ultimate users to make telephone
calls from one location to another without using
actual coins, currency, credit cards or collect
call procedures. [Applicant] acknowledges that it

2 Neither the Examining Attorney nor applicant have raised any question
about the registrability of the first part of this composite mark, the
acronym ISG. Further, the Examining Attorney’s refusal pertains
explicitly only to the phrase TALK FREE. Thus, we do not consider any
question regarding the registrability of ISG to be before us. However,
while the Examining Attorney’s refusal on the ground of mere
descriptiveness includes a requirement for a disclaimer of TALK FREE,
her alternative refusal pertaining to deceptive misdescriptiveness does
not include a requirement for a disclaimer of TALK FREE; rather it
appears to be a refusal to register the mark as a whole. As a
disclaimer of the phrase TALK FREE would be equally appropriate whether
it is merely descriptive or deceptively misdescriptive, we consider the
refusal herein on both or either of these grounds to be in the nature of
a requirement for a disclaimer of TALK FREE.
Serial No. 74/557,722
3
frequently gives phone cards bearing the ISG TALK
FREE mark to customers and prospective customers.
The Examining Attorney contends that since applicant
acknowledges it gives at least some of its phone cards to
customers and prospective customers for no charge, the
phrase TALK FREE merely describes that at least some portion
of applicant’s business customers may receive the cards free
of charge and that persons may use these cards to place
telephone calls free of charge. In support of her position,
the Examining Attorney has submitted a photocopy of a coupon
from MCI, a long distance phone carrier, for ten minutes of
free telephone calls. The coupon includes the following
copy:
MCI® FREE CALL COUPON
Enjoy one FREE MCI Card®
call – up to 10 MINUTES.
Additionally, upon remand, the Examining Attorney submitted
a copy from the PTO records of a third-party registration of
the mark “BUY SMART. TALK FREE.” for “promoting the
services of others through the administration of a bonus
award program comprising the sale of cellular telephone
airtime certificates to retail businesses for distribution
and use by their customers.” The registration includes a
disclaimer of the phrase TALK FREE. The Examining Attorney
contends that this establishes both that this phrase is
merely descriptive “in the industry” and that, “if
Serial No. 74/557,722
4
applicant’s cards do not entail some free long distance
calling time, customers are likely to be misled.”3
Regarding the Examining Attorney’s alternative
argument, that the phrase TALK FREE is deceptively
misdescriptive, the Examining Attorney contends that,
although applicant gives away some of its cards, since
applicant asserts that its cards are not free of charge, the
phrase TALK FREE “conveys false and plausible information
about the goods.”4
Applicant contends that TALK FREE would not be
recognized as merely descriptive of telephone cards.
Applicant argues that the phrase, TALK FREE, has “several
alternative connotations which render the mark as a whole
incongruous,” in particular, that, considered in connection
with applicant’s goods, TALK FREE suggests that applicant’s

3 The Examining Attorney makes several statements regarding alleged
common practices in different industries. For example, she states that
free long distance telephone time “is the subject matter of intense
competition, as demonstrated by the huge volume of television
advertising and telemarketing generated by telephone companies”; that
“such sales incentives are increasingly common”; that “an analogous
sales incentive is common in the cosmetics industry”; and that “the
airlines almost universally award bonus miles and coupons to frequent
flyers.” The Examining Attorney has submitted absolutely no evidence in
support of these statements, nor are they of such a nature as to warrant
us taking judicial notice thereof. Thus, we give no consideration to
these statements in our determination of the issues before us.
4 The Examining Attorney states in this regard that “[m]oreover, the
cards themselves refer to the remaining balance” and “that the true
nature of the goods may be indicated on the back of the cards does not
negate the validity of [the refusal].” The back of the telephone
calling card submitted as a specimen herein contains instructions for
the use of the card. Reference to “the remaining balance” concerns the
number of minutes of use remaining on the card. To the extent that the
Examining Attorney is arguing that the text of the instructions on the
back of the card somehow supports her position, we find this argument
unpersuasive.
Serial No. 74/557,722
5
“telephone calling cards allow purchasers to ‘speak freely’
and to make calls free from the typical encumbrances
incumbent in the use of public telephones.”
Concerning the question of whether the phrase TALK FREE
is deceptively misdescriptive in connection with the
identified goods, applicant contends that the phrase TALK
FREE is suggestive and has an incongruous connotation and,
thus, this phrase does not misdescribe the goods. Applicant
argues, further, that:
[E]ven if ‘TALK FREE’ was held to misdescribe
[applicant’s] goods (i.e., that ‘TALK FREE’ means
there is no charge for [applicant’s] phone cards)
no one is likely to believe that, after purchasing
the goods with money, the goods are free.
Turning, first, to the issue of whether TALK FREE is
merely descriptive of applicant’s goods, we consider whether
TALK FREE immediately conveys information concerning a
quality, characteristic, function, ingredient, attribute or
feature of applicant’s product. In re Bright-Crest, Ltd.,
204 USPQ 591 (TTAB 1979); In re Engineering Systems Corp., 2
USPQ2d 1075 (TTAB 1986). We determine this question on the
basis of the identification of goods or services in the
application before us. See, In re Allen Electric and
Equipment Co., 458 F.2d 1404, 173 USPQ 689 (CCPA 1972); In
re Vehicle Information Network Inc., 32 USPQ 2d 1377 (TTAB
1994); and In re Cryomedical Sciences Inc., 32 USPQ2d 1377
(TTAB 1994). In this regard, we agree with applicant’s
Serial No. 74/557,722
6
contention that, in connection with telephone calling cards,
TALK FREE is, at most, suggestive of a characteristic of
such cards. In particular, TALK FREE may suggest that
applicant’s cards may be used to place telephone calls
without coins or a credit card, i.e., that the cards permit
the user to make prepaid telephone calls. However, TALK
FREE does not directly or immediately convey this
information.5 Thus, we find that TALK FREE is not merely
descriptive in connection with applicant’s telephone calling
cards.
We find the Examining Attorney’s focus on the factual
question of whether applicant sells its telephone calling
cards or distributes them free of charge to be misplaced.
It is clear from the record, and applicant admits, that it
does both. It is likely, although not established herein,
that applicant distributes a certain number of cards free as
a promotional device. However, we find no support for the
Examining Attorney’s contention that TALK FREE directly or
immediately conveys any information about whether the cards

5 The evidence of a single registration for a mark including the phrase
TALK FREE in connection with promotional services for third parties is
not persuasive of a different result herein. Not only is the record of
that registration not part of the record herein, but our determination
of whether TALK FREE is merely descriptive or deceptively misdescriptive
must be based upon the goods recited in the application before us. That
a term may be descriptive of certain goods or services is not
determinative of whether it is descriptive of other goods or services.
In re Stroh Brewery Co., 34 USPQ2d 1796, 1797 (TTAB 1995). Here, the
identification of goods is different from the one in the noted
registration.
Serial No. 74/557,722
7
must be purchased from applicant or whether the cards are
available from applicant free of charge.6
With respect to the Examining Attorney’s refusal on the
ground that TALK FREE is deceptively misdescriptive in
connection with the identified goods, we note that the
inquiry is twofold. First we must determine whether the
proposed mark misdescribes a characteristic, quality,
function, composition or use of the goods. If so, we must
determine whether the misdescription is deceptive, in other
words, whether prospective purchasers are likely to believe
that the misdescription actually describes the goods. The
burden is on the Examining Attorney to submit sufficient
evidence to establish that the term sought to be registered
falls within the proscription of the statute. In re Berman
Bros. Harlem Furniture Inc., 26 USPQ2d 1514 (TTAB 1993)
citing In re Budge Manufacturing Co., Inc., 857 F.2d 773, 8
USPQ2d 1259 (Fed. Cir. 1988). We have determined herein
that TALK FREE is not merely descriptive in connection with
the identified goods. Similarly, we find that TALK FREE
does not immediately convey misdescriptive information
concerning a quality, characteristic, function, ingredient,

6 The evidence of record that MCI has advertised a coupon for free
telephone calls is support only for the fact that a telephone company
may offer, under certain circumstances, free long distance telephone
calling. Applicant does not dispute this fact. This evidence is not
persuasive of the Examining Attorney’s contention that consumers would
perceive of TALK FREE as describing that applicant’s telephone calling
cards are free of charge.
Serial No. 74/557,722
8
attribute or feature of applicant’s goods. While it is
unnecessary for us to proceed to the second part of the test
for deceptive misdescriptiveness, we note that, even if we
had found the phrase to be misdescriptive in connection with
applicant’s goods, the Examining Attorney has presented no
argument regarding the second prong of the analysis of
deceptive misdescriptiveness. As such, we would be
constrained to find that she has not met her burden of
establishing that prospective purchasers would be likely to
believe that any perceived misdescription actually describes
the goods.
In conclusion, we find that TALK FREE is neither merely
descriptive nor deceptively misdescriptive in connection
with telephone calling cards, the goods identified herein.
Decision: The refusal under Section 2(e)(1) of the Act
and the requirement for a disclaimer is reversed.
J. D. Sams
E. W. Hanak
C. E. Walters
Administrative Trademark Judges,
Trademark Trial and Appeal Board