Steven Hoffer

Trademark Trial and Appeal Board

Jul 31, 2001

No. 75681974 (T.T.A.B. Jul. 31, 2001)

7/31/01
Paper No. 15
TEH

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Steven Hoffer
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Serial No. 75/681,974
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Steven Hoffer, pro se.

Priscilla Milton, Trademark Examining Attorney, Law Office 110
(Chris Pedersen, Managing Attorney).
_______

Before Simms, Hanak and Holtzman, Administrative Trademark
Judges.

Opinion by Holtzman, Administrative Trademark Judge:

An application has been filed by Steven Hoffer to register
TRADE FORUM as a mark for the following services:1
Provides a private network service for message exchange,
featuring private access thereto, and licenses for the use
thereof, to host message transmissions among persons or
servers, for enterprises which seek, to exchange, store and

1 Serial No. 75/681,974; filed April 15, 1999 on the Principal Register
alleging a bona fide intention to use the mark in commerce. In
accordance with the Board’s interlocutory action dated January 12,
2001, the mark in this case remains as two words, TRADE FORUM.

THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Ser. No. 75/681,974
2
forward messages with, or to filter messages from, other
enterprises with the aid of a public index used to divide
economic activity into commonly known industrial sectors.
Class 38.

Registration has been finally refused under Section 2(e)(1)
of the Trademark Act on the ground that applicant's mark is
merely descriptive of applicant's services.2
Applicant has appealed. Briefs have been filed, but an oral
hearing was not requested.
The Trademark Examining Attorney argues that TRADE FORUM
describes a significant feature and/or characteristic of the
services, namely a medium and/or place for discussion about
trade. In support of her position, the Examining Attorney has
submitted a dictionary definition of "forum" as "an assembly,
place, radio program etc for the discussion of public matters or
current questions" and "trade" as an adjective meaning "of or
relating to trade or commerce."3 In addition, the Examining
Attorney made of record two third-party registrations wherein the
word FORUM for online services has been disclaimed and five other

2 Applicant had also appealed the Examining Attorney’s final
requirement for an acceptable recitation of services. That issue was
subsequently resolved by an Examiner’s Amendment dated February 14,
2001 and the recitation was amended as indicated above.

3 Webster’s New World Dictionary of American English (1988 3rd ed.).
This evidence was attached to the Examining Attorney’s appeal brief.
The Board may properly take judicial notice of dictionary definitions.
See University of Notre Dame du Lac v. J. C. Gourmet Food Imports Co.,
Inc., 213 USPQ 594 (TTAB 1982), aff'd, 703 F.2d 1372, 217 USPQ 505
(Fed. Cir. 1983).

Ser. No. 75/681,974
3
third-party registrations for meetings and presentations in
general which also contain disclaimers of the word FORUM.
Applicant, on the other hand, contends that TRADE FORUM is a
combination of "amorphous" terms which either individually or
combined, are only suggestive of his "electronic communications
service" and that the Examining Attorney has improperly dissected
the mark in finding it to be descriptive. Applicant submitted
with his brief a dictionary listing (of which we take judicial
notice) defining "forum" as "a medium (as a newspaper) of open
discussion or expression of ideas."4 Applicant claims that there
is also a definition of "forum" as "a place of or meeting for
public discussion" and a variety of definitions of "trade" which,
according to applicant, have no relation to telecommunications.5
Applicant also made of record a copy of his patent (No.

4 Merriam-Webster’s Collegiate Dictionary (10th ed. 1993).

5 Applicant indicates that these definitions were obtained from The
Oxford Dictionary and Thesaurus (Oxford Pub. 1996). Although copies of
the relevant pages from the cited dictionary have not been submitted,
for purposes of this decision, we will assume that the word is defined
as applicant claims.
Ser. No. 75/681,974
4
5,799,151) covering applicant’s method for his "store-and-
forward" message exchange service.6
A term is merely descriptive within the meaning of
Section 2(e)(1) if it immediately conveys knowledge of the
ingredients, qualities, or characteristics of the goods or
services with which it is used. In re Gyulay, 820 F.2d 1216, 3
USPQ2d 1009 (Fed. Cir. 1987). It is not necessary, in order to
find a mark merely descriptive, that the mark describe every
feature, function or characteristic of the services, only that it
describe a single, significant aspect thereof. In re Venture
Lending Associates, 226 USPQ 285 (TTAB 1985). Moreover, the
question of whether a particular term is merely descriptive must
be determined not in the abstract, but in relation to the goods
or services for which registration is sought. See In re
Engineering Systems Corp., 2 USPQ2d 1075 (TTAB 1986).
We agree with the Examining Attorney that the term TRADE
FORUM, when applied to applicant’s online message exchange
services, immediately and without conjecture, describes a

6 Applicant also submitted with its brief a list of third-party
applications which the Examining Attorney has properly objected to as
untimely. Accordingly this evidence has not been considered. Despite
applicant's contention, we do not find that the dispute regarding
applicant's recitation of services in any way prevented applicant from
timely making this evidence of record in accordance with the applicable
rules. In any event, even on the merits, the evidence is unpersuasive.
Third-party applications, as opposed to registrations, are generally
not probative.
Ser. No. 75/681,974
5
significant aspect of those services, namely that applicant is
providing an online forum for the exchange of trade information.7
We do not find either term to be vague or "amorphous" in relation
to the identified services. The dictionary definitions provided
by applicant and the Examining Attorney define the word "forum"
as a "place" or a "medium" for the "open" or "public" discussion
or exchange of ideas. Applicant argues that he offers a "virtual
medium" for his services rather than a "place" or physical forum
on trade; that the word FORUM, unlike a radio program, a
newspaper, or other discussion medium that implies unrestricted
public access, merely suggests his "private" service; and that
this private use is inconsistent with the public connotation of
forum. We believe that the electronic format used in rendering
applicant's service is essentially the online equivalent of a
physical facility. In any event, the meaning of "forum" as a
"medium" for discussion is flexible and certainly broad enough to
encompass a less traditional format than a newspaper or a brick
and mortar conference hall. In fact, the word "medium" itself is
very broadly defined as "a means of mass communication…" and we
note that the "Internet" is used in connection with that
definition as an example of a communications "media" (the

7 We would also point out, in this regard, that while the numerous
cases cited by applicant may provide guidance in determining whether a
particular designation is descriptive, those particular cases are not
factually analogous to the present case and thus, do not mandate a
finding that the present mark is not descriptive.
Ser. No. 75/681,974
6
alternative singular form of "medium") as follows: "The Internet
is the most exciting new media since television."8
As to applicant's contention that he is providing a
"private" rather than a "public" discussion on its website, we
note that one of the dictionary references relied on by applicant
defines "forum" as an "open" discussion, rather than a "public"
discussion. Moreover, the meaning of "public" includes the
"relevant" public as well as the "general" public.9 The relevant
public in this case would be the segment of the public for whom
applicant’s services are intended, that is, the subscribers to
or otherwise authorized users of those services.
In addition, we find that the two third-party registrations
containing disclaimers of FORUM for services involving the online
exchange of information (OPTUM HEALTH FORUMS with "HEALTH FORUMS"
disclaimed; and UF UROLOGY FORUM and design with "UROLOGY FORUM"
disclaimed) provide some additional evidence of the perception of
the word "forum." While third-party registrations are not
conclusive on the question of descriptiveness, they may be used
to show that there is a commonly understood meaning of a word and

8 We take judicial notice of The American Heritage Dictionary of the
English Language. (4th ed. 2000)

9 We take judicial notice of the definition of "public" as: "A group
of people having common interests or characteristics; specif: the group
at which a particular activity or enterprise aims." Webster’s New
Collegiate Dictionary (1979).
Ser. No. 75/681,974
7
that a word has been chosen to convey that meaning. See In re
Melville Corp., 18 USPQ2d 1386 (TTAB 1991).
Applicant further argues that he provides a communications
service "distinct from trade and general business services"; that
his communication services are not "restricted to trade, any more
than is a telephone conversation"; and that in any event the term
"trade" has multiple meanings, none of which denote
communications services. It is clear that the word "trade" would
be perceived as descriptive term as evidenced by the dictionary
definition of "trade" as an adjective meaning "of or relating to
trade or commerce." Purchasers of applicant’s services would
understand that applicant is not providing a "trading" service
but rather a service which allows for the exchange of trade
information.
Applicant maintains that TRADE FORUM, as a whole, is
incongruous because it is a combination of "amorphous terms that
are each susceptible to denoting multiple disparate meanings, but
not telecommunications." Applicant claims that "those who
initially consider the service called 'Trade Forum' would rarely
imagine an interactive on-line service driven by a database …
that relies upon a unique algorithm for industry topics or be
able to guess the actual patented method" or the services
provided by applicant based upon the combined term.
Ser. No. 75/681,974
8
We disagree that there is anything incongruous about the
combined term "TRADE FORUM" that would make it less descriptive
than the individual words. In fact, the combination of these
words provides a more specific description of the services than
either word alone. Applicant's patent provides further evidence
that the relevant public would be likely to attribute the
ordinary dictionary meaning of TRADE FORUM as a whole to
applicant's services. The patent is entitled "Interactive
Electronic Trade Network and User Interface" and the patent
abstract describes the invention, in part, as follows (emphasis
added):
An interactive trade network … [that allows for] … real-time
interactive communications…. … The apparatus creates … a
media for either (a) messaging on mutually exclusive indexed
topics of trade or (b) engaging in pub[l]ic or private real-
time conferencing or electronic mail dedicated to any class
of indexed economic activity. It enables progressive
discussions on, and the retrieval of just the information
needed under, discrete indexed topics on trade
instantaneously.

Whether the words TRADE FORUM either alone or in combination
have "multiple disparate" meanings or whether anyone "would ever
guess" the actual patented method for providing the service is
irrelevant. To begin with, applicant's customers do not need to
understand the underlying technology in order to use applicant's
services. Moreover, as indicated above, the determination of
descriptiveness is not made in the abstract or on the basis of
guesswork, but in relation to the particular service for which
Ser. No. 75/681,974
9
registration is sought.10 In this case, the purchasers of
applicant's services would readily understand the descriptive
meaning or significance of TRADE FORUM in relation to applicant's
services.11
Decision: The refusal to register is affirmed.

10 It is also irrelevant that TRADE FORUM does not describe
"telecommunications services." A mark does not have to describe every
aspect of a service or be the apt name for the service in order to be
merely descriptive. See In re Eden Foods Inc., 24 USPQ2d 1757 (TTAB
1992) and, e.g., In re Aid Laboratories, Incorporated, 223 USPQ 357
(TTAB 1984)

11 Applicant argues that a LEXIS search over the previous ten years
shows that the composite term TRADE FORUM “had not been used in any
articles by major newspapers in conjunction with any database or
network whatsoever.” There is no evidence of record to support this
claim but, more important, the absence of third-party uses of the term,
does not, in any event, make a descriptive term registrable. See In re
Eden Foods Inc., supra. The fact that applicant may be the only entity
using the phrase TRADE FORUM is not dispositive where, as here, the
term unquestionably conveys a merely descriptive meaning and would be
perceived as such by the relevant public. See In re Eden Foods Inc.,
supra.