Strategic Weather Services, L.P.

Trademark Trial and Appeal Board

Nov 30, 2000

No. 75388880 (T.T.A.B. Nov. 30, 2000)

Hearing: 11/30/00 Paper No.
17
May 17, 2000 GFR
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Strategic Weather Services, L.P.
________
Serial Nos. 75/254,836; 75/254,837; 75/254,838; 75/254,839;
75/254,840; 75/254,841; 75/254,842; 75/254,844; 75/254,845;
75/254,846; 75/254,847; 75/254,848; 75/254,849; 75/254,850;
75/388,875; and 75/388,880
_______
Timothy D. Pecsenye and Rachel L. Brendzel of Blank Rome
Comisky & McCauley for Strategic Weather Services, L.P.
Paula B. Mays, Trademark Examining Attorney, Law Office 114
(Mary Frances Bruce, Managing Attorney).
_______
Before Seeherman, Holtzman and Rogers, Administrative
Trademark Judges.
Opinion by Rogers, Administrative Trademark Judge:
By the 16 applications involved herein, applicant
seeks registration of the following marks, for the
identified services.1 Each application is based on
applicant's allegation of a bona fide intention to use the
mark in commerce.
THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Serial Nos. 75/254,836; 75/254,837; 75/254,838; 75/254,839;
75/254,840; 75/254,841; 75/254,842; 75/254,844; 75/254,845;
75/254,846; 75/254,847; 75/254,848; 75/254,849; 75/254,850;
75/388,875; and 75/388,880
2
BIKEWEATHER, Serial No. 75/254,836, filed March 10, 1997;
services identified as "weather information and planning
service provided via a global computer network, television,
cable, and telephone, offering weather maps, data,
information, and graphics focused around the event of
biking."
BOATINGWEATHER, Serial No. 75/254,837, filed March 10,
1997; services identified as "weather information and
planning service provided via a global computer network,
television, cable, and telephone, offering weather maps,
data, information, and graphics focused around the event of
boating."
CAMPINGWEATHER, Serial No. 75/254,838, filed March 10,
1997; services identified as "weather information and
planning service provided via a global computer network,
television, cable, and telephone, offering weather maps,
data, information, and graphics focused around the event of
camping."
GOLFWEATHER, Serial No. 75/254,839, filed March 10, 1997;
services identified as "weather information and planning
service provided via a global computer network, television,
cable, and telephone, offering weather maps, data,
information, and graphics focused around the event of
golf."
FISHINGWEATHER, Serial No. 75/254,840, filed March 10,
1997; services identified as "weather information and
planning service provided via a global computer network,
television, cable, and telephone, offering weather maps,
data, information, and graphics focused around the event of
fishing."
HIKINGWEATHER, Serial No. 75/254,841, filed March 10, 1997;
services identified as "weather information and planning
service provided via a global computer network, television,
cable, and telephone, offering weather maps, data,
information, and graphics focused around the event of
hiking."

1 Because the major portion of each identification is identical,
the variable terms have been set forth in italics.
Serial Nos. 75/254,836; 75/254,837; 75/254,838; 75/254,839;
75/254,840; 75/254,841; 75/254,842; 75/254,844; 75/254,845;
75/254,846; 75/254,847; 75/254,848; 75/254,849; 75/254,850;
75/388,875; and 75/388,880
3
HUNTINGWEATHER, Serial No. 75/254,842, filed March 10,
1997; services identified as "weather information and
planning service provided via a global computer network,
television, cable, and telephone, offering weather maps,
data, information, and graphics focused around the event of
hunting."
PARTYWEATHER, Serial No. 75/254,844, filed March 10, 1997;
services identified as "weather information and planning
service provided via a global computer network, television,
cable, and telephone, offering weather maps, data,
information, and graphics focused around the event of a
party."
SAILINGWEATHER, Serial No. 75/254,845, filed March 10,
1997; services identified as "weather information and
planning service provided via a global computer network,
television, cable, and telephone, offering weather maps,
data, information, and graphics focused around the event of
sailing."
SKIWEATHER, Serial No. 75/254,846, filed March 10, 1997;
services identified as "weather information and planning
service provided via a global computer network, television,
cable, and telephone, offering weather maps, data,
information, and graphics focused around the event of
skiing."
TENNISWEATHER, Serial No. 75/254,847, filed March 10, 1997;
services identified as "weather information and planning
service provided via a global computer network, television,
cable, and telephone, offering weather maps, data,
information, and graphics focused around the event of
tennis."
TRAVELWEATHER, Serial No. 75/254,848, filed March 10, 1997;
services identified as "weather information and planning
service provided via a global computer network, television,
cable, and telephone, offering weather maps, data,
information, and graphics focused around the event of
planning travel."
VACATIONWEATHER, Serial No. 75/254,849, filed March 10,
1997; services identified as "weather information and
planning service provided via a global computer network,
Serial Nos. 75/254,836; 75/254,837; 75/254,838; 75/254,839;
75/254,840; 75/254,841; 75/254,842; 75/254,844; 75/254,845;
75/254,846; 75/254,847; 75/254,848; 75/254,849; 75/254,850;
75/388,875; and 75/388,880
4
television, cable, and telephone, offering weather maps,
data, information, and graphics focused around the event of
a vacation."
WEDDINGWEATHER, Serial No. 75/254,850, filed March 10,
1997; services identified as "weather information and
planning service provided via a global computer network,
television, cable, and telephone, offering weather maps,
data, information, and graphics focused around the event of
a wedding."
INSURANCEWEATHER, Serial No. 75/388,875, filed November 12,
1997; services identified as "weather information and
planning service provided via a global computer network,
television, cable, and telephone, offering weather maps,
data, information, and graphics relating to insurance."
AGRICULTURALWEATHER, Serial No. 75/388,880, filed November
12, 1997; services identified as "weather information and
planning service provided via a global computer network,
television, cable, and telephone, offering weather maps,
data, information, and graphics relating to agriculture."
In each application, registration has been refused
under Section 2(e)(1) of the Trademark Act, 15 U.S.C.
§1052(e)(1), on the basis that, as proposed to be used in
connection with applicant's services, each mark is merely
descriptive of the identified services. When the Examining
Attorney made each refusal final, applicant appealed.
Briefs have been filed in each case. The cases were
consolidated, at the request of applicant, for a single
oral hearing.
Serial Nos. 75/254,836; 75/254,837; 75/254,838; 75/254,839;
75/254,840; 75/254,841; 75/254,842; 75/254,844; 75/254,845;
75/254,846; 75/254,847; 75/254,848; 75/254,849; 75/254,850;
75/388,875; and 75/388,880
5
The Examining Attorney's argument in support of each
refusal is substantially the same.2 Specifically, in regard
to consumer perception of each mark, the Examining Attorney
argues that the applicant offers weather information
services which are relevant to those individuals interested
in the activity or type of event which, in each mark, is
the term coupled with "weather"; that each mark defines a
feature of applicant's services, namely, weather
forecasting for individuals with a specific interest; that
applicant's coupling of the term weather with the term for
an event or activity does not result in a composite term
with its own unique or incongruous meaning; that
prospective users of applicant's services, when viewing
each mark, will immediately know that activity- or event-
specific weather information services are being offered;
and that it is immaterial whether applicant proposes to use
the mark only for services targeted to particular
industries. The Examining Attorney also argues that other
"weather information services presently, or will most

2 Because both the Examining Attorney and applicant view these
cases as presenting similar issues, it is understandable that
office actions, responses and even briefs would be similar.
However, we are dismayed at the occasional sloppiness of both the
Examining Attorney and the applicant. Each has included
arguments or evidence in some files that are clearly directed to
marks in other files.
Serial Nos. 75/254,836; 75/254,837; 75/254,838; 75/254,839;
75/254,840; 75/254,841; 75/254,842; 75/254,844; 75/254,845;
75/254,846; 75/254,847; 75/254,848; 75/254,849; 75/254,850;
75/388,875; and 75/388,880
6
likely use the [particular, composite] term, or variation
thereof, in connection with similar services"; that
evidence retrieved from the Internet supports this
argument; that the absence of each composite term from the
dictionary is not dispositive; that merely because the
applicant may be the first or only user of these composite
terms, it is not entitled to their exclusive use; and that
consumers searching the Internet for services like
applicant's would have need to use the terms forming
applicant's composites.
Applicant, in contrast, views the absence of the
composite terms from dictionaries as significant; argues
that each composite is a unitary mark which is either
incongruous or ambiguous; notes that each of its marks is
not the separate activity- or event- specific term and the
term weather, with a space between them, but a composite
without a space which thereby creates a visually
distinctive mark; that prospective consumers considering
the mark would think of many possible goods or services;
that its composite terms can be held descriptive only if
applicant's services were the first or only meaning a
prospective consumer would ascribe to each composite,
considered by itself and before considering it "in light
Serial Nos. 75/254,836; 75/254,837; 75/254,838; 75/254,839;
75/254,840; 75/254,841; 75/254,842; 75/254,844; 75/254,845;
75/254,846; 75/254,847; 75/254,848; 75/254,849; 75/254,850;
75/388,875; and 75/388,880
7
of" the services; and that applicant, in any event, is "not
simply a weather forecaster" but, rather, provides
customized information to different industries and focuses
on extremely long-range weather forecasting (i.e., over the
course of many years). Applicant also notes the Examining
Attorney's reports that no conflicting marks were found
during searches of the register and argues that this
supports applicant's position because it is clear that
applicant is not in any way inhibiting competition; and
that, in any event, applicant's registration of the
composites would not prevent others from using the
individual terms which form the composites. Finally,
applicant also argues that the Examining Attorney, in
assessing each mark, has improperly dissected it, and has
erred by failing to resolve doubt in favor of applicant and
allow each mark for publication in the Official Gazette.
It is well settled that a term is considered merely
descriptive of 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 services. In re Abcor
Development Corp., 588 F.2d 811, 200 USPQ 215, 217-218
Serial Nos. 75/254,836; 75/254,837; 75/254,838; 75/254,839;
75/254,840; 75/254,841; 75/254,842; 75/254,844; 75/254,845;
75/254,846; 75/254,847; 75/254,848; 75/254,849; 75/254,850;
75/388,875; and 75/388,880
8
(CCPA 1978); see also In re Gyulay, 820 F.2d 1216, 3 USPQ2d
1009 (Fed. Cir. 1987). In contrast, if a prospective
consumer of the goods or services, when confronted with the
mark used in connection therewith, must use imagination,
thought or perception to reach a conclusion on the nature
of the goods or services, then the mark is not properly
refused registration as descriptive. Gyulay, supra, 3
USPQ2d at 1009.
It is not necessary that a term describe all of the
attributes of the goods or services in order for it to be
merely descriptive thereof; rather, it is sufficient if the
term describes a significant feature, function, purpose or
use of the goods or services. Abcor, supra, 200 USPQ at
217. Thus, the fact that applicant's marks do not indicate
that its services will be targeted to specific industries
and will involve only extremely long-range prediction of
weather patterns does not help applicant avoid a finding of
mere descriptiveness. Moreover, such restrictions are not
included in the respective recitations of services.
Whether a term is merely descriptive is determined not
in the abstract, but in relation to the services for which
registration is sought, the context in which it is being
used on or in connection with those services and the
Serial Nos. 75/254,836; 75/254,837; 75/254,838; 75/254,839;
75/254,840; 75/254,841; 75/254,842; 75/254,844; 75/254,845;
75/254,846; 75/254,847; 75/254,848; 75/254,849; 75/254,850;
75/388,875; and 75/388,880
9
possible significance that the term would have to the
average purchaser 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). Thus, applicant errs in
arguing that its marks can only be held descriptive if
consumers, considering the marks in the abstract, would
think first or only of applicant's services.
We find unpersuasive applicant's argument that each of
its marks is visually distinctive because words that are
normally separated by a space have been set forth as a
composite. We find that each composite would readily be
perceived as the two words joined together, not as
something new or different.
Before turning to our consideration of the individual
marks, some general comments regarding the Internet
evidence submitted by the Examining Attorney are in order.
In each case, the Examining Attorney argues that she has
made of record evidence gathered during searches of the
Internet that is sufficient to show descriptive use of the
Serial Nos. 75/254,836; 75/254,837; 75/254,838; 75/254,839;
75/254,840; 75/254,841; 75/254,842; 75/254,844; 75/254,845;
75/254,846; 75/254,847; 75/254,848; 75/254,849; 75/254,850;
75/388,875; and 75/388,880
10
relevant mark. In all but a few cases, however, we agree
with applicant that this plainly is not so.
Consider, for example, the WEDDINGWEATHER application.
The Examining Attorney asserts "that a search of the term
'WEDDINGWEATHER' retrieves over 857260 sites." However,
merely indicating the number of "hits" retrieved is of no
probative value; we have no way of ascertaining what the
sites show.
In many of the 16 applications before us, the
Examining Attorney's Internet "evidence" consists solely of
the "search results list" generated by a search of the
Internet for the terms in each mark. Moreover, the vast
majority of the "hits" on the search results list appear to
feature only one of the two relevant terms used in each
search.3 As for the web site pages which were made of
record, we point out that merely because two words can be
found somewhere in the same web site does not necessarily
show that the combined words are merely descriptive.
With the foregoing settled propositions of law in
mind, and having disposed of some of the common arguments

3 There may well be sites that feature both terms sought by a
particular search, and they may even be featured in close
proximity. Without copies of the web pages themselves, we are
unable to draw a conclusion either way.
Serial Nos. 75/254,836; 75/254,837; 75/254,838; 75/254,839;
75/254,840; 75/254,841; 75/254,842; 75/254,844; 75/254,845;
75/254,846; 75/254,847; 75/254,848; 75/254,849; 75/254,850;
75/388,875; and 75/388,880
11
in the involved files and briefs, we now consider the
individual marks.
Serial Nos. 75/254,836; 75/254,837; 75/254,838; 75/254,839;
75/254,840; 75/254,841; 75/254,842; 75/254,844; 75/254,845;
75/254,846; 75/254,847; 75/254,848; 75/254,849; 75/254,850;
75/388,875; and 75/388,880
12
PARTYWEATHER, VACATIONWEATHER, WEDDINGWEATHER
We find three of applicant's marks to possess a
certain ambiguity, when considered in connection with the
identified services, such that they are not merely
descriptive. These are PARTYWEATHER, VACATIONWEATHER and
WEDDINGWEATHER.
The only probative evidence the Examining Attorney has
submitted with respect to these marks are dictionary
definitions of "weather" and, respectively, "party,"
"vacation," and "wedding." Applicant's mating of these
terms does not result in marks that take on different
overall meanings. In other words, for example, "party" and
"weather" retain their normal meanings when coupled to
create PARTYWEATHER. Nonetheless, we find each of these
three composites to be imbued with a degree of vagueness
that precludes us from finding that they immediately
describe the nature of applicant's services. We find it
generally known and not subject to reasonable dispute that
parties, vacations and weddings are year-round activities
occurring indoors and out and in all kinds of weather. In
short, there is no one type of weather best suited to these
activities. Because of the vagueness of these terms the
Serial Nos. 75/254,836; 75/254,837; 75/254,838; 75/254,839;
75/254,840; 75/254,841; 75/254,842; 75/254,844; 75/254,845;
75/254,846; 75/254,847; 75/254,848; 75/254,849; 75/254,850;
75/388,875; and 75/388,880
13
marks have a suggestive quality. Accordingly, we reverse
each of these refusals of registration.
INSURANCEWEATHER
In the INSURANCEWEATHER application file, the evidence
of record includes not only dictionary definitions of
"insurance" and "weather," but the results of searches of
the Internet by both the applicant and the Examining
Attorney, and the results of a search of the NEXIS database
by the Examining Attorney. As with the three marks we have
already discussed, the Examining Attorney again misstates
the import of the evidence. The Examining Attorney is
plainly wrong when she argues that the Internet and NEXIS
evidence reveals that "'Insurance Weather' is [a]
recognizable industry term as such is used by competitors
in the industry." The Internet and NEXIS search results do
not include a single reference to "insuranceweather" or
"insurance weather". What the evidence does establish is
that "weather insurance" is a common form of insurance.
In part because of the common use of "weather
insurance," we find applicant's composite INSURANCEWEATHER,
which reverses the common phrase, creates an incongruity.
Accordingly, we reverse this refusal of registration.
Serial Nos. 75/254,836; 75/254,837; 75/254,838; 75/254,839;
75/254,840; 75/254,841; 75/254,842; 75/254,844; 75/254,845;
75/254,846; 75/254,847; 75/254,848; 75/254,849; 75/254,850;
75/388,875; and 75/388,880
14
TRAVELWEATHER, AGRICULTURALWEATHER
In contrast to the four marks and application files
already discussed herein, there is evidence in the
TRAVELWEATHER and AGRICULTURALWEATHER files that show
descriptive use of the phrases "travel weather" and
"agricultural weather."
In regard to the former, the Examining Attorney's
search of the Internet reveals that Travelforecast.com
offers site visitors "customized travel weather forecasts."
Another site, cirrus.spl.umich.edu, includes a link to
"Travel Cities Weather." While this latter site does not
use the precise phrase "travel weather," it supports our
conclusion that travel weather forecasts or travel weather
reports are available to prospective travelers. Use of the
phrase "travel weather" in conjunction with a weather
information and planning service focusing on travel would
immediately be perceived as a weather forecasting or
weather reporting service for prospective travelers.
Accordingly, we affirm the refusal of registration of
TRAVELWEATHER.
Likewise, there is significant evidence of record,
both from the Internet and the NEXIS database, of
Serial Nos. 75/254,836; 75/254,837; 75/254,838; 75/254,839;
75/254,840; 75/254,841; 75/254,842; 75/254,844; 75/254,845;
75/254,846; 75/254,847; 75/254,848; 75/254,849; 75/254,850;
75/388,875; and 75/388,880
15
descriptive use of "agricultural weather." The phrase is
used for Internet sites that provide "agricultural weather"
reports or forecasts and by one producer of an
"agricultural weather station" for recording meteorological
data relevant to agriculture. The NEXIS evidence shows use
of "agricultural weather" reports and "agricultural
weather" centers. Use of the phrase "agricultural weather"
in conjunction with a weather information and planning
service relating to agriculture would immediately be
perceived as a weather forecasting or weather reporting
service for those involved in agriculture. Accordingly, we
affirm the refusal of registration of AGRICULTURALWEATHER.
BOATINGWEATHER, SAILINGWEATHER, SKIWEATHER
The probative evidence of record in the
BOATINGWEATHER, SAILINGWEATHER and SKIWEATHER applications
consists solely of dictionary definitions.4 Nonetheless, we
believe it generally known, and not subject to reasonable
dispute, that boating, sailing and skiing are outdoor

4 The Internet evidence made of record in each file is not
probative. We note that in two other application files, there is
evidence of descriptive use of "ski weather" on the Internet and
we cannot help but wonder why that evidence was not made of
record in the SKIWEATHER file. However, because each application
file must be assessed on the record created therein, we have not
considered this evidence in our determination of the
registrability of SKIWEATHER.
Serial Nos. 75/254,836; 75/254,837; 75/254,838; 75/254,839;
75/254,840; 75/254,841; 75/254,842; 75/254,844; 75/254,845;
75/254,846; 75/254,847; 75/254,848; 75/254,849; 75/254,850;
75/388,875; and 75/388,880
16
activities that require certain weather conditions, and are
to be avoided under certain adverse weather conditions. We
find that consumers would readily understand, upon seeing
the marks BOATINGWEATHER, SAILINGWEATHER or SKIWEATHER, for
a weather information and planning service focusing on any
one of these activities, that such service would provide
critical weather information for the prospective boater,
sailor or skier. These composites do not yield the sort of
ambiguity we find in PARTYWEATHER, VACATIONWEATHER and
WEDDINGWEATHER, nor do they yield the incongruity we find
in INSURANCEWEATHER.
Accordingly, we affirm the refusals of registration of
BOATINGWEATHER, SAILINGWEATHER and SKIWEATHER.
BIKEWEATHER, CAMPINGWEATHER, GOLFWEATHER, FISHINGWEATHER,
HIKINGWEATHER, HUNTINGWEATHER, and TENNISWEATHER
For the remaining seven applications, i.e., those for
BIKEWEATHER, CAMPINGWEATHER, GOLFWEATHER, FISHINGWEATHER,
HIKINGWEATHER, HUNTINGWEATHER, and TENNISWEATHER, the
record does not support the refusals of registration. In
regard to each of these marks, the Examining Attorney again
overstates the significance of the evidence gathered from
searches of the Internet. The hits in the search results
lists almost invariably show only one of the two elements
Serial Nos. 75/254,836; 75/254,837; 75/254,838; 75/254,839;
75/254,840; 75/254,841; 75/254,842; 75/254,844; 75/254,845;
75/254,846; 75/254,847; 75/254,848; 75/254,849; 75/254,850;
75/388,875; and 75/388,880
17
in the respective marks, and the printouts of particular
web pages are only for web sites discussing the particular
activity and which have a "link" to a weather website, or
vice versa. Besides the dictionary definitions made of
record in each of these files, the Internet evidence was
all that was introduced. There were, apparently, no
searches made of the NEXIS database.
We cannot conclude, on the records before us, that the
terms BIKEWEATHER, CAMPINGWEATHER, GOLFWEATHER,
FISHINGWEATHER, HIKINGWEATHER, HUNTINGWEATHER, and
TENNISWEATHER directly convey a characteristic of
applicant's weather information and planning service.
Whether a mark is on one side or the other of the fine line
between suggestiveness and mere descriptiveness is
frequently a difficult question. See In re Recovery, Inc.,
196 USPQ 830, 831 (TTAB 1977). In these cases, we find the
marks on the suggestive side of the line.
Accordingly, the refusals of registration for
BIKEWEATHER, CAMPINGWEATHER, GOLFWEATHER, FISHINGWEATHER,
HIKINGWEATHER, HUNTINGWEATHER, and TENNISWEATHER are
reversed.
Serial Nos. 75/254,836; 75/254,837; 75/254,838; 75/254,839;
75/254,840; 75/254,841; 75/254,842; 75/254,844; 75/254,845;
75/254,846; 75/254,847; 75/254,848; 75/254,849; 75/254,850;
75/388,875; and 75/388,880
18
DECISION
For the reasons discussed herein, the refusals of
registration for applications no. 75/254,844 for
PARTYWEATHER, no. 75/254,849 for VACATIONWEATHER, no.
75/254,850 for WEDDINGWEATHER, no. 75/388,875 for
INSURANCEWEATHER, no. 75/254,836 for BIKEWEATHER, no.
75/254,838 for CAMPINGWEATHER, no. 75/254,839 for
GOLFWEATHER, no. 75/254,840 for FISHINGWEATHER, no.
75/254,841 for HIKINGWEATHER, no. 75/254,842 for
HUNTINGWEATHER, and no. 75/254,847 for TENNISWEATHER are
reversed; and the refusals of registration for applications
no. 75/254,848 for TRAVELWEATHER, no. 75/388, 880 for
AGRICULTURALWEATHER, no. 75/254,837 for BOATINGWEATHER, no.
75/254,845 for SAILINGWEATHER, and no. 75/254,846 for
SKIWEATHER are affirmed.
E. J. Seeherman
T. E. Holtzman
G. F. Rogers
Administrative Trademark
Judges, Trademark Trial
and Appeal Board