Time-Sharing Today, LLC

Trademark Trial and Appeal Board

Aug 26, 2003

No. 76348794 (T.T.A.B. Aug. 26, 2003)

Mailed: Paper No. 20
August 26, 2003 GFR
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re TimeSharing Today, LLC
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Serial No. 76/348,794
_______
Raphael G. Jacobs of Jacobs and Bell for TimeSharing Today,
LLC.
Theodore McBride, Trademark Examining Attorney, Law Office
103 (Michael Hamilton, Managing Attorney).
_______
Before Seeherman, Rogers and Drost,
Administrative Trademark Judges.
Opinion by Rogers, Administrative Trademark Judge:
TimeSharing Today, LLC seeks to register TIMESHAREXPO
on the Principal Register as a mark for “advertising
vacation timeshares on the Internet for others by means of
an informational website,” in International Class 35.1
Registration has been refused under Section 2(e)(1) of the
1 Serial No. 76/348,794, filed December 14, 2001, based upon an
allegation of first use and first use in commerce as of November
15, 2001.
This Disposition is Not
Citable as Precedent
of the TTAB
Ser No. 76348794
2
Trademark Act, 15 U.S.C. §1052(e)(1). The examining
attorney's position is that, when used in connection with
applicant's services, TIMESHAREXPO will be merely
descriptive of them.
When the examining attorney made the refusal final,
applicant appealed and filed a request for reconsideration,
which the examining attorney denied. The appeal then
resumed and has been fully briefed. Oral argument was not
requested.
The Office bears the burden of setting forth a prima
facie case in support of a descriptiveness refusal. See In
re Gyulay, 820 F.2d 1216, 3 USPQ2d 1009 (Fed. Cir. 1987)
(When the examining attorney sets forth a prima facie case,
the applicant cannot simply criticize the absence of
additional evidence supporting the refusal, but must come
forward with evidence supporting its argument for
registration.). To meet the Office's burden, the examining
attorney has made of record dictionary definitions of
“expo” and “exposition.” The former is defined as an
“informal” presentation of the latter. The examining
attorney has also made of record numerous third-party
registrations for composite marks that include the term
“expo” for various goods or services, as more fully
discussed, infra; and such registrations include a
Ser No. 76348794
3
disclaimer of rights in the term “expo,” or if a
registration does not include a disclaimer, it is
registered on the Supplemental Register. In fact, many of
these marks are registered on the Supplemental Register and
still include a disclaimer of “expo.”
One item of evidence offered by applicant is a page
from a particular dictionary, which applicant says is
noteworthy because it “lists more than 20 words in which
the first four letters are ‘expo’” and which applicant
notes includes a definition of “exposition” as “a large
public exposition or show, often international in scope”
(emphasis by applicant). Applicant also submitted a screen
print from a computer search of the USPTO’s Trademark
Electronic Search System [TESS] that shows that 1339
“records” were found when applicant searched for “expo.”
However, applicant did not submit either a list of these
records or any of the individual records, and the examining
attorney correctly discounted the TESS screen print as
lacking probative value.
The examining attorney has argued that the mark will
be perceived as a combination of TIMESHARE and EXPO. That
the mark will be so perceived is, according to the
examining attorney, reinforced by applicant’s presentation
of its mark as “TimeshareXpo” on its web site, screen
Ser No. 76348794
4
prints of which were submitted as specimens of use.2 In
addition, the examining attorney argues that users of the
Internet are conditioned to see words run together, because
that is the way they are presented in web addresses, yet
such individuals are still able to discern the individual
terms composing the web address.
Applicant argues that the mark is one word, though it
has not presented any argument about how the mark will be
perceived, i.e., it has not suggested any alternative to it
being perceived as “Timeshare Expo.”3 Further, applicant
argues that, even if the mark is perceived as “Timeshare
Expo,” it is not descriptive because an “expo” or
“exposition” is a large, public event, not a web-based
presentation.
The question whether a term 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
2 When filed, the application sought registration of the mark in
special form as “TimeshareXpo.” It was later amended to typed
form. Though the examining attorney stated in an office action
that he accepted the amendment, Office records were not changed.
We have corrected them.
3 Although applicant has argued that the mark is one word, it
offered a disclaimer of “expo” prior to appeal. The examining
attorney rejected the disclaimer. The disclaimer, which had been
entered in the Office’s computerized records, has been deleted.
Ser No. 76348794
5
those goods or services and the possible significance that
the term would have to the average purchaser or user of the
goods or services. See In re Bright-Crest, Ltd., 204 USPQ
591, 593 (TTAB 1979) and In re Recovery, 196 USPQ 830, 831
(TTAB 1977).
A mark is considered 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. In re
Abcor Development Corp., 588 F.2d 811, 200 USPQ 215, 217-
218 (CCPA 1978); see also In re Gyulay, supra. It is not
necessary that a term describe all of the properties or
functions of the goods or services in order for it to be
merely descriptive thereof; rather, it is sufficient if the
term describes a significant attribute or idea about them.
In re Venture Lending Associates, 226 USPQ 285 (TTAB 1985).
We find TIMESHAREXPO will be perceived either as a
“collapsed” presentation or merging of TIMESHARE EXPO,
wherein the final “e” in “timeshare” and the initial “e” in
“expo” become one, or as TIMESHARE XPO, whereby “expo” is
simply presented in a misspelled format that nonetheless
will retain the same pronunciation and meaning. Either
Ser No. 76348794
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way, the connotation of the composite remains the same and
neither a merging of letters nor a slight misspelling of a
part of a composite will result in a registrable mark when
the terms themselves would not be registrable. See, e.g.,
In re Omaha National Corp., 819 F.2d 1117, 2 USPQ2d 1859
(Fed. Cir. 1987) (Refusal to register FIRSTIER and design
for banking services in absence of disclaimer of “First
Tier,” which was found to be descriptive of a class of
banks), and In re Hercules Fasteners, Inc., 203 F.2d 753,
97 USPQ 355 (CCPA 1953) (FASTIE held equivalent of
descriptive term “fast tie”); see also, In re Quik-Print
Copy Shops, Inc., 616 F.2d 523, 205 USPQ 505 (CCPA 1980)
(QUIK-PRINT found to be a recognizable misspelling of
“Quick Print” and descriptive of fast and prompt printing
and duplicating services).
Since there can be no question that TIMESHARE is
descriptive when used in connection with “advertising
vacation timeshares on the Internet for others by means of
an informational website,” we must now consider whether
EXPO is descriptive or, as applicant urges, not, because
applicant’s services involve a website rather than a large,
public event. On this point, we take note of some of the
third-party registrations the examining attorney has made
of record. A number of these are for marks that include
Ser No. 76348794
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the term “expo” and a disclaimer of that term, for online
or website informational services: INTERNET INDUSTRY EXPO
and INTERNET INDUSTRY WORLD EXPO, which are registered for,
inter alia, “provision of online services, namely,
providing online publications, namely, newsletters,
relating to computers, computer software, online services,
high technology, communications, information technology and
information services; providing a website of information in
the fields of computers, computer software, online
services, high technology, communications, information
technology and information services”; MOBILE COMMERCE
CONFERENCE AND EXPO, registered for, inter alia, “providing
information about the high technology and information
technology industry via the Internet”; E HEARTH & HOME
EXPO, registered for “computer services – namely, providing
on-line data and information in the field of hearth and
home products”; COMMUNICATIONS ASP CONFERENCE & EXPO,
registered for, inter alia, “organizing and conducting
educational conferences and seminars in the field of
telephony services delivery via a global computer network
and other electronic means”; and NEWSLINE EXPO, registered
for “dissemination of advertising for others, namely,
displaying law enforcement products of others via an on-
line electronic communications network; advertising
Ser No. 76348794
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services, namely, promoting the services of law enforcement
through the displaying of law enforcement products of
others and distribution of law enforcement product
information of others via an on-line electronic
communications network.” We view these registrations as
indicating that applicants seeking to register marks
including the term “expo” have acknowledged the term as
being descriptive when used in marks for online information
sites or sites that collect or feature products or services
of others, because the term clearly describes for
prospective visitors to the sites that they will find a
wide range of information and products, just as they might
at a public exposition.
In closing, we note that applicant has argued that
descriptive terms, when combined, may result in a composite
that is not descriptive and registrable. Applicant has
not, however, articulated any theory why the combination of
TIMESHARE and EXPO [or XPO] results in a registrable mark.
We see no incongruity, ambiguity or other form of
distinctiveness that results from the combination.
Decision: The refusal of registration under Section
2(e)(1) of the Lanham Act is affirmed.