ZD Inc.

Trademark Trial and Appeal Board

May 18, 1999

EX (T.T.A.B. May. 18, 1999)

Paper No. 14
DEB
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re ZD Inc.
________
Serial Nos. 75/063,530 and 75/063,533
_______
James E. Rosini and Karen L. Feisthamel of Kenyon & Kenyon
for ZD Inc.
Gary L. Thayer, Trademark Examining Attorney, Law Office
103 (Mike A. Szoke, Managing Attorney).
_______
Before Hanak, Walters and Bucher, Administrative Trademark
Judges.
Opinion by Bucher, Administrative Trademark Judge:
ZD Inc.1 filed an application for registration of the
mark “DIGITAL RETAIL WEEK” for “prerecorded CD-ROMs and
computer disks containing electronic versions of print and
on-line publications, namely, pamphlets, brochures,

1 Although “Ziff-Davis Publishing Company” filed the original
application, in April 1997 applicant’s name was changed to “Ziff-
Davis Inc.,” and then in May 1998, applicant changed its name
again to the current “ZD Inc.”
Ser. Nos. 75/063,530 & 75/063,533
2
magazines, and newspapers, and supplements thereto,
journals, newsletters featuring text and graphical
information in the fields of information, computer and high
technology, computers, computing, electronics, and
marketing and distribution and related software” in Int.
Cl. 9; for “printed publications, namely, pamphlets,
brochures, magazines, and newspapers, and supplements
thereto, journals, newsletters featuring text and graphical
information in the fields of information, computer and high
technology, computers, computing, electronics, and
marketing and distribution and related software” in Int.
Cl. 16;2 and a second application to register the same mark
for “computer services, namely, providing online
publications, namely, magazines and newspapers, and
information about information technology marketing and
distribution; providing multiple user access to a global
computer network for the transfer and dissemination of
information about information technology marketing and
distribution” in Int. Cl. 42.3

2 Serial No. 75/063,530, in International Classes 9 and 16,
filed February 26, 1996, based upon an allegation of a bona fide
intention to use the mark in commerce.
3 Serial No. 75/063,533, in International Class 42, filed
February 26, 1996, based upon an allegation of a bona fide
intention to use the mark in commerce.
Ser. Nos. 75/063,530 & 75/063,533
3
The Trademark Examining Attorney issued a final
refusal to register in each of the applications based upon
Section 2(e)(1) of the Trademark Act, 15 U.S.C.
§1052(e)(1), on the ground that applicant's mark “DIGITAL
RETAIL WEEK,” when used on these publications (electronic
and printed) and services, is merely descriptive of the
publications and services because it identifies
characteristics of the goods and services.
Inasmuch as these two co-pending applications involve
common questions of law and fact, and each has been treated
in substantially the same manner by the applicant and by
the Trademark Examining Attorney, we decide these two
appeals by issuing a single opinion.
The Trademark Examining Attorney placed photocopies of
dictionary entries and of on-line definitions into the
record (inter alia, of the words “digital,” “retail” and
“week”). We see from at least one of the submissions that
the term “digital” narrowly means the use of the numbers
“0” and “1” in a computerized environment. The Trademark
Examining Attorney also submitted ten news stories from the
LEXIS/NEXIS database using the phrases “digital retail” and
“digital retailing.” As seen in the context of the
LEXIS/NEXIS entries, the “digital” of “digital retailing”
Ser. Nos. 75/063,530 & 75/063,533
4
has a much broader meaning synonymous with “electronic,”
“on-line” or “Web-based.” The Trademark Examining
Attorney’s Nexis excerpts reflect the use of these terms in
U.S. publications throughout the decade of the 90’s. These
publications show that currently the terms “digital
retailing” or “digital retail” are synonymous with the
terms “electronic retailing,” “digital commerce” or
“electronic commerce.”
In our estimation, the fact that applicant may be
identified with one particular sector of the economy (i.e.,
the computer industry) is not the primary focus.4 What is
material to our decision is that applicant’s proposed
publications and services, as identified, encompass
information and services designed to help others use
electronic media for digital retailing. A close look at
applicant’s identification of goods and recital of services
demonstrates that the content of these publications and
services deals with the marketing, selling and various
other business-related activities in the high technology
world of computers, networks and software.

4 “[T]he phrase [‘digital retail week’] aptly describes a
publication whose subject matter includes the field of
selling/marketing (i.e. the ‘retail’ or ‘retailing’) of
‘digital’ equipment (i.e. computers and the like)…”
(Trademark Examining Attorney’s Appeal Brief, p. 5).
Ser. Nos. 75/063,530 & 75/063,533
5
As seen in third-party federal registrations made of
record by the Trademark Examining Attorney and by the
applicant, the word “Week” is commonly used for periodical
publications having weekly issue dates, or even weekly
updates on-line. This usage is consistent with the
dictionary definitions supplied by the Trademark Examining
Attorney. In the third-party registrations submitted by
the Trademark Examining Attorney, when the word “Week” is
part of composite marks for publication names, it is either
disclaimed or registered under Section 2(f) of the Act. In
turn, applicant has submitted other third-party
registrations for “… WEEK” publications wherein the word
“WEEK” appears to be a registrable component of the
composite mark. However, these third-party registrations
are not determinative herein, as each case must be decided
on its own unique set of facts, including the way in which
different words may interact with each other within a
composite mark.
Finally, we see nothing in the joining of the term
“Digital Retail” with the word “Week” that creates a new or
different meaning than one would anticipate when melding
Ser. Nos. 75/063,530 & 75/063,533
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these individual components.5 Upon seeing the mark “DIGITAL
RETAIL WEEK” for these goods and services, we conclude that
one would immediately think of a weekly publication dealing
with information technology marketing and distribution.
Decision: We affirm the refusal of the Trademark
Examining Attorney to register this matter.
E. W. Hanak
C. E. Walters
D. E. Bucher
Administrative Trademark
Judges, Trademark Trial and
Appeal Board

5 Cf., The Second Circuit agreed with a lower court that the
designation “MARKETING WEEK” is descriptive (albeit with acquired
distinctiveness possible). See Centaur Communications Ltd. v.
A/S/M Communications Inc., 830 F.2d 1217, 4 USPQ2d 1541 (2nd Cir.
1987), affirming 652 F.Supp 1105, 1 USPQ2d 1958 (S.D.N.Y. 1987).
The federal registration for “MARKETING WEEK” (Reg. No.
1,555,708) issued to Centaur under the provisions of Section 2(f)
of the Lanham Act. Also, we note that applicant’s own Reg. No.
1,325,664 for “PC WEEK and design,” has a disclaimer of the word
“Week.”