Ziff-Davis Publishing Co.

Trademark Trial and Appeal Board

May 2, 2000

No. 75049193 (T.T.A.B. May. 2, 2000)

Paper No. 18
RFC
THIS DISPOSITION IS NOT CITABLE
AS PRECEDENT OF THE TTAB MAY 2, 00
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Ziff-Davis Publishing Company
________
Serial No. 75/049,193
_______
Peter S. Sloane of Fross Zelnick Lehrman & Zissu PC for
Ziff-Davis Publishing Company.
Jennifer Krisp, Trademark Examining Attorney, Law Office
107 (Janice O’Lear, Managing Attorney).
_______
Before Cissel, Seeherman and McLeod, Administrative
Trademark Judges.
Opinion by Cissel, Administrative Trademark Judge:
On January 26, 1996, applicant corporation applied to
register the mark "INTERNET COMPUTING" on the Principal
Register for services which were subsequently identified by
amendment as "providing information on a global computer
network in the fields of on-line marketing, advertising and
business, including providing marketing statistics, and
marketing and advertising trends," in Class 35. The basis
Ser No. 75/049193
2
for the application was applicant’s assertion that it
possessed a bona fide intention to use the mark in commerce
in connection with these services, but the application was
subsequently amended to assert use in interstate commerce
as early as April 11, 1997.
The Examining Attorney refused registration under
Sections 2(e)(1) and 2(d) of the Lanham Act, but the
refusal based on likelihood of confusion was later
withdrawn.
This case is now before the Board on appeal from the
final refusal to register based on the Examining Attorney’s
finding that the mark is merely descriptive of the
specified services. Both applicant and the Examining
Attorney filed briefs on this issue. Applicant filed a
reply brief, but did not request an oral hearing before the
Board.
Based on careful consideration of the record in this
application and the written arguments on appeal, we hold
that the Examining Attorney had not met her burden of
establishing that the mark is merely descriptive of the
services recited in the application.
The basic test to determine registrability under
Section 2(e)(1) of the Lanham Act is not disputed: a mark
is merely descriptive of the services with which it is used
Ser No. 75/049193
3
if it conveys information about a characteristic, feature
or function of those services. In re Gyulay, 820 F.2d
1216, 3 USPQ2d 1009 (Fed. Cir. 1987); In re MetPath Inc.,
223 USPQ 88 (TTAB 1984); In re Bright-Crest, Ltd., 204 USPQ
591 (TTAB 1979).
In support of her refusal to register under Section
2(e)(1) of the Act, the Examining Attorney submitted
excerpts of articles from various printed publications
retrieved from the Nexis database wherein the term sought
to be registered is used. The Examining Attorney argues
that this evidence supports her conclusion that "Internet
computing" is commonly used in reference to the "means by
which marketing and advertising are carried out, namely, a
means which involves harnessing Internet technology for the
purpose of promoting one’s own segment of commerce on a
global or near-global scale." (Final refusal, p.2).
Examples of the excerpts provided by the Examining
Attorney are reproduced below. Each is from a different
source, but none provides a clear understanding of exactly
what the term in question means.
A new form of computing is emerging called
Internet computing… it will replace some
client/server systems and evolve the computer
industry over the next five years.
… Internet computing is server-centric computing,
which has great advantages and lower management
Ser No. 75/049193
4
costs. You’ve all heard complaints about the
complexity and cost of client/server. Internet
computing has the potential to reduce that pain.
Digital announced comprehensive, channel-ready
firewall offerings that help resellers ensure
secure Internet computing for businesses and
enterprises of all sizes.
In no way does Internet computing replace
client-server computing.
… Java technologies would become key to their
Internet computing strategies within a year.
… management software tools are the cornerstone
of the HP OpenView service-management program,
delivering end-to-end service management in Internet
computing environments.
"Virtually all of our corporate customers are
asking for network redundancy and increased bandwidth
as they deploy enterprise-wide Internet computing
applications," said Wallace…
In its appeal brief, applicant concedes that the term
it seeks to register "arguably may have a meaning linked to
the general use of the Internet," but contends nonetheless
that it is vague and imprecise, and has alternative
meanings, so that it does not convey with any particularity
or specificity information about the services applicant
renders under the mark.
As noted above, we agree with applicant on this point.
As Professor McCarthy explains in his treatise, Vol. 2, J.
Thomas McCarthy, McCarthy On Trademarks and Unfair
Competition, Section 11:19,:
Ser No. 75/049193
5
To be characterized as "descriptive," a term
must directly give some reasonably accurate or
tolerably distinct knowledge of the
characteristics of a product. If information
about the product or service given by the term
used as a mark is indirect or vague, then this
indicates that the term is being used in a
"suggestive," not descriptive, manner.
There is no question but that the examples provided by
the Examining Attorney show that the term sought to be
registered is used in connection with computers. Applicant
concedes this point. The evidence of use of the term,
however, does not establish specifically what the term
means, so we cannot use that evidence as the basis for
adopting the conclusion urged by the Examining Attorney,
that the term is merely descriptive of a feature or
characteristic of applicant’s services.
The Examining Attorney has therefore not met her
burden of establishing that applicant’s mark is
unregistrable under Section (2)(e)(1) of the Act.
Moreover, even if the evidence of record had left us with
doubt on this issue, such doubt would necessarily be
resolved in favor of the applicant.
We emphasize that our determination of the issue
before us in this appeal has necessarily been based upon
the record in this application. This is not to say that a
different conclusion might not have been reached if we had
Ser No. 75/049193
6
had different evidence before us, nor would it preclude us
from finding the term in question to be unregistrable in
any subsequent inter partes proceeding.
We also want to make it clear that we were not
persuaded to adopt applicant’s position on the issue of
descriptiveness in the case at hand because of applicant’s
argument that because the Examining Attorney passed to
publication applicant’s other application, which sought
registration of the same mark for goods in Class 9, the
instant application must likewise be approved. Although it
is, of course, the goal of the United States Patent and
Trademark Office to take consistent action with respect to
all applications before it, the Board is aware of no legal
requirement or logical reason that would mandate the
withdrawal of the refusal in the case at hand, where
applicant seeks to register the mark in connection with
services, based on the fact that applicant’s application to
register the mark in connection with goods was not refused
registration. Too many distinctions are possible. The
Board is not privy to the reason why the Examining Attorney
determined that the other application was entitled to
publication. In any event, we are certainly not bound by
her decision with respect to that application.
Applicant concedes the descriptiveness of the
Ser No. 75/049193
7
word "INTERNET," however, and in its brief, has offered to
disclaim that word apart from the mark in its entirety.
Accordingly, a disclaimer of the descriptive word
"INTERNET" will be entered into the record and the refusal
to register under Section 2(e)(1) of the Act is reversed.
R. F. Cissel
E. J. Seeherman
L. K. McLeod
Administrative Trademark Judges
Trademark Trial & Appeal Board
Ser No. 75/049193
8