International Data Group, Inc.

Trademark Trial and Appeal Board

Jul 11, 2007

No. 78508383 (T.T.A.B. Jul. 11, 2007)

Mailed: July 11, 2007

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re International Data Group, Inc.
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Serial No. 78508383
_______

Mark B. Harrison of Venable for International Data Group, Inc.

Sonya B. Stephens, Trademark Examining Attorney, Law Office 109
(Dan Vavonese, Managing Attorney).
_______

Before Holtzman, Drost and Bergsman, Administrative Trademark
Judges.

Opinion by Holtzman, Administrative Trademark Judge:

Applicant, International Data Group, Inc., has filed an
application to register the mark SYNDICATE (in standard character
form) for services ultimately identified as follows:
Arranging and conducting trade shows, expositions and
exhibitions in the fields of computers and web site [sic]
content syndication trends, and emerging syndication
technologies (in Class 35).1

Arranging and conducting seminars, conferences, and
discussion groups in the fields of computers and web site

1 Serial No. 78508383, filed October 29, 2004, based on an allegation
of a bona fide intention to use the mark in commerce.

THIS OPINION IS
NOT A PRECEDENT OF
THE TTAB
Serial No. 78508383
2
[sic] content syndication trends, and emerging syndication
technologies (in Class 41).2

The trademark examining attorney has refused registration
on the ground that the mark is merely descriptive of applicant's
services under Section 2(e)(1) of the Trademark Act.3
When the refusal was made final, applicant appealed.
Applicant and the examining attorney have filed briefs.
The examining attorney argues that SYNDICATE describes
applicant's services which relate to advising and educating
others on how to syndicate, i.e., advising others about
syndication. The examining attorney has submitted definitions of
"syndicate" from a number of dictionaries and points to pages
from applicant's websites (idg.com and syndicatedconference.com),
which according to the examining attorney, confirm that applicant
conducts events concerning online media syndication.
Applicant agrees that its services deal with online media
syndication but argues that its mark SYNDICATE does not
immediately or directly convey information regarding the nature,
function purpose or use of its services. Applicant argues that
its company is not a "syndicate" or acting as a "syndicate"; that
its services "deal with 'syndication trends' not 'syndicate'"
(Brief, p. 3); and that the two terms "syndicate" and

2 Serial No. 78539762, filed December 29, 2004, alleging a date of
first use in June 2002 and first use in commerce on October 26, 2002.

3 The examining attorney had also initially refused registration under
Section 2(d) of the Act. That refusal was subsequently withdrawn.
Serial No. 78508383
3
"syndication" are not synonymous or interchangeable. In
applicant's view, the term SYNDICATE only suggests to customers
that attend applicant's conference, that "they may find
information related to syndication or how they might be able to
syndicate their own articles or cartoons." (Brief, p. 4.)
Applicant concludes, without further elaboration, that "there is
a multistage reasoning process required to take a customer from
the term SYNDICATE to Applicant's services." Id.
A term is merely descriptive within the meaning of
Section 2(e)(1) if it immediately conveys knowledge of a
quality, characteristic, function, feature, purpose or use of the
goods or services with which it is used or intended to be used.
In re Gyulay, 820 F.2d 1216, 3 USPQ2d 1009 (Fed. Cir. 1987).
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).
Applicant conducts seminars, conferences, exhibitions and
other events in the field of "website content syndication" under
the mark SYNDICATE. When viewed in the context of applicant's
services, SYNDICATE would immediately and directly inform
purchasers about a significant feature or characteristic of the
services, namely the subject matter of applicant's services.
Serial No. 78508383
4
The word "syndicate" has a meaning both as a noun and as a
verb. The two forms of the word are pronounced differently and
are used in different contexts. As a noun, "syndicate" (last
syllable pronounced with a short "i" sound) refers to the nature
of an organization.4 Used as a verb, "syndicate" (last syllable
pronounced with a long "a" sound) refers to the nature of an
activity. For purposes of our analysis, we focus solely on the
verb form the term "syndicate." Contrary to applicant's
contention, it is this form of the term, not the noun form, that
the examining attorney has found conveys the descriptive meaning
in relation to applicant's services. Representative dictionary
entries for the relevant form of "syndicate" are as follows
(emphasis in original):
● verb/sindikayt/...2 publish or broadcast simultaneously in a
number of media.

DERIVATIVES syndication noun.

Compact Oxford English Dictionary, supra.

● v.t. [Pronunciation -v.sin'di-kāt]...2. to publish
simultaneously, or supply for simultaneous publication, in a
number of newspapers or other periodicals in different
places: Her column is syndicated in 120 papers.

Random House Unabridged Dictionary (1997) (infoplease.com)

● 1. transitive verb sell something for multiple publication:
to sell something such as an article or a comic strip for

4 The Compact Oxford English Dictionary (2006) (askoxford.com) defines
"syndicate" as follows: "noun/sindik[i]t/ 1 a group of individuals or
organizations combined to promote a common interest. 2 an agency
supplying material simultaneously to a number of news media."
(Emphasis in original.)
Serial No. 78508383
5
publication in a number of newspapers or magazines
simultaneously.

- syn-di-ca-tion [sindi kaysh'n ]n

Encarta World English Dictionary [North American Edition]
(2005) (encarta.msn.com)

It can be seen from these entries that "syndication" is a
derivative of the word "syndicate" and there is no dispute that
the concept of "syndication" applies to both traditional media
and online media. There is also no dispute, and applicant's
website materials make it clear, that "syndication" of online
media is the subject matter of applicant's conferences and
events. Portions of applicant's website,
syndicateconference.com, which advertises an upcoming conference,
are quoted below (emphasis in original):
Syndicāte
the Premier Event for
Content Syndication Trends

Syndicāte New York
Dawn of
the Dialogue Age
May 15-17, 2006

About Syndicāte
As the premier event for content syndication trends,
Syndicāte™ (www.syndicateconference.com) is a B2B
Conference providing awareness, clarity, education,
deal making and strategic business opportunitites
surrounding the emergence of online media
syndication. This program will focus on emerging
technologies such as RSS (Really Simple
Syndication), for content owners and producers, new
media executives, marketers, advertisers and public
relations professionals.
Serial No. 78508383
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Syndicated Technologies & Trends: Syndication is a
brand new field where new technologies, standards
and practices are emerging and evolving constantly.
This track will explore new syndication
technologies, standards, trends and practices.
Subjects covered include: mobile RSS, tagging,
structured blogging, wikis, vertical market
syndication, attention tracking, social software,
IRC, and new areas where hundreds of million dollars
of venture money are flowing.

"Syndicāte's speaker list includes many of the
leading thinkers and do-ers in media, marketing
communications and technology," said Doc Searis,
Syndicāte's conference chairperson. "Syndication,
its technologies and its tools are changing the way
we communicate and do business on the Net. ..."

Based on the definitions of "syndicate," and in the context
of applicant's services as identified in the application and as
described on applicant's website, there is no question that
applicant is providing information about the "syndication" of
online media, that is, about the formats, technologies and
methods used to "syndicate" online media. Furthermore,
applicant's frequent use of SYNDICATE in its advertising with the
long mark over the "a" ("Syndicāte") makes it clear that
applicant intends the term to have that meaning and ensures that
prospective purchasers will understand the meaning.
Contrary to applicant's contention, the two terms, SYNDICATE
and "syndication" are virtually synonymous and interchangeable,
if not grammatically, then certainly in significance and in the
meaning conveyed to prospective customers. In any event, it is
Serial No. 78508383
7
not necessary that the two terms be synonymous or interchangeable
in order for us to find SYNDICATE descriptive of the services.
See The F. & M. Schaefer Brewing Co. v. Pittsburgh Brewing
Company, 148 USPQ 449, 451 (TTAB 1965) ("the fact that other
terms may more aptly describe the [goods] does not render the
term [sought to be registered] any less descriptive thereof.").
SYNDICATE, as the root word of syndication and the word from
which syndication is derived, would have an obvious descriptive
meaning to applicant's customers, that is, the RSS publishers,
advertisers, marketers and public relations companies who would
attend applicant's conferences and events. Applicant has simply
changed "syndication" to a different form, and no new or
different meaning is imparted by that form.5 See, e.g., In re
Gray Inc., 3 USPQ 1558, 1559 (TTAB 1987) (finding PROTECTIVE
EQUIPMENT merely descriptive of burglar and fire alarms
notwithstanding that the evidence only showed uses of variants of
the term, "protect" and "protection," the Board stated, "These
terms all have the same meaning, differing only in their form.");

5 Applicant submitted, for the first time with its brief, a definition
of "syndication" from the website rhymezone.com as meaning "noun:
selling (an article or cartoon) for publication in many magazines or
newspapers at the same time. Example: 'He received a comfortable
income from the syndication of his work.'" (Italics in original.) The
examining attorney objected to this evidence as untimely correctly
pointing out that it is not the type of evidence that is appropriate
for judicial notice. We do not need this definition to understand the
meaning of "syndication." Even if we had considered this evidence, it
would merely further confirm that SYNDICATE would be perceived as a
descriptive term.
Serial No. 78508383
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and In re Lativ Systems, Inc., 223 USPQ 1037, 1039 (TTAB 1984)
("Merely by converting a term [vinyl] to its adjectival form
[VINYLIZING] does not impart trademark or service mark
distinctiveness to the term in relation to the goods or services
[coating compound]").
There is no question that the ordinary meaning of the word
SYNDICATE would be well understood in the context of applicant's
services. Prospective purchasers of applicant's services, would
without any guesswork or the exercise of any imagination,
immediately recognize SYNDICATE as describing the subject matter
of applicant's conferences which involves the syndication of
online media. This is a descriptive term that competitors of
applicant should be free to use in connection with their own
services in that field.
Decision: The refusal to register under Section 2(e)(1) of
the Trademark Act is affirmed.