Media Arts Group, Inc.

Trademark Trial and Appeal Board

May 15, 1997

EX (T.T.A.B. May. 15, 1997)

THIS DECISION IS NOT
CITABLE AS PRECEDENT OF
THE TTAB May 15, 1997
Paper No. 10
TJQ
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Media Arts Group, Inc.
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Serial No. 74/605,105
_______
Barbara R. Shufro and Patricia L. Cotton of Pillsbury,
Madison & Sutro for applicant.
Steven R. Fine, Trademark Examining Attorney, Law Office 107
(Thomas Lamone, Managing Attorney).
_______
Before Simms, Hanak and Quinn, Administrative Trademark
Judges.
Opinion by Quinn, Administrative Trademark Judge:
An application has been filed by Media Arts Group,
Inc., doing business as MAGI, to register the mark
CINEMACLIPS for "commemorative collages."1
The Trademark Examining Attorney has refused
registration under Section 2(e)(1) of the Act on the ground
that applicant's mark, when used in connection with
applicant's goods, is merely descriptive thereof. When the

1Application Serial No. 74/605,105, filed December 1, 1994,
based on a bona fide intention to use the mark in commerce.
Ser No. 74/605,105
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refusal was made final, applicant appealed. Applicant and
the Examining Attorney have filed briefs.
Before turning to the respective arguments, we pause to
consider the specific nature of applicant's "commemorative
collages." Applicant has described its goods as follows:
"The commemorative collages incorporate quotes, pictures and
historical information relating to particular motion
pictures. The collages also include a piece of celluloid
containing a 'still' photograph from the actual film."
(appeal brief, p. 2)
Applicant argues that the mark is only suggestive.
More specifically, applicant contends that the term "cinema"
is suggestive of the motion picture industry. As for the
term "clip", applicant contends that this term is suggestive
of a particular element of applicant's memorabilia, namely a
frame of a motion picture film. Applicant further contends
that this term is suggestive, and not merely descriptive,
because "clip" essentially is a term of art meaning a
segment of a motion picture which, when played, shows a
small portion of that picture. Thus, according to
applicant, a "clip" in the motion picture industry is more
than just a single frame of a motion picture, which is the
particular item included in applicant's commemorative
collages. Alternatively, applicant maintains that even if
the individual words comprising its mark have descriptive
significance, the composite mark, when considered as a
whole, is not merely descriptive. Applicant also states
Ser No. 74/605,105
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that it is unaware of any others using CINEMACLIPS in the
trade. In support of its position that the refusal should
be reversed, applicant has relied upon dictionary
definitions of the terms "cinema" and "clip."2
The Examining Attorney contends that the applied-for
mark merely informs purchasers that applicant's goods
feature cinematic clips. The Examining Attorney argues that
the single frame in each of applicant's collages is clipped
from a cinema motion picture, and that this single frame is
no less a "clip" from a motion picture than a film sequence.
The Examining Attorney has submitted dictionary definitions
of the terms "cinema" and "clip."3
A mark is descriptive if it "forthwith conveys an
immediate idea of the ingredients, qualities or
characteristics of the goods." Abercrombie & Fitch Co. v.
Hunting World, Inc., 537 F.2d 4, 189 USPQ 759, 765 (2nd Cir.
1976) (emphasis added). See also: In re Abcor Development
Corp., 616 F.2d 525, 200 USPQ 215 (CCPA 1978). Moreover,
generally speaking, in order to be descriptive, the mark
must immediately convey information as to the ingredients,
qualities or characteristics of the goods with a "degree of
particularity." Plus Products v. Medical Modalities

2Applicant failed to submit copies of the pertinent dictionary
listings. Nonetheless, pursuant to judicial notice, we have
considered this dictionary evidence to be of record and, thus,
have considered it in reaching our decision.
3The listing for the term "clip" was attached to the Examining
Attorney's brief. As suggested by the Examining Attorney, we
take judicial notice of this evidence.
Ser No. 74/605,105
4
Associates, Inc., 211 USPQ 1199, 1204-1205 (TTAB 1981);
Holiday Inns, Inc. v. Monolith Enterprises, 212 USPQ 949,
952 (TTAB 1981); In re TMS Corp. of the Americas, 200 USPQ
57, 59 (TTAB 1978); and In re Diet Tabs, Inc., 231 USPQ 587,
588 (TTAB 1986). Contrary to the gist of some of
applicant's remarks, whether a term is merely descriptive is
determined not in the abstract but in relation to the goods
for which registration is sought.4 In re Bright-Crest,
Ltd., 204 USPQ 591, 593 (TTAB 1979).
The term "cinema", as shown by the dictionary evidence,
means, in pertinent part, "a motion picture." The term
"clip" means, in pertinent part, "something that is clipped;
something clipped off, as a sequence from a motion picture."
There can be no dispute, given the dictionary definitions of
record, about the readily understood meanings of the
individual words comprising the mark sought to be
registered. We do not believe, however, that the
combination of these words results in a term which, when

4In this connection, we note the Examining Attorney's reference
to another application filed by applicant, namely, application
serial no. 74/605,103, and its identification of goods reading
"film clips, namely, frames of motion picture and/or
photographic film encased in and/or mounted on paper, plastic or
pasteboard." A copy of the application was never submitted,
however, and, thus, the application does not form part of the
record in this appeal. In any event, even if this evidence were
considered, it would not be persuasive of a different result in
this appeal. In determining whether a proposed mark is
descriptive, the mark must be considered "when applied to the
goods or services involved." In re Abcor Development Corp.,
supra at 218. That a term may be descriptive of certain goods
or services is not determinative of whether it is descriptive of
other goods or services. In re Stroh Brewery Co., 34 USPQ2d
1796, 1797 (TTAB 1995). Here, the identification of goods is
different from the one in the other application.
Ser No. 74/605,105
5
considered in its entirety, is merely descriptive of
applicant's commemorative collages. That is to say,
applicant's mark, as proposed to be used in connection with
commemorative collages, does not convey an immediate idea
about the goods with any degree of particularity. Rather,
we find that the mark is just suggestive of commemorative
collages comprising memorabilia from particular cinema
motion pictures.
That each of the collages includes a single frame from
the actual film featured in the collage is not persuasive of
a different result. We suspect that this item would be a
fairly insignificant part of the entire collage. In any
event, we agree with applicant that the term "clip" commonly
refers to a section of a motion picture, and that use of the
term in applicant's mark is just suggestive of the single
frame of a motion picture in applicant's collages.
Consumers will view the entire mark as simply suggesting
that applicant's commemorative collages, incorporating
quotes, pictures, historical information, and a frame of a
film, are like a clip from a cinema motion picture.
To the extent that any of the points raised by the
Examining Attorney raises doubts on the issue of whether the
mark is descriptive, it is the policy of the Board to
resolve doubts in applicant's favor with the knowledge that
any third party is free to file an opposition and develop a
more comprehensive record. In re Gourmet Bakers, Inc., 173
USPQ 565 (TTAB 1972).
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Decision: The refusal to register is reversed.
R. L. Simms
E. W. Hanak
T. J. Quinn
Administrative Trademark Judges
Trademark Trial and Appeal Board
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