Media West-RDC, Inc.

Trademark Trial and Appeal Board

Mar 21, 2002

No. 75607234 (T.T.A.B. Mar. 21, 2002)

3/21/02 Paper No. 16
EWH

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Media West–RDC, Inc.
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Serial No. 75/607,234
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Kevin J. Kuzas for Media West–RDC, Inc.

Robert H. Coggins, Trademark Examining Attorney, Law
Office 107 (Thomas Lamone, Managing Attorney).
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Before Seeherman, Hanak and Holtzman, Administrative
Trademark Judges.

Opinion by Hanak, Administrative Trademark Judge:

Media West–RDC, Inc.(applicant) seeks to
register in typed drawing form THE NEWS JOURNAL for
“newspapers for general circulation.” The application
was filed on December 17, 1998 with a claimed first use
date of July 4, 1975. At the request of the Examining
Attorney, applicant disclaimed the exclusive right to use
the word NEWS apart from the mark in its entirety.
This application has had a tortured history.
Initially, the Examining Attorney refused registration
THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
pursuant to Section 2(d) of the Trademark Act on the
basis
Ser. No. 75/607,234

that applicant’s mark was confusingly similar to a
previously registered mark. This ground of refusal was
subsequently withdrawn. The current grounds for refusal
are best articulated at page 1 of applicant’s brief:
The Examining Attorney has refused registration
of applicant’s mark, THE NEWS JOURNAL, arguing
that THE NEWS JOURNAL is the generic term for
applicant’s goods, which are daily newspapers,
and therefore cannot acquire secondary
meaning. Applicant brings this appeal because
it believes that the only generic term for its
goods is “newspapers” and not “news journals.”
Furthermore, although the phrase “news journal”
may be descriptive of applicant’s newspapers,
applicant has submitted abundant evidence to
show that THE NEWS JOURNAL has acquired
secondary
meaning as a source of applicant’s newspapers.

When the refusal to register was made final,
applicant appealed to this Board. Applicant and the
Examining Attorney filed briefs. Applicant did not
request a hearing.
At the outset, two points should be clarified.
First, in the above statements taken from page 1 of
applicant’s brief, applicant contends that its goods “are
daily newspapers.” This may be true, but it is
irrelevant. Applicant seeks to register the purported
mark THE NEWS JOURNAL not for “daily newspapers,” but
rather for
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“newspapers for general circulation.” In other words,
applicant seeks to register THE NEWS JOURNAL not simply
for daily newspapers, but rather for newspapers for
general circulation which may be distributed on a daily,
weekly or monthly basis. In this regard, it is extremely
critical to remember that “a proper genericness inquiry
focuses on the description of services [or goods] set
forth in the” application, rather than on what
applicant’s actual goods may be. Magic Wand Inc. v. RDB,
Inc., 940 F.2d 638, 19 USPQ2d 1551, 1552-53 (Fed. Cir.
1991).
Second, applicant argues that “the only generic
term for its goods is ‘newspapers’ and not ‘news
journals.’” While it is true that a few products have
but one generic name, in most cases, products have more
than one generic name. As Professor McCarthy succinctly
states: “There is usually no one, single and exclusive
generic name for a product. Any product may have many
generic designations. Any one of those [generic
designations] is incapable of trademark significance.” 2
J.McCarthy, McCarthy on Trademarks and Unfair Competition
Section 12:9
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at page 12-21 (4th ed. 2001).
In support of his claim that applicant’s
purported mark THE NEWS JOURNAL is a generic term for
“newspapers for general circulation,” the Examining
Attorney relies upon dictionary definitions and upon
approximately fifty stories wherein the term “news
journal” is used in a generic manner to refer to various
types of publications. The Examining Attorney refers to
The American Heritage Dictionary of the English Language
(3d ed. 1992). At page 6 of its brief, applicant quotes
from Webster’s II New College Dictionary (1995) which
defines the term “newspaper” as “a typically daily or
weekly publication containing recent news, feature
articles, editorials, and usually advertising.” (emphasis
added). The underlined portion of the definition of the
term “newspaper” selected by applicant undercuts
applicant’s argument at pages 8 and 9 of its brief that
the Examining Attorney’s articles which use the term
“news journal” in connection with weekly publications are
of no value in proving that the term “news journal” is
essentially
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synonymous with the clearly generic term “newspaper.”
As for the term “journal,” applicant’s chosen
dictionary defines it as, in one sense, “a daily
newspaper.” (Applicant’s brief page 6). The American
Heritage Dictionary of the English Language (3d ed. 1992)
defines “journal” as “a newspaper.” A dictionary
consulted by this Board also defines “journal” as “a
newspaper.” Webster’s New World Dictionary (1996).
Thus, while the term “journal” is synonymous with “a
daily newspaper,” it is also synonymous with “a
newspaper.” It is true, as applicant points out, that
the term “journal” has other meanings. However, these
other meanings are essentially irrelevant when applicant
seeks to register THE NEWS JOURNAL for “newspapers for
general circulation.” As previously noted in the Magic
Wand case, the genericness of a term is not judged in the
abstract, but rather is judged in relation to the goods
set forth in the application, in this case, “newspapers
for general circulation.”
In sum, the above dictionary definitions
demonstrate that when used in connection with “newspapers
for general circulation,” the terms “journal” and
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“newspaper” (or “daily newspaper”) are synonyms.
Moreover, applicant’s own chosen definition of the term
“newspaper” demonstrates that this term is not limited to
a publication produced solely on a daily basis.
However, this Board does not rely simply on
dictionary definitions in order to find that applicant’s
purported mark THE NEWS JOURNAL is one generic term for
“newspapers for general circulation.” The Examining
Attorney has made of record literally dozens of articles
where the term “news journal” is used to refer to daily
newspapers, as well as weekly publications. For example,
in the October 17, 1999 edition of The San Francisco
Chronicle, a reader writes to the editor complaining that
The San Francisco Chronicle has become “too much like a
tabloid and not enough like a true news journal.” In the
August 17, 1999 edition of The San Jose Mercury News,
there is an article regarding The Palo Alto Daily News
(another daily newspaper) which states that this latter
daily newspaper “has devolved from being viewed as a
respected news journal to a novelty.” In the July 24,
1999 edition of The Orlando Sentinel a reader writes to
the editor and
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refers to The Orlando Sentinel “as a news journal.”
Finally, there are of record a number of articles
discussing the Daytona Beach News-Journal.
Of course, there are also stories wherein the
term “news journal” is used in a generic manner to refer
to publications that are produced on a weekly basis.
These stories are just as valuable in establishing that
the term “news journal” is another generic term for
“newspaper” because, as previously noted, the very
dictionary definition relied upon by applicant at page 6
of its brief for the word “newspaper” defines the term as
“a typically daily or weekly publication containing
recent news, feature articles, editorials, and usually
advertising.” The August 21, 1999 edition of The
Saturday Oklahoman refers to U.S. News & World Report as
“an internationally known news journal.” The August 6,
1999 edition of The Times-Picayune refers to “Newsweek
and other serious news journals.” Finally, the October
20, 1999 edition of The Washington Times refers to The
Economist as “the world’s leading news journal.”
The foregoing are but some of the dozens of
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articles made of record by the Examining Attorney where
the term “news journal” is used in a generic manner to
refer to a daily or weekly newspaper. Our primary
reviewing Court has cautioned this Board that when an
applicant seeks to register a phrase, the Board may not
hold the phrase to be generic without “conducting an
inquiry into the meaning of the disputed phrase as a
whole.” In re American Fertility Society, 188 F.3d 1341,
51 USPQ2d 1832, 1836 (Fed. Cir. 1999). The Examining
Attorney’s evidence has clearly established that the
phrase “news journal” is one generic term for the goods
set forth in the application, namely, “newspapers for
general circulation,” whether distributed on a daily or
weekly basis.
Three additional comments are in order. First,
we acknowledge that the Examining Attorney has failed to
uncover any generic uses of the phrase “the news
journal.” The word “the” has little if any source
identifying significance. Given the fact that the
Examining Attorney has established that the phrase “news
journal” is generic for newspapers for general
circulation, we find that the addition of the word “the”
to this term does not alter its
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generic character. By way of analogy, there is
absolutely no dispute that the word “newspaper” is a
generic term for “newspapers for general circulation.”
We are of the firm belief that no one would contend that
the phrase “the newspaper” is not likewise a generic term
for newspapers for general circulation. If the term “the
newspaper” is generic for said goods, then the term “the
news journal” is likewise generic.
Second, we do not take issue with applicant that
as used in connection with newspapers for general
circulation, the term “newspaper” is an infinitely more
popular generic term than is “news journal” or “the news
journal.” However, as previously pointed out, most
products have more than one generic term, and all generic
terms must remain in the public domain to be freely used
by all competitors.
Finally, if there were any lingering doubts as
to whether the term “the news journal” was generic for
newspapers for general circulation, this doubt is totally
eliminated when one carefully reviews the five
declarations made of record by applicant in an attempt to
establish that
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THE NEWS JOURNAL is indeed a mark, and not a generic
term. The first declaration is from applicant’s
treasurer, and he states in paragraph 5 that “to his
knowledge, the great majority of residents in the
circulation area of THE NEWS JOURNAL newspaper
[Wilmington, Delaware] understand the phrase ‘news
journal’ to refer to THE NEWS JOURNAL newspaper and not
to a generic general circulation newspaper.” (emphasis
added). Employees of Lord & Taylor, Macy’s, Best Buy,
and Boscov’s Department Stores who are responsible for
placing advertising in newspapers all state that when
they “conduct business … in Wilmington, Delaware,” they
do not use “the phrase ‘news journal’ or ‘the news
journal’ to refer to any newspaper other than THE NEWS
JOURNAL newspaper in Wilmington, Delaware.”
The declarations of these five individuals
selected by applicant were very carefully worded so as to
simply claim that in Wilmington, Delaware, the title of
applicant’s newspaper (THE NEWS JOURNAL) may no longer be
a generic term, but rather is understood as referring to
a particular newspaper. However, applicant has made no
effort whatsoever to demonstrate that the title of its
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newspaper (THE NEWS JOURNAL) has lost its generic status
anywhere besides Wilmington, Delaware. In other words,
even applicant’s own chosen declarants (including its own
treasurer) make no claim whatsoever that to the vast
majority of Americans residing outside of Wilmington,
Delaware, the term “the news journal” would be perceived
as anything other than a generic term for newspapers for
general circulation.
We are fully aware that applicant has made use
of THE NEWS JOURNAL on a newspaper for general
circulation in Wilmington for over a quarter of a
century. In Wilmington, Delaware and perhaps surrounding
areas, the term THE NEWS JOURNAL may indeed be viewed by
most residents as referring exclusively to applicant’s
daily newspaper. However, by means of its current
application, applicant seeks to gain exclusive rights to
the phrase “the news journal” for newspapers for general
circulation in every part of the United States.
Applicant’s evidentiary showing is totally lacking in
rebutting the showing put forth by the Examining Attorney
that in most of the United States, the term “the news
journal” is one generic term for newspapers for
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general circulation.
Assuming that our determination that applicant’s
mark is generic in the vast majority of the United States
is found to be erroneous, we turn now to a consideration
of whether the merely descriptive term “the news journal”
has acquired distinctiveness pursuant to Section 2(f) of
the Trademark Act as indicating a general circulation
newspaper emanating solely from applicant. To cut to the
quick, applicant has totally failed to establish that to
any appreciable number of Americans, applicant’s
purported mark THE NEWS JOURNAL has acquired
distinctiveness as indicating a newspaper emanating
solely from applicant. At most, applicant has
established that its purported mark has acquired
distinctiveness simply in Wilmington, Delaware and
perhaps surrounding communities.
Decision: The refusal to register on the basis
that applicant’s mark is generic to the vast majority of
Americans is affirmed. The alternate basis for refusal,
that applicant’s mark is merely descriptive to the vast
majority of Americans and lacks acquired distinctiveness,
is also affirmed.
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