CurtCo Freedom Group, L.L.C.

Trademark Trial and Appeal Board

May 29, 2001

No. 75625495 (T.T.A.B. May. 29, 2001)

5/29/01
Paper No. 9
AD
UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re CurtCo Freedom Group, L.L.C.
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Serial No. 75/625,495
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Tirzah Ab
Lowe of Knobbe, Martens, Olson & Bear, LLP for
CurtCo Freedom Group, L.L.C.
Gwen P. Stokols, Trademark Examining Attorney, Law Office
107 (Thomas Lamone, Managing Attorney).
_______
Before Hanak, Wendel and Drost, Administrative Trademark
Judges.
Opinion by Drost, Administrative Trademark Judge:
CurtCo Freedom Group, L.L.C. (applicant) filed a
trademark application to register the mark SMALL BUSINESS
COMPUTING & COMMUNICATIONS (typed drawing) for “general
interest magazines regarding technology needs for business
operators” in International Class 16.1
1 Serial No. 75/625,495, filed January 22, 1999. Applicant
alleges a date of first use and a date of first use in commerce
of February 24, 1998.
THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Ser No. 75/625,495
2
The Examining Attorney refused to register the mark on
the ground that the mark, when applied to the goods, is
merely descriptive. 15 U.S.C. § 1052(e)(1).
After the Examining Attorney made the refusal final,
applicant filed a notice of appeal. Both applicant and the
Examining Attorney have filed briefs, but applicant did not
request an oral hearing.
We affirm the Examining Attorney’s refusal to
register.
The Examining Attorney’s position is that the mark is
not registrable because it is merely descriptive of the
subject matter of applicant’s magazines. The prior
Examining Attorney2 submitted evidence from an Internet
search to show that the terms “small business” and
”computing and communications” are commonly used,
descriptive terms. With this evidence, she determined that
“the juxtaposition of the terms in the present case will be
readily understood by purchasers to mean computing and
communications for small businesses.” First Office Action,
p. 2.
In response to this refusal, applicant submitted
definitions of the words “small,” “business,” “computing,”
2 The current Examining Attorney was not the original Examining
Attorney in this case.
Ser No. 75/625,495
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and “communications” to argue that the terms “could have a
multitude of meanings depending on the specific definition
of each word selected.” Applicant’s Response dated March
7, 2000, p. 3. After the Examining Attorney made the
refusal final, applicant appealed and argued that the term
“small business computing & communications” is not commonly
used in the industry and the fact that the magazine reviews
computer hardware and software and has a column entitled
“Communications” does not mean that the mark is merely
descriptive. Applicant concludes by arguing that consumers
must make a mental pause to deduce that the mark suggests
the subject matter of the goods.
In her Appeal Brief, the Examining Attorney refers to
applicant’s specimen for support. First, she quotes the
Editor’s Note to show that the magazine is marketed to
small business owners and operators. “We are solely
concentrating on helping you, the owner of a small
business, use technology to run your company.” Next, she
looked at the magazine’s “Table of Contents.” She observed
that the contents of the magazine included “reviews, advice
and information about various software and computer
hardware” and one of the sections of the magazine was
labeled “Communications.” Examining Attorney’s Brief, p.
Ser No. 75/625,495
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5. With this evidence, she concluded that the mark in its
entirety was merely descriptive.
A mark is merely descriptive if it immediately
describes the ingredients, qualities, or characteristics of
the goods or services or if it conveys information
regarding a function, purpose, or use of the goods or
services. In re Abcor Development Corp., 588 F.2d 811, 200
USPQ 215, 217 (CCPA 1978). A term may be held descriptive
even if it only describes one of the qualities or
properties of the goods or services. In re Gyulay, 820
F.2d 1216, 1217, 3 USPQ2d 1009, 1009 (Fed. Cir. 1987). We
look at the mark in relation to the goods or services, and
not in the abstract, when we consider whether the mark is
descriptive. Abcor, 588 F.2d at 814, 200 USPQ at 218.
It is well settled that the title of a magazine is
descriptive if it describes the contents of the magazine.
See, e.g., In re Gracious Lady Services, Inc., 175 USPQ 380
(TTAB 1972) (“CREDIT CARD MARKETING” merely descriptive of
periodic pamphlet devoted to subjects of interest to those
engaged in credit card merchandising field); In re Nippon
Kokan Kabushiki Kaisha, 171 USPQ 63 (TTAB 1971) (“JAPAN
STEEL NOTES” merely descriptive of magazine pertaining to
the Japanese steel industry); In re Medical Digest, Inc.,
148 USPQ 148 (TTAB 1965) (“OB/GYN DIGEST” is merely
Ser No. 75/625,495
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descriptive of magazines in the field of obstetrics and
gynecology).
In this case, the evidence of record supports the
Examining Attorney’s conclusion that the applicant’s mark
is merely descriptive of its goods. First, the Examining
Attorney pointed out that the Editor’s Note (p. 12) clearly
indicates the magazine is “concentrating solely in helping
you, the owner of a small business, use technology to run
your company.” Second, the subscription card for
applicant’s magazine included with the magazine contains
the phrase “Today’s computing solutions for small
businesses.” Applicant’s ad for its own magazine (p. 29)
further emphasizes the descriptiveness of the terms “small
business” and “computing.”
Computing technology is providing small businesses
with an engine for growth!
Did you know that…
Over 80% of all small business are using computers?
Small business is responsible for one quarter of all
system shipments (PCs/notebooks/servers)?
One million small businesses will adopt networking
solutions this year?
Technology enabled small businesses are the most
likely to experience 10% annual growth?
Source: IDC Small Business Research, 1998
Ser No. 75/625,495
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Reach small business owners and operators who have
embraced computing technology to make their companies
grow smarter, faster and more productive.
- 80% of SBC&C readers are owners of a small business
- They consider SBCC an important part of the
technology decision making process.
- The average reader spends 40 hours a week with
computers – including 24 hours at home or on the
road with computers.
- They consider technology to be critical and
essential to their businesses.
- They are loyal readers spending over one hour with
SBC&C each month.
- They keep their equipment up to date – 73% are
currently using the latest Pentium II processors.
From this evidence and the Internet printouts, if
would be reasonable to assume that potential customers will
understand that that term “small business” refers to the
owners and operators of small businesses. The term “small
business” is commonly used, and consumers will not have
difficulty understanding the meaning of this term even
though applicant suggests otherwise (Brief, p. 3).
For example, the word “small” can mean little in size,
extent, or quantity. The word is also defined as
unimportant or trivial. Further, the word “small” can
mean operating with limited resources or funds.
Finally, the word is defined as petty, mean, humbled
and humiliated.
The term “business” has an especially broad
application. “Business” may refer to one’s
occupation. In addition, the word means trade or
commerce, Further, the term can be defined as a
Ser No. 75/625,495
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commercial enterprise. Another meaning for the word
“business” is volume of trade. Moreover, the term is
used to refer to commercial practice or policy.
Additionally, “business” is defined as one’s rightful
concern. Finally, the word means “an affair or
matter.”
Despite applicant’s argument that the term has many
meanings, the evidence demonstrates that prospective
customers will understand that the subject matter of the
magazine is directed to or of interest to the owners or
operators of small businesses as applicant itself states in
its advertising and Editor’s Note.
The same advertisement (p. 29 of applicant’s magazine)
also emphasizes that the term “computing” would also be
understood to refer to the use of computers in small
businesses.
- “Computing technology is providing small businesses
with an engine of growth”
- “80% of all small business are using computers”
- “Reach small business owners and operators who have
embraced computing technology.”
In addition, on its subscription postcard, applicant
describes its magazine with the slogan “Today’s computing
solutions for small businesses.” A review of the contents
of the magazine demonstrates that computers and computer-
Ser No. 75/625,495
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related goods and services are a prominent subject of
applicant’s magazine. Relevant articles include:
- Inoculate Your Network
When it comes to computer viruses, prevention is the
only cure.
- Future Impact
These five technologies are changing the way we do
business. Stay competitive by understanding
business-to-business e-commerce, open source
software . . . .
- Your site
Keep your site free of hackers by following these 10
steps.
- The Networked Office
- Everything you always wanted to know … About
databases.
- Buyer’s Guide
In-depth ratings and reviews of 19-inch monitors and
network management utility software.
The next question is whether “communications”
describes a feature of applicant’s magazine. The Examining
Attorney has already noted that the magazine features a
section entitled “Communications.” The subject of that
section is “How to upgrade from a key system to a larger,
fuller-featured PBX phone system.” Other articles in the
magazine involve communication issues and products,
including:
- Cellular/wireless trends
- The future of faxing
Ser No. 75/625,495
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- Local phone companies and the law
- Future Impact
Mobile and speech technology
In addition to communicating by phone and fax, other
articles deal with network communications and mobile
travelers. This evidence clearly supports the Examining
Attorney’s holding that the term “communications” is
descriptive of the subject matter of applicant’s magazine.
However, despite the fact that the terms “small
business,” “computing” and “communications” are descriptive
of applicant’s magazine, it does not mean that when the
terms are combined, they are still merely descriptive. We
must consider whether the phrase SMALL BUSINESS COMPUTING &
COMMUNICATIONS is merely descriptive. Applicant points to
the fact that the Examining Attorney did not introduce any
evidence that anyone is using the exact phrase
descriptively. Of course, this is not the test. The
absence of evidence that anyone else is using a term does
not prevent a finding that the term is descriptive. In re
Helena Rubinstein, Inc., 410 F.2d 438, 441, 161 USPQ 606,
609 (CCPA 1969) (“Applicant’s long use of the wording, and
the fact that others have not used it up to this time, does
not make it any less an apt description for the goods”).
Ser No. 75/625,495
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Here, there is nothing incongruous about the words
“small business computing & communications” for a general
interest magazine directed to small business owners and
operators dealing with computers and communications
technology. The evidence from applicant’s magazine and the
Internet printouts show that the terms “computing” or
“computers” and “communications” are the subject of
applicant’s magazines and are often used together.
Therefore, we conclude that, when all the terms are
combined, they create a mark that is merely descriptive of
the goods set forth in the application.
Decision: The Examining Attorney’s refusal to
register the mark SMALL BUSINESS COMPUTING &
COMMUNICATIONS on the ground that it is merely descriptive
of applicant’s general interest magazines regarding
technology needs for business operators is affirmed.