Great Thoughts, LLC

Trademark Trial and Appeal Board

Jan 6, 2005

No. 76016727 (T.T.A.B. Jan. 6, 2005)

Mailed: January 6, 2005
PTH
UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Great Thoughts, LLC
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Serial No. 76016727
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William P. Oberhardt of William P. Oberhardt, LLC for Great
Thoughts, LLC.
Kathleen M. Vanston, Trademark Examining Attorney, Law
Office 103 (Michael Hamilton, Managing Attorney).
_______
Before Hairston, Bottorff and Drost, Administrative
Trademark Judges.
Opinion by Hairston, Administrative Trademark Judge:
Great Thoughts, LLC seeks registration on the
Principal Register of the mark PVDVD for, as amended, the
following goods and services:
audio and video cassettes featuring music,
movies, and filmed products for general
entertainment; compact discs, video cassettes,
digital video disks, versatile disks, CD-ROMs
and DVD-ROMs containing music, movies and
filmed products for general entertainment;
CD-ROMs and DVD-ROMs containing computer
software for word processing, spreadsheets,
data processing, data analysis, data
manipulation, web browser, search engine,
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF
THE TTAB
Ser No. 76016727
2
graphic display, graphic manipulation,
video display, video manipulation, computer
files maintenance, computer programming,
and entertainment in the nature of video
games, for business, home, education or
developer use in class 9; and
retail store, mail order catalogue, phone
order and computerized on line ordering
services in the field of audio and video
recordings and hardware, video game
software and hardware, computer software
and hardware and related electronic home
products and equipment in class 35.1
The Trademark Examining Attorney has finally refused
registration of the mark on the ground that it is merely
descriptive of the identified goods and services and thus
unregistrable under Trademark Act Section 2(e)(1).
Applicant has appealed. The Examining Attorney and
applicant have filed briefs. No oral hearing was
requested.
The Examining Attorney maintains that “PV” means
“previously viewed” and that “DVD” means “digital video
disk.” Thus, according to the Examining Attorney,
applicant’s mark PVDVD means “previously viewed digital
video disk.” The Examining Attorney argues that PVDVD is
merely descriptive of the identified goods which presumably
1 Application Serial No. 76016727, filed March 7, 2000, on the
basis of applicant’s bona fide intention to use the mark in
commerce.
Ser No. 76016727
3
will include previously viewed DVDs and the identified
services which presumably will feature previously viewed
DVDs for purchase.
In support of the refusal, the Examining Attorney
submitted Internet printouts wherein the designations “PV”
and “PV DVD” appear.
Applicant, in urging reversal of the refusal to
register, argues that the Examining Attorney has not
considered the mark as a whole, but rather has considered
the two portions, namely “PV” and “DVD” separately; that
there is no evidence to support the Examining Attorney’s
presumption that applicant intends to sell previously
viewed DVDs; that “PV” in applicant’s mark could have other
meanings; and that the Examining Attorney has provided no
evidence that the combined term PVDVD is merely descriptive
of the identified goods and services.
A term is considered to be merely descriptive of goods
or services, within the meaning of Section 2(e)(1) of the
Trademark Act, if it immediately describes an ingredient,
quality, characteristic or feature thereof or if it
directly conveys information regarding the nature,
function, purpose or use of the goods or services. In re
Abcor Development Corp., 588 F.2d 811, 200 USPQ 215, 217-18
(CCPA 1978). It is not necessary that a term describe all
Ser No. 76016727
4
of the properties or functions of the goods or services in
order for it to be considered to be merely descriptive
thereof; rather, it is sufficient if the term describes a
single significant attribute or idea about them. In re
Venture Associates, 226 USPQ 285 (TTAB 1985). Moreover,
the question of whether a mark is merely descriptive must
be determined not in the abstract, that is, by asking
whether one who sees the mark alone can guess what the
applicant’s goods or services are, but in relation to the
goods or services for which registration is sought, that
is, by asking whether, when the mark is applied to the
goods or services, it immediately conveys information about
their nature. In re Bright-Crest, Ltd., 204 USPQ 591, 593
(TTAB 1979).
Further, we note that as a general rule, initials are
not considered descriptive unless “they have become so
generally understood as representing descriptive words as
to be accepted as substantially synonymous therewith.” See
Modern Optics, Inc. v. The Univis Lens Co., 234 F.2d 504,
110 USPQ 293, 295 (CCPA 1956). See also Property Damage
Appraisers, Inc. v. Property Damage Appraisers, Inc., 177
USPQ 792 (TTAB 1973).
At the outset, we note that there is no dispute that
“DVD” is descriptive of digital video disks. Moreover,
Ser No. 76016727
5
there is no question that “previously viewed” has
descriptive significance as applied to digital video disks.
In the present case, applicant’s “DVD-ROMs containing
music, movies and filmed products for general
entertainment” are broad in nature such that they may be
presumed to include previously viewed DVDs. Similarly,
applicant’s “retail store, mail order catalogue, phone
order and computerized on line ordering services in the
field of audio and video recordings” are broad in nature
such that it may be presumed that applicant will offer
previously viewed DVDs for purchase.
Further, the following Internet printouts submitted by
the Examining Attorney clearly establish that “PV” is a
recognized initialism for “previously viewed” and that “PV
DVD” is a recognized designation for a “previously viewed
DVD.”
-The homepage of “Hollyweb DVD” contains the following:
DVD Collection Plan
Discounts on PV movies
Limited Quantity Super-Specials
every week on selected New & PV DVDs
No minimum purchase
-The homepage of “Hollywood Liquidators” states that:
Previously viewed movies are sometimes
looked at by the public as defective goods.
In essence they are FAR from that. You
probably did not know this but most of those
big rental chains buy their inventory from
Ser No. 76016727
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companies like ours. Yes, that catalog
movie you rented last week could have been
a PV movie from some past video store.
After fifteen years of selling PV videos, we
seldom have a problem.
-The homepage of “MickeysMovies.com”, states that customers
may:
Order any 10 videos and get A Bug’s Life
video free!
Video: N = New Video
PV = Previously viewed video
-At the “e-bay” website, there are the following listings:
Agent Cody Banks PV DVD Movie
Red Dragon PV DVD Movie
-At “The Movie Room” website, there is a movie review which
states:
The good news is that I picked up this
movie as a PV (previously viewed) DVD.
-The “Meta Exchange” website has the following listing:
Sixth Sense, The (PV DVD)
-The website of “dv-depot.com” states:
What is the quality of PV DVDs? All items
are legitimate Region 1 DVDs, the condition will
be stated on the product page under “used
condition.”
Are PV DVDs Guaranteed? Yes. All of these
products have been thoroughly inspected
and we guarantee they are in good working
order.
We find that this evidence suffices to establish that
“PV” is a readily recognizable initialism for “previously
viewed” and that the term is merely descriptive as applied
Ser No. 76016727
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to previously viewed digital video disks, i.e., DVDs.
Further, the evidence of record leaves no doubt that “PV
DVD” is merely descriptive of a previously viewed DVD.
Further, the mere joining of PV and DVD to form the
unitary designation PVDVD does not result in an inventive,
incongruent or otherwise inherently distinctive new
composite. Rather, we find that PVDVD is the legal
equivalent of the merely descriptive term PV DVD;
applicant’s compression of the two terms does not change
the commercial impression or create any new or different
meaning.
Under the circumstances, we find that PVDVD is merely
descriptive of applicant’s DVD-ROMs containing movies and
filmed products which may be presumed to include previously
viewed digital video disks. Further, we find that PVDVD is
merely descriptive of applicant’s retail store, mail order
catalogue, phone order and computerized on line ordering
services in the field of audio and video recordings which
may be presumed to include offering previously viewed
digital video disks for purchase.
Decision: The refusal to register under Section
2(e)(1) of the Trademark Act is affirmed.