IDG Books Worldwide, Inc.

Trademark Trial and Appeal Board

Jan 5, 2001

No. 75975176 (T.T.A.B. Jan. 5, 2001)

1/5/01
Paper No. 22
DEB
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re IDG Books Worldwide, Inc.
________
Serial No. 75/975,176
_______
Mark B. Harrison and Marcia A. Augerger of Venable Baetjer
Howard & Civiletti for IDG Books Worldwide, Inc.
Gerald T. Glynn, Trademark Examining Attorney, Law Office 102
(Thomas Shaw, Managing Attorney).
_______
Before Simms, Hohein and Bucher, Administrative Trademark
Judges.
Opinion by Bucher, Administrative Trademark Judge:
On February 9, 1995, International Data Group Inc. filed
an intent to use application on the Principal Register for a
trademark depicted as “----FAQS” for “books in the field of
computers, computing and computer software.” After receiving
repeated refusals under Section 2(e)(1) of the Act, 15 USC
§1052(e)(1), applicant filed an amendment to allege use, and
also amended the application to seek registration on the
Supplemental Register. At that time, the Trademark Examining
Attorney refused registration on the ground that the phantom
mark (shown above) as depicted on the original typed drawing
THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Serial No. 75/975,176
2
was impermissible, and furthermore, that the asserted mark was
incapable of identifying applicant’s books and distinguishing
them from the books of others. A subsequent amendment of the
mark to merely “FAQS” was accepted by the Trademark Examining
Attorney, but applicant1 has appealed from the Section 23
refusal. Applicant and the Trademark Examining Attorney have
submitted briefs. Applicant did not request an oral hearing.
We affirm the refusal to register.
Applicant argues, in urging that the refusal be reversed,
that the mark sought to be registered is not a generic name
for applicant’s books. The totality of applicant’s argument
in its appeal brief is as follows (brief, unnumbered page 2):
It is the applicant’s position that, while the
term FAQS may be descriptive of the subject
matter of applicant’s books, it is not a
generic designation for those books.
There is no evidence that the term FAQS
identifies a category of books rather than the
subject matter of the books.
As a descriptive designation, the term FAQS
should be registrable on the Supplemental
Register, and the refusal of registration
should therefore be reversed.
By contrast, it is the Trademark Examining Attorney’s
position that the alleged mark, “FAQS,” is not capable of
1 The assignment records of the USPTO reflect the fact that this
application was assigned with the entire interest and goodwill to
IDG Books Worldwide, Inc. (a Massachusetts corporation), and then
subsequently assigned by merger with IDG Books Worldwide, Inc. (a
Delaware corporation).
Serial No. 75/975,176
3
identifying applicant’s books and distinguishing them from the
computer books of others. He claims that the record shows
that “FAQ” is the generic acronym for “frequently asked
question” (or the pluralized form “FAQs”2 for “frequently asked
questions”). Further, he argues that the evidence of record
demonstrates that there exists an entire category of
publications and/or books, now seen in a wide variety of
fields, comprising compilations of frequently asked questions.
This is especially true for books targeted to the computer
industry, where this acronym3 was coined and popularized.
As our principal reviewing court has stated:
…[D]etermining whether a mark is generic …
involves a two-step inquiry: First, what is
the genus of goods or services at issue?
Second, is the term sought to be registered …
understood by the relevant public primarily to
refer to that genus of goods or services?
H. Marvin Ginn Corporation v. International Association of
Fire Chiefs, Inc., 782 F.2d 987, 990, 228 USPQ 528, 530 (Fed.
Cir. 1986). Generic terms are by definition incapable of
indicating source and thus can never attain trademark status.
2 While the title pages of virtually all of applicant’s books
consistently show the letters “FAQ” larger than the trailing letter
“s,” and many of the LEXIS-NEXIS stories show upper-case letters
“FAQ” followed by a lower-case letter “s,” this is a distinction
never discussed by applicant or the Trademark Examining Attorney, so
for purposes of this decision, we will consider “FAQs” and “FAQS” as
legally identical.
3 While several dictionary entries do show the term pronounced as
a single-syllable acronym, in our experience, the term is sometimes
also spoken as an initialism, or “F-A-Ques.”
Serial No. 75/975,176
4
However, with respect to genericness, the Office has the
burden of proving the refusal with “clear evidence” of
genericness. In re Merrill, Lynch, Pierce, Fenner & Smith,
Inc., 828 F.2d 1567, 4 USPQ2d 1141, 1143 (Fed. Cir. 1987). As
seen above, the critical issue in genericness cases such as
this one is whether members of the relevant public primarily
use or understand the term sought to be registered to refer to
the genus or category of goods in question. H. Marvin Ginn
Corporation, supra, and In re Recorded Books, Inc., 42 USPQ2d
1275 (TTAB 1997). Evidence of the relevant public’s
perception of a term may be obtained from any competent
source, including newspapers, magazines, dictionaries, trade
journals, catalogs and other publications. In re Leatherman
Tool Group, Inc., 32 USPQ2d 1443, 1449 (TTAB 1994), citing In
re Northland Aluminum Products, Inc., 777 F.2d 1566, 227 USPQ
961, 963 (Fed. Cir. 1985).
The Examining Attorney supports his position with
excerpts from a number of dictionary definitions of the term,
from applicant’s specimens of record, from dozens of articles
obtained from the LEXIS/NEXIS® database as well as from
multiple Internet sites.
The dictionary definitions read as follows:
FAQ Acronym for frequently asked question.
Any of a number of questions that might be
asked by newcomers to a source of information
Serial No. 75/975,176
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on the Internet, typically a USENET newsgroup.
A list of FAQs and their answers is compiled by
each newsgroup and is freely available to
Internet users.4
FAQ Frequently Asked Questions (ACRL)5
Frequently asked questions (FAQs): Short lists
of common questions – and their answers – that
are provided to users of a given Internet site.
Pronounced “facks,” these lists are designed to
explain to a novice (or newbie) the scope of
information available at the site, and the
basics on how to use it. They are common on
Usenet newsgroups. Because regular group
members are bored silly by newbies asking the
same old things, newbies are expected to
familiarize themselves with a site’s FAQs
before joining an on-line discussion there.6
FAQ 1. A Frequently Asked Question. 2. A
compendium of accumulated lore, posted
periodically to high-volume news groups in an
attempt to forestall such questions… 7
The first definition above focuses on the dynamic origins
of the term FAQ in the interactive world of on-line users.
The last definition shows that the same term is also used to
refer to a “compendium” of such entries. It is clear from
applicant’s own specimens of record that many companies have
4 American Heritage Dictionary of Computer Words: An A to Z
Guide to Today’s Computers,” p. 100.
5 Acronyms, Initialisms and Abbreviations Dictionary, Gale
Research, 1997, p.29; the specific source for this acronym is
identified as ACRL, an acronym reference list dated January 13,
1997, and found at http://mailme.com/acronyms .
6 Cyber Dictionary: Your Guide to the Wired World, Knowledge
Exchange, LLC 1996, p. 119.
7 The New Hackers Dictionary, Eric S. Raymond, 1996, p. 181.
Serial No. 75/975,176
6
moved this helpful technique into the world of bound volumes,
especially useful for those who prefer books in solving their
computing problems. The record contains copies of the front
covers of applicant’s own books wherein the trade dress
incorporates the term “FAQs” into the book titles. Beneath
the titles and sub-titles are examples of the prominent blurbs
shown on the respective covers:
• PC FAQs: Frequently Asked Questions & Answers form
Compaq Customer Service;
Answers to Your Most Frustrating PC Questions,
from the Experts at Compaq Customer Service
Save Time & Money with Instant Help on PC
Hardware, Software the Internet, Laptops, Modems,
Printers, & Much More
• Internet FAQs: Answers to the Most Frequently Asked
Questions;
Answers to the Most Frustrating Internet Questions
at Your Fingertips – for Windows, Mac, & UNIX
Users
Save Time & Money with Instant Help on Using the
World Wide Web, E-mail, Usenet, Gopher, FTP, &
Much More
• Macworld Mac FAQs: Answers to the Most Frequently
Asked Questions”;
Your Burning Macintosh Questions, Expertly
Answered
Find Out How to Do It, When to Buy It, And How to
Solve it – Including Instant Help on Power Macs,
System 7.5, Performas, Word 7, and More!
Serial No. 75/975,176
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Written by the hottest Macintosh author around,
David Pogue, Macworld Mac FAQs gives users the
ultimate Mac reference. Hundreds of Mac questions
and answers side-by-side, right at your
fingertips, and organized into six easy-to-
reference sections with lots of sidebars and
diagrams.
• 1001 Computer FAQs: Frequently Asked Questions &
Answers form Compaq Customer Service;
The people who staff the world’s most reliable
customer-support lines team up to answer the
questions that vex every new computer owner. Not
just for owners of Compaq systems, this unique
offering is geared toward people who demand
instant help as they install and explore their
machines. Every answer in this book is the result
of countless hours of phone consultation with
average users. IDG Books and Compaq have put
together the definitive book of Frequently Asked
Questions.
• OS/2 Warp FAQs
At last, the ultimate answer book for every OS/2
Warp user. Direct from IBM’s Service Hotline,
OS/2 Warp FAQs is a comprehensive question and
answer guide that helps you optimize your system
and save time by putting the answers to all your
questions right at your fingertips.
Applicant, in its response filed on January 17, 1996,
confirms the origin of the acronym as follows:
As is clear from the covers of applicant’s
books, the designation FAQS is used by
applicant as an abbreviation for the phrase
FREQUENTLY ASKED QUESTIONS.
The NEXIS evidence clearly establishes that a “FAQ” is a
widely known type of book compiling frequently asked
Serial No. 75/975,176
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questions. As representative examples of the uses of the term
by others in the publishing fields, we note the following:
As most smart novices and savvy computer
professionals know, often the fastest way to
get an answer is to head for a Web site or
USENET group’s FAQ (frequently asked questions)
file. Well-maintained FAQs are priceless
(Isn’t it ironic that they are free?). In the
MFC Answer Book, Kain has taken the FAQ format
and turned it into a book. The San Diego Union
Tribute, January 12, 1999.
In recent weeks, Nolo Press’s most popular book
has not been sold but given away, as a gift to
mark its 25th anniversary. It’s “Nolo’s Little
Law Book,” a 92-page paperback with answers to
scores of “everyday legal questions” about 25
subjects, from buying a house to legal
malpractice. For a copy, write to Nolo Press,
Attn. FAQ Book, 950 Parker St., Berkeley,
Calif. 94710… The Atlanta Journal and
Constitution, August 5, 1996.
Every business has FAQs, frequently asked
questions. Customer representatives know all
of them. Why not publish the FAQs and the
answers? Not only does this reduce the number
of telephone calls, it makes customers feel
better informed. American Salesman, October
1996.
Every newsgroup has an FAQ, a file of
frequently asked questions. This group has an
FAQ that would make a book publisher drool.
Hundreds of firsthand reports have been
compiled into a list of practical advice,
creative suggestions and calming reassurances.
“Parents look for help and share advice in
Cyberspace,” The Dayton Daily News, June 12,
1995.
When I train others in NetWare, I usually start
by having them read the FAQ document first and
then the red books (the NetWare manuals),
because the materials make much more sense if
they are read in that order. “Creating DOS and
Serial No. 75/975,176
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NetWare Batch Files,” LAN Magazine, January 1,
1997.
Finally, we note that the record in this case (from the
LEXIS/NEXIS® database as well as specific Web sites) contains
multiple references to the availability of bound books (ones
published and distributed by third parties) entitled The Adobe
FAQ book, The SGML FAQ book, “C++ Faq, Java Faqs, etc.
Question #1: What is the genus of these books?
In the language of H. Marvin Ginn Corporation, supra,
what is the precise genus of applicant’s books? The
identification of goods involved herein reads simply “books in
the field of computers, computing and computer software.”
Hence, the broad category of goods involved here is computer-
related books. In the abstract, this might be read to include
textbooks or technical journals targeted to computer
professionals knowledgeable in a certain field or application.
However, all the evidence of record points to simpler,
abbreviated texts compiled for the mass-market of computer
“newbies.” As shown by applicant’s own literature and by the
LEXIS-NEXIS® articles, books within this sub-category of
computer publications share a number of common features or
characteristics. Succinctness, simplicity and brevity are
paramount. The category is characterized by sensibly
Serial No. 75/975,176
10
organized and well-indexed books on “how-to” accomplish the
most frequently used tasks in a computer application. If
successful in this category, these bound resources necessarily
promote fast, easy and visual learning. The computer novice
quickly finds general but vital information in easy-to-follow
steps. Each volume contains specific tips, diagnostic
checklists, problem-solving techniques and troubleshooting
guides. Some desktop collections comprise compilations of on-
line forums or the republication of electronic newsletters.
An increasingly popular format for all of these books targeted
to computer users is that of grouping together the most
commonly asked questions on a given topic, with each question
followed by the correct answer – a format known as FAQs.
Question #2: Is the term “FAQS” understood by the relevant
public primarily to refer to this class of goods
The target audience for these goods is made up of
computer users, perhaps including some computer professionals,
but certainly intended for the computer user who is new to a
particular application. Here the Trademark Examining Attorney
maintains that FAQs is a term of art used by those in the
forefront of computer innovation, to identify a compilation of
frequently asked questions with their answers. Consistent
with applicant’s identification of goods, and as further
demonstrated by applicant’s specimens of record, this is
Serial No. 75/975,176
11
precisely the product applicant is marketing. Inasmuch as the
term “FAQs” alerts the computer user to the fact that
applicant’s books have the format of “frequently asked
questions,” we agree that the evidence clearly demonstrates
that “FAQS” will be readily understood by the relevant public
primarily to refer to this class of books. Without a doubt,
whether the term under scrutiny for the format of a computer
book would be “quick reference guide,” “checklist,” “tips” or
“frequently asked questions,” we note that “[a]ll of the
generic names for a product belong in the public domain.” In
re Sun Oil Company, 426 F.2d 401, 165 USPQ 718, 719 (CCPA
1970).
Accordingly, we find that under the second part of the
Marvin Ginn test, the designation “FAQS” is one of the terms
that would be readily understood by the computer user as
primarily referring to the category of computer-related books
into which applicant’s products fall. That is, FAQs will be
understood as referring to the format of applicant’s books,
and thus is incapable of functioning as a mark indicating
applicant as the source of goods of this type. See In re Sun
Oil Co., 426 F.2d 401, 165 USPQ 718 (CCPA 1970) [CUSTOM
BLENDED was held generic for gasoline]; J. Kohnstam, Ltd. v.
Louis Marx & Co., 280 F.2d 437, 126 USPQ 362 (CCPA 1960)
[MATCHBOX for toy vehicles was held generic because that
Serial No. 75/975,176
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category of toy cars was sold in matchbox-sized boxes]; and In
re Central Sprinkler Co., 49 USPQ2d 1194 (TTAB 1998) [ATTIC
held generic for automatic sprinklers for fire protection].
Decision: The refusal to register under Section 23 is
affirmed.