Infonxx, Inc.

Trademark Trial and Appeal Board

Jun 29, 2001

No. 75271225 (T.T.A.B. Jun. 29, 2001)

06/29/01
Hearing: Paper No. 18
April 3, 2001 DEB
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Infonxx, Inc.
________
Serial No. 75/271,225
_______
James S. Blank and Nicholas G. Mehler of Latham & Watkins for
Infonxx, Inc.
Wanda Kay Price, Trademark Examining Attorney, Law Office 111
(Craig Taylor, Managing Attorney).
_______
Before Simms, Wendel and Bucher, Administrative Trademark
Judges.
Opinion b
Info
PAGES for
The
registrat
descripti
Trademark
Appl
and appli
1 Appl
based upo
commerce
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT
OF THE TTABy Bucher, Administrative Trademark Judge:
nxx, Inc. seeks registration of the mark WIRELESS
“telephone directory information services.”1
Trademark Examining Attorney has finally refused
ion on the ground that applicant’s mark is merely
ve of its services, under Section 2(e)(1) of the
Act, 15 U.S.C. §1052(e)(1).
icant has appealed. The case has been fully briefed
cant requested an oral hearing before this Board.
ication Serial No. 75/271,225, filed on April 7, 1997,
n an allegation of a bona fide intention to use the mark in
on the goods as recited above in Int. Cl. 35.
Serial No. 75/271,225
- 2 -
Applicant and the Office were both represented at this
hearing.
The Trademark Examining Attorney argues that the mark
WIRELESS PAGES merely describes a feature of applicant’s
services. In support of this position, she has placed into
the record stories from the LEXIS/NEXIS database retrieved
from several distinctly different search strategies, as well
as a dictionary definition of the word “cellular.”2
On the other hand, applicant contends that the Trademark
Examining Attorney has failed to demonstrate that the mark as
a whole is merely descriptive of applicant’s telephone
directory information services.
Based upon careful consideration of the record in this
application and the arguments on appeal, we agree with
applicant, and find that the Trademark Examining Attorney had
not met her burden of establishing that the mark as a whole is
merely descriptive of the services recited in the application.
It is well settled that a term is considered to be merely
descriptive within the meaning of Section 2(e)(1) of the
Trademark Act, if it immediately conveys information about an
2 Cellular A wireless local telephone service that operates by
dividing a geographical area into sections (cells). Each cell has
its own transmitter/receiver that tracks and operates with cellular
telephones within its area. The dimensions of a cell can range from
several hundred feet to several miles. McGraw-Hill Illustrated
Telecom Dictionary, (1998) p. 83.
Serial No. 75/271,225
- 3 -
ingredient, quality, characteristic, feature, function,
purpose or use of the goods or services with which it is being
used. See In re Gyulay, 820 F.2d 1216, 3 USPQ2d 1009 (Fed.
Cir. 1987); and 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 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 significant attribute or idea about them. On the
other hand, the immediate idea must be conveyed with some
“degree of particularity.” In re Entenmann’s Inc., 15 USPQ2d
1750, 1751 (TTAB 1990), aff’d 90-1495 (Fed. Cir. Feb. 13,
1991); and In re TMS Corporation of the Americas, 200 USPQ 57,
59 (TTAB 1987).
Furthermore, whether a term is merely descriptive is
determined not in the abstract but in relation to the goods or
services for which registration is sought. Thus, "[w]hether
consumers could guess what the product [or service] is from
consideration of the mark alone is not the test." In re
American Greetings Corp., 226 USPQ 365, 366 (TTAB 1985). We
must look to the context in which the term is being used on or
in connection with those goods or services and the possible
significance that the term would have to the average purchaser
Serial No. 75/271,225
- 4 -
of the goods or services because of the manner of its use. In
re Bright-Crest Ltd., 204 USPQ 591, 593 (TTAB 1979).
However, a mark is suggestive if, when the goods or
services are encountered under the mark, a multistage
reasoning process, or the utilization of imagination, thought
or perception, is required in order to determine what
attributes of the goods or services the mark indicates. See
In re Abcor Development Corp., supra at 218, and In re Mayer-
Beaton Corp., 223 USPQ 1347, 1349 (TTAB 1984). As has often
been stated, there is a thin line of demarcation between a
suggestive mark and a merely descriptive one, with the
determination of which category a mark falls into frequently
being a difficult matter involving a good measure of
subjective judgment. See In re Atavio, 25 USPQ2d 1361 (TTAB
1992) and In re TMS Corporation of the Americas, supra at 58.
The distinction, furthermore, is often made on an intuitive
basis rather than as a result of precisely logical analysis
susceptible of articulation. See In re George Weston Ltd.,
228 USPQ 57, 58 (TTAB 1985).
As we examine the evidence placed into the record by the
Trademark Examining Attorney, a brief review of the history of
this case is in order. In the first Office action, the
Trademark Examining Attorney did not find the matter
descriptive, but did request a disclaimer of the word “pages.”
Serial No. 75/271,225
- 5 -
Then in a supplemental Office action, the Trademark Examining
Attorney refused the entire term as being merely descriptive
of the services, including as proof the results of a
LEXIS/NEXIS search. While this attached evidence demonstrated
uses of the phrases “wireless pages” and “wireless pagers,”
all of these uses were in connection with wireless paging
devices (“pagers”) and the messages transmitted thereby
(“pages”).
Then in her Final refusal, the Trademark Examining
Attorney focused on the term “pages” as used in connection
with printed products in the nature of telephone books. In
these LEXIS/NEXIS excerpts, the publications were referred to
as “white pages,” “yellow pages,” etc. Based upon this use of
the word “pages,” she argues in her Final refusal as follows:
It is well settled in the relevant
telecommunications or telephone trade or
industry that ‘pages’ (whether yellow or white
pages) are synonymous with telephone
directories. The applicant’s ‘pages’ or
telephone directories are directories geared
toward wireless users, namely, cellular users.
However, applicant contends on appeal that the Trademark
Examining Attorney has failed to meet her burden of proof with
respect to the mere descriptiveness of the mark WIRELESS
PAGES, as a whole. Applicant points to the fact that the
Trademark Examining Attorney has made of record no evidence of
any competitors’ descriptive usage of the combined term.
Serial No. 75/271,225
- 6 -
Rather, applicant argues that one must conduct a multistage
reasoning process to connect the term WIRELESS PAGES to the
recited telephone directory information services.
We learn from applicant’s literature that applicant
contracts with large enterprises. Its services are offered to
the employees of large corporations and to the subscribers of
cellular telephone companies. Applicant’s service depends
upon the availability of hundreds of actual telephone
operators. Relying upon telephone contacts with these
operators, cellular telephone users (i.e., who are the
beneficiaries of the enterprise contracts with applicant), are
offered nationwide directory assistance with automatic
connections to other cellular telephones.
The word “Wireless” alone describes the industry targeted
in connection with applicant’s services, and hence is
descriptive for services offered to cellular telephone users.
However, the real question in this appeal is whether the
combined term, “WIRELESS PAGES,” is merely descriptive for
applicant’s directory assistance services.
Clearly, applicant’s services have nothing to do with
wireless transmissions via a paging device, or a pager. Other
than applicant’s alleged mark, this unrelated connotation is
the only use shown in the record of these two words together.
Serial No. 75/271,225
- 7 -
Moreover, the issue presented by this appeal is not
whether the asserted mark merely describes bound telephone
directories of cellular or wireless users, or even their
computerized analogues. The mark must be considered in
relation to applicant’s directory information services. Yet
with respect to alphabetical listings and classified
directories, each of the Trademark Examining Attorney’s
LEXIS/NEXIS excerpts attached to the Final refusal uses the
phrase “white pages” and/or “yellow pages” to refer to
telephone directories in the nature of books – not operator-
based, directory assistance services. As applicant stressed
throughout the prosecution of this application, applicant’s
services are not hard-copy telephone books, or even a
computerized, online analogue.
Given widespread use of expressions like “white pages,”
“yellow pages,” “classified pages,” “telephone business
pages,” “telephone community pages,” etc., we acknowledge that
in this context, usage of the word “pages” may be vaguely
suggestive of the informational nature of these services.
Even if we were to find that the word “pages” alone
(i.e., apart from the phrase “white pages.” “yellow pages,”
“classified pages,” etc.) would be readily understood as a
reference to telephone directories or phone books generally,
applicant does not offer telephone directories or a Web
Serial No. 75/271,225
- 8 -
analogue (contra Trademark Examining Attorney’s appeal brief,
p. 4). Accordingly, we find that the term “Pages” in
applicant’s mark does not describe applicant’s services.
Furthermore, at the hearing, the Trademark Examining Attorney
postulated that the same “pages” might also be understood as a
short hand expression for the directory information services
provided by telephone operators one reaches by calling the
appropriate telephone information number (see also Trademark
Examining Attorney’s brief, pp. 6-7). However, the Trademark
Examining Attorney appears to be speculating about how broad a
connotation to accord the word “pages” within applicant’s
mark, as we find no evidence in the file to support this leap.
Accordingly, we conclude that the Trademark Examining Attorney
has not established on the record before us that the mark
WIRELESS PAGES is merely descriptive of the identified
services.
Applicant’s combination of the two words, “Wireless
Pages,” creates a term for which, on this record, we must
conclude that there is no third-party usage for this type of
services (i.e., other than applicant’s mark). The Trademark
Examining Attorney has produced no evidence of usage in the
United States of the combined term “wireless pages” by others
in the field of telephone directory assistance.
Serial No. 75/271,225
- 9 -
Accordingly, on the basis of the limited record before
us, we find insufficient evidence to hold the term WIRELESS
PAGES, as a whole, merely descriptive when used in connection
with applicant’s enhanced directory assistance services. We
conclude that a multistage reasoning process or imagination
would be necessary in order for customers or prospective
purchasers of these services to conclude anything meaningful
about the features of such services. The term WIRELESS PAGES,
when used in connection with directory assistance services,
has not been shown to immediately or directly describe any
significant feature or aspect of applicant's particular
services. Based upon applicant’s recited services, we agree
with applicant that, while WIRELESS PAGES may be suggestive of
the identified services, it is not merely descriptive thereof.
Moreover, to the extent that there may be any doubt as to
whether applicant's mark as a whole is merely descriptive or
suggestive of its goods, we consider it appropriate to resolve
such doubt in the favor of applicant. Then upon publication
of applicant’s mark, any person who believes that she would be
damaged by the registration of the mark will have the
opportunity to file an opposition thereto. See In re Merrill
Lynch, Pierce, Fenner, and Smith Inc., 828 F.2d 1567, 4 USPQ2d
1141 (Fed. Cir. 1987); In re Rank Organization Ltd., 222 USPQ
324, 326 (TTAB 1984); In re Morton-Norwich Products, Inc., 209
Serial No. 75/271,225
- 10 -
USPQ 791 (TTAB 1981); and In re Gourmet Bakers, Inc., 173 USPQ
565 (TTAB 1972).
Nonetheless, having held that the term WIRELESS PAGES is
not merely descriptive of applicant’s telephone directory
information services, we find it inappropriate to permit this
composite term to issue on the Principal Register absent a
disclaimer of the term “Wireless.”
As noted supra, applicant does unquestionably offer
directory information for wireless users. Accordingly, we
earlier acknowledged that the term “Wireless” is highly
descriptive of the wireless telephone industry targeted by
applicant, and hence this element of the composite is merely
descriptive of applicant’s services.3 Thus, we must require a
disclaimer of this term apart from the mark as a whole. Based
upon the instant record, we are convinced that we must reverse
the refusal that the entire mark is merely descriptive, but
applicant must in turn submit a disclaimer of the word
“Wireless.”
In conclusion, based on the record before us, we have
doubts as to whether this composite term is merely
3 And further, we find nothing in this combination that would
have us conclude that this is a “unitary” expression where a
disclaimer of one component would be improper (See TMEP §1213.06),
although given the way this prosecution developed, there was really
no need for specific advocacy on this point.
Serial No. 75/271,225
- 11 -
descriptive. Accordingly, we reverse the refusal to register
on the basis of mere descriptiveness. On the other hand, we
conclude, consistent with Trademark Rule 2.142(g), that
applicant’s mark should be published for opposition only if
applicant, no later than thirty days from the mailing date
hereof, submits an appropriate disclaimer of the word
“Wireless.”4
Decision: Provided that applicant submits an appropriate
disclaimer of the word “Wireless” within thirty days of the
mailing date of this decision, the refusal to register is
reversed.
4 See In re Interco Inc., 29 USPQ2d 2037, 2039 (TTAB 1993). For the
proper format for a disclaimer, attention is directed to TMEP
§§1213.09(a)(i) and 1213.09(b).