InfoSpace

Trademark Trial and Appeal Board

Jan 11, 2001

No. 75498008 (T.T.A.B. Jan. 11, 2001)

1/11/01 Paper No. 12
SIMMS/YO
UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re InfoSpace, Inc.
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Serial No. 75/498,008
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Sean W. Hallisky of Christensen O’Connor Johnson & Kindness
PLLC for InfoSpace, Inc.
Tricia L. Sonneborn, Trademark Examining Attorney, Law
Office 110 (Chris Pedersen, Managing Attorney)
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Before Simms, Bucher and Holtzman, Administrative Trademark
Judges.
Opinion by Simms, Administrative Trademark Judge:
InfoSpace, Inc. (applicant), a Delaware corporation,
has appealed from the final refusal of the Trademark
Examining Attorney to register the mark PREFERRED SHOPPERS
NETWORK (“NETWORK” disclaimed) for advertising, promoting,
and arranging for the sale of goods and services of others
through the electronic online distribution of information
THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
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and incentives.1 The Examining Attorney has refused
registration under Section 2(e)(1) of the Act, 15 U.S.C.
§1052(e)(1), on the basis that applicant’s mark is merely
descriptive. Applicant and the Examining Attorney have
submitted briefs but no oral hearing was requested.
We affirm.
The Examining Attorney argues that applicant’s mark is
merely descriptive of its online distribution services
because it consists of a laudatorily descriptive term of
the intended user or type of shopper using applicant’s
services (“PREFERRED” or “PREFERRED SHOPPERS”), as well as
the term “NETWORK”, a generic term for online services.2
Accordingly, it is the Examining Attorney’s position that
applicant’s mark is merely descriptive of services
performed by a computer network which cater to preferred
shoppers. The Examining Attorney has made of record
dictionary definitions and third-party registrations
1 Application Serial No. 75/498,008, filed June 8, 1998, based
upon applicant’s allegation of a bona fide intention to use the
mark in commerce.
2 One of the definitions of “network” of record is: “A system of
computers interconnected by telephone wires or other means in
order to share information.” The Examining Attorney also
contends that a “network” may be considered “an extended group of
people with similar interests or concerns.”
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wherein the words “PREFERRED NETWORK” have been
disclaimed or placed on the Supplemental Register.3
It is applicant’s position, on the other hand, that
its mark is suggestive of a number of different things and
that consumers are not likely to think of applicant’s
services when encountering its mark. According to
applicant, consumers will need to use imagination and
reasoning in order to ascertain the nature of applicant’s
services.
The multi-stage reasoning process that
would be employed by a viewer of the mark
PREFERRED SHOPPERS NETWORK would be, first, the
idea of a group of people who are in some way
given preferential treatment with regard to
shopping. Second, the viewer of the mark would
then need to interpret the terms PREFERRED
SHOPPERS NETWORK in the context of the Internet,
suggestive of the term NETWORK. Therefore,
through this, or a similar, multi-stage
reasoning process, the viewer of the mark
PREFERRED SHOPPERS NETWORK would ultimately
associate Appellant’s mark with its services of
advertising, promoting and arranging for the
sale of goods and services of others through the
electronic on-line distribution of information
and incentives.
Applicant’s brief, 5. Applicant also asks us to resolve
any doubt in its favor and publish the mark for opposition.
3 The material from the Internet attached to the Examining
Attorney’s brief is excluded. See Trademark Rule 2.142(d).
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Upon careful consideration of the evidence and
arguments in this case, we conclude that applicant’s mark
is merely descriptive of its services.
It is well settled that a term is considered to be
merely descriptive of goods and/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 and/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 of the properties
or functions of the goods and/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 feature about them. Moreover, whether a term
is merely descriptive is determined not in the abstract,
but in relation to the goods and/or services for which
registration is sought, the context in which it is being
used on or in connection with those goods and/or services,
and the possible significance that the term would have to
the average purchaser of the goods and/or services because
of the manner of its use. In re Bright-Crest, Ltd., 204
USPQ 591, 593 (TTAB 1979). Accordingly, whether consumers
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could guess what the product [and/or service] is from
consideration of the mark alone is not the test. In re
American Greetings Corp., 226 USPQ 365, 366 (TTAB 1985).
Contrary to applicant’s arguments, we believe that the
asserted mark immediately informs prospective purchasers of
the nature and intended users of applicant’s services
without any multi-stage reasoning process. The record
sufficiently establishes that the relevant public is likely
to view applicant’s mark as merely descriptive of the
intended users or class of purchasers (“PREFERRED
SHOPPERS”) who are offered applicant’s services by means of
a computer network. As such, the mark is merely
descriptive of applicant’s services. See In re Netts
Designs, Inc., __ F.3d ___, __ USPQ2d ___ (Fed. Cir.
January 9, 2001)(“THE ULTIMATE BIKE RACK” held a laudatory
descriptive phrase, subject to disclaimer, touting the
superiority of applicant’s bike racks); In re Boston Beer
Co., 198 F.3d 1370, 53 USPQ2d 1056, 1058 (Fed. Cir.
1999)(“THE BEST BEER IN AMERICA” held “so highly laudatory
and descriptive of the qualities of [applicant’s] product
that the slogan does not and could not function as a
trademark to distinguish [applicant’s] goods and serve as
an indication of origin”); and In re Inter-State Oil Co.,
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219 USPQ 1229 (TTAB 1983)(“PREFERRED” held merely
descriptive for bird and squirrel repellant).
Decision: The refusal of registration is affirmed.
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