Integrity News Media, Inc.

Trademark Trial and Appeal Board

Oct 6, 2008

No. 77292701 (T.T.A.B. Oct. 6, 2008)

Mailed: October 6, 2008

UNITED STATES PATENT AND TRADEMARK OFFICE
___________

Trademark Trial and Appeal Board
___________

In re Integrity News Media, Inc.
___________

Serial No. 77292701
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Joseph Page for Integrity News Media, Inc., Pro Se

Rebecca L. Gilbert, Trademark Examining Attorney, Law Office
103 (Michael Hamilton, Managing Attorney).
____________

Before Walters, Bucher and Cataldo, Administrative Trademark
Judges.

Opinion by Walters, Administrative Trademark Judge:

Integrity News Media, Inc. has filed an application to
register on the Principal Register the standard character
mark FASHION TOOLS for “providing a website featuring
information and content in the fields of personal
relationships, dating and fashion,” in International Class
THIS OPINION
IS NOT A PRECEDENT OF
THE TTAB
Serial No. 77292701
2
45.1 The application includes a disclaimer of the word
FASHION apart from the mark as a whole.
The examining attorney has issued a final refusal to
register, under Section 2(e)(1) of the Trademark Act, 15
U.S.C. 1052(e)(1), on the ground that applicant’s mark is
merely descriptive in connection with its services.
Applicant has appealed. Both applicant and the
examining attorney have filed briefs. We affirm the refusal
to register.
The examining attorney contends that “applicant
provides information and also ‘content’ which encompasses
all types of content, including news and resources” (brief,
unnumbered p. 4) and that information and content are
“tools”; that the subject matter of these tools is fashion;
and that the combination of the two words, fashion tools,
merely describes a significant feature of applicant’s
website, namely that it provides information and content
about fashion.
In support of her position, the examining attorney
submitted definitions of “tool,” “information” and
“resource” as follows:
“tool” - “anything used as a means of
accomplishing a task or purpose …” (Random House
Unabridged Dictionary, 2006, at

1 Serial No. 77292701, filed October 1, 2007, based on use of the mark
in commerce, alleging first use and use in commerce as of October 1,
2007.

Serial No. 77292701
3
www.dictionary.com) and “something regarded as
necessary to the carrying out of one’s occupation
or profession: Words are the tools of our trade”
(American Heritage Dictionary of the English
Language, 4th ed. 2006, at www.dictionary.com).

“information” – “knowledge derived from study,
experience, or instruction; … a collection of
facts or data: statistical information; the act of
informing or the condition of being informed –
communication of knowledge: Safety instructions
are provided for the information of our
passengers” (American Heritage Dictionary of the
English Language, 3rd ed. 1992).

“resource” – “something that can be used for
support or help: The local library is a valuable
resource” (Id.).

The examining attorney also submitted copies of ten
third-party registrations of marks containing the word
“tools” for a variety of services. All but one of these
registrations is either on the Supplemental Register or
includes a disclaimer of “Tools.” One of the registrations,
no. 3348229 for the mark LOBBY TOOLS for a news clipping
service, includes a disclaimer of “Lobby.”
Additionally, the examining attorney submitted excerpts
of articles from the Lexis/Nexis database demonstrating use
of the term “tool.” Several examples follow:
Information is the single most important thing
that moves the global economy, influences
political regimes, and constructs human behavior.
It is a tool of our trade and a powerful ally….”
(www.metasecurity.net)

Murdoch is not interested in the goal of reporting
the news to reveal the truth, but rather in the
goal of using the news as a tool to manipulate the
public to promote his right-wing agenda.
(www.politico.com)
Serial No. 77292701
4

The Chicago Manual of Style Online also provides
convenient Tools, such as sample forms, letters,
and style sheets. (www.chicagomanualofstyle.org)

Applicant contends that the examining attorney is
applying an overly-broad definition of “tool”; that simply
because “information and content” can be used, it does not
follow that such is a “tool” or that the mark is merely
descriptive. Rather, applicant contends that its use of
“tools” is “highly figurative” and applicant makes the
following argument:
It is entirely possible to use the adjective
“tools” in conjunction with a noun whereby it
would in fact be descriptive …. One might
consider the fictitious trademark “Skate Tools.”
If the goods and services associated with the mark
were those hand tools configured with particular
regard for the hardware commonly used in
skateboards – this trademark could be excluded as
“merely descriptive.” However, if the trademark
“Skate Tools” were used in conjunction with
special shoes used for skating, the mark would be
quite interesting and fanciful; i.e., this use of
the word “tools” would be highly figurative – and
almost certainly not a literal meaning. Despite
the fact that the shoes were indeed used for
skating – and thus arguably meeting the extremely
broad definition the examining attorney has
allocated the word “tools” – “Skate Tools” is not
descriptive of shoes. (emphasis in original.)
(Brief, p. 5.)
In its brief, applicant included a list of third-party
registered marks that include the word “tool,” with
registration numbers, and the examining attorney has
objected thereto. We agree that this evidence is untimely
and, therefore, it has not been considered. Moreover, this
Serial No. 77292701
5
list is not the proper form for submission of third-party
registrations and, as such, it would be of little probative
value. The list contains no information about the
registrations, such as goods or services, disclaimers, or
claims of acquired distinctiveness.
The test for determining whether a mark is merely
descriptive is whether it immediately conveys information
concerning a quality, characteristic, function, ingredient,
attribute or feature of the product or service in connection
with which it is used, or intended to be used. In re Bayer
Aktiengesellschaft, 488 F.3d 960, 82 USPQ2d 1828, 1831 (Fed.
Cir. 2007); In re Engineering Systems Corp., 2 USPQ2d 1075
(TTAB 1986); In re Bright-Crest, Ltd., 204 USPQ 591 (TTAB
1979). It is not necessary, in order to find that a mark is
merely descriptive, that the mark describe each feature of
the goods or services, only that it describe a single,
significant quality, feature, etc. In re Venture Lending
Associates, 226 USPQ 285 (TTAB 1985). Further, it is well-
established that the determination of mere descriptiveness
must be made not in the abstract or on the basis of
guesswork, but in relation to the goods or services for
which registration is sought, the context in which the mark
is used, and the impact that it is likely to make on the
average purchaser of such goods or services. In re
Recovery, 196 USPQ 830 (TTAB 1977).
Serial No. 77292701
6
As identified, applicant’s website contains information
about fashion. The evidence clearly establishes that the
word “tool” is regularly used to refer to the use of various
types of information. Because applicant’s website contains
fashion information, the website itself is a tool for those
persons seeking fashion information. As such, FASHION TOOL
is merely descriptive in connection therewith.
We are not convinced otherwise by applicant’s argument
about the fictional mark SKATE TOOLS for special shoes for
skating. First, we do not necessarily agree that this
fictional mark is not merely descriptive for the posited
goods. Even if we were to agree with this assumption, we
note that the word “tools” is not an adjective in either the
fictional mark or the applied-for mark; rather, it is a
noun. Moreover, it is the term “skate” in the fictional
mark, not the term “tools,” that could render the fictional
mark suggestive because the proper phrasing of a descriptive
term for special shoes for skating would be “skating tools.”
Finally, we do not have evidence about the use of the term
“tools” in connection with shoes for skating from which to
draw a conclusion about the likely perception of that term
by the relevant purchasing public in connection with the
posited goods. On the other hand, the record before us
contains a substantial amount of evidence about the use of
the term “tools” to describe the use of information, which
Serial No. 77292701
7
is relevant to the connotation of the term “tools” in
connection with applicant’s website services. As our
primary reviewing court has stated, “a term may tilt towards
suggestiveness or descriptiveness depending on the context
and any other factor affecting public perception.” In re
Nett Designs Inc., 236 F.3d 1339, 57 USPQ2d 1564, 1566 (Fed.
Cir. 2001). Therefore, this is a classic example of the
well established principle that registrability must be
determined based on the facts in each particular case. Id.
In conclusion, when applied to applicant’s services,
the term FASHION TOOLS immediately describes, without
conjecture or speculation, a significant feature or function
of applicant’s services, namely that applicant’s website is
a tool for obtaining fashion information and/or that
applicant’s website contains tools in the nature of
information and content about fashion. Nothing requires the
exercise of imagination, cogitation, mental processing or
gathering of further information in order for purchasers of,
and prospective customers for, applicant’s services to
readily perceive the merely descriptive significance of the
term FASHION TOOLS as it pertains to applicant’s services.
Decision: The refusal under Section 2(e)(1) of the Act
is affirmed.