Intera Multimedia Inc.

Trademark Trial and Appeal Board

Apr 10, 2001

No. 75355201 (T.T.A.B. Apr. 10, 2001)

04/10/01 Paper No. 18
BAC
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Intera Multimedia Inc.
________
Serial No. 75/355,201
_______
Lawrence E. Abelman of Abelman, Frayne & Schwab for Intera
Multimedia Inc.
Alan C. Atchison, Trademark Examining Attorney, Law Office
102 (Thomas Shaw, Managing Attorney).
_______
Before Hohein, Chapman and Bottorff, Administrative
Trademark Judges.
Opinion by Chapman, Administrative Trademark Judge:
On September 11, 1997, Intera Multimedia Inc. (a
Canadian corporation) filed an application to register the
mark MEMORIAL MEDIA on the Principal Register for “computer
software for use in locating deceased individuals in
cemeteries, mausoleums and columbariums; interactive
computer kiosks for use in locating grave locations and
deceased remains of individuals in cemeteries, mausoleums
and columbariums” in International Class 9; “voice
messaging services involving an interactive computer kiosk
which records, stores and transmits messages concerning
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF
THE TTAB
Ser. No. 75/355201
2
deceased individuals and grave locations and deceased
remains of individuals in cemeteries, mausoleums and
columbariums” in International Class 38; and “information
services provided via an interactive computer kiosk which
contains biographies, video, pictures and text of deceased
individuals and grave locations and deceased remains of
individuals in cemeteries, mausoleums and columbariums and
information about products and services of the funeral
industry” in International Class 42.
Applicant’s application was originally based on (1)
Section 1(b) of the Trademark Act, 15 U.S.C. §1051(b), and
(2) a claim of priority under Section 44(d) of the
Trademark Act, 15 U.S.C. §1126(d), in light of Canadian
application No. 841,324 (filed April 3, 1997).
Subsequently, applicant submitted its Canadian Registration
No. TMA494,194, which issued from Canadian application No.
841,325 (filed April 3, 1997)1, and deleted its Section 1(b)
basis for the U.S. application. The Board remanded the
application to the Examining Attorney to determine whether
the Canadian registration forms a basis for the services
(International Classes 38 and 42) listed in applicant’s
U.S. application. By Examiner’s Amendment dated March 1,
1 The term “media” is disclaimed in applicant’s Canadian
registration.
Ser. No. 75/355201
3
2001, the Section 1(b) basis for the application was
reinstated. Thus, the application is now based on Section
1(b) as well as on Section 44 of the Trademark Act.
The Examining Attorney refused registration on the
ground that applicant’s mark, MEMORIAL MEDIA, is merely
descriptive of the goods and services under Section 2(e)(1)
of the Trademark Act, 15 U.S.C. §1052(e)(1).
When the refusal was made final, applicant appealed to
this Board. Both applicant and the Examining Attorney have
filed briefs; an oral hearing was not requested.
The Examining Attorney contends that, in the context
of applicant’s goods and services, the term “memorial”
means or refers to the remembrance of a person through
multimedia images, voice and text, and the word “media”
refers to various types of media used in connection with
computer services and computer software; that the mark
MEMORIAL MEDIA “in the context of information relating to
deceased individuals, does convey to prospective purchasers
that applicant’s [goods and services] feature memorial
information about deceased persons” (emphasis in original,
brief, p. 4). Stated another way, the Examining Attorney
also said, “The term ‘media’ describes the text, video and
images contained on the computer kiosks and ‘memorial’
describes the subject matter therein.” (Brief, p. 7.)
Ser. No. 75/355201
4
In support of the descriptiveness refusal, the
Examining Attorney has made of record the following
dictionary definitions:
(1) “media” is defined as “(1) Objects
on which data can be stored.
These include hard drives, floppy
disks, CD-ROMs, and tapes... (3)
The form and technology used to
communicate information.
Multimedia presentations, for
example, combine sound, pictures,
and videos, all of which are
different types of media.” Random
House Personal Computer Dictionary
(1996); and
(2) “memorial” is defined as “n. 1.
Something, such as a monument or
holiday, intended to celebrate or
honor the memory of a person or an
event.... adj. 1. Serving as a
remembrance of a person or an
event; commemorative.” The
American Heritage Dictionary
(1992).
In addition, the Board, pursuant to Fed. R. Evid. 201,
hereby takes judicial notice of the following dictionary
definition from Webster’s Ninth New College Dictionary
wherein “memorial park” is defined as “n. (ca. 1928):
cemetery.” See TBMP §712.01, and cases cited therein.
The Examining Attorney also submitted (i) several
third-party registrations to show that the words “memorial”
and “media” have each been disclaimed when the word formed
part of a mark for products or services such as memorial
Ser. No. 75/355201
5
cards, tombstones, computer services, or computer software;
and (ii) a few stories reprinted from Nexis to show how
applicant and others use the words “memorial” and “media”
to describe the involved goods and services. Finally, the
Examining Attorney relies on applicant’s own
identifications of goods and services as evidence that the
information contained in applicant’s computer kiosks
includes memorials of deceased individuals.
Applicant argues that the mark MEMORIAL MEDIA is a
unique combination of words coined by applicant; that
applicant’s mark is alliterative and is at most suggestive;
that applicant’s goods and services (computer software,
voice messaging services and information services, all as
specifically identified above) do not relate to any of the
several definitions of “memorial” submitted by the
Examining Attorney because applicant’s goods and services
are not used to celebrate or honor the memory of the
deceased, but are limited to gathering and disseminating
information; that there are several computer-related
definitions of the term “media” as well as the Webster’s
Deluxe Unabridged Dictionary (2nd ed.) meaning of “media”
as the plural of “medium”; that applicant does not use the
terms “commemoration” or “memorial” in its identifications
of goods and services; and that, the mark taken as a whole,
Ser. No. 75/355201
6
would require mental gymnastics in order for purchasers to
ascertain the purpose or characteristics of applicant’s
goods and services.
Further, applicant contends that the third-party
registrations submitted by the Examining Attorney to show
that the word “memorial” was disclaimed are distinguishable
from applicant’s current application; and applicant
submitted other third-party registrations which do not
include disclaimers of the term “memorial.” Applicant
contends that the Nexis stories submitted by the Examining
Attorney show use the words “multimedia memorials” or
“memorial kiosk” or “digital memorial” but not the words
MEMORIAL MEDIA (except where it is a reference to
applicant’s goods and services and it appears in capital
letters -- “Intera Multimedia Inc. is planning to bring its
Memorial Media Interactive Kiosks to Calgary and hopes to
have them in cemeteries soon,” “The Calgary Sun,” December
6, 19982), and therefore these stories do not constitute
evidence that applicant’s mark is merely descriptive.
Finally, applicant argues that registration of applicant’s
2 While the Board would not normally consider stories appearing
in foreign publications, applicant herein is a Canadian
corporation, basing its application, in part, on a Canadian
registration. Thus, we have considered the Nexis stories
submitted by the Examining Attorney which appeared in Canadian
publications to the extent they serve to explain the nature of
applicant’s goods and services.
Ser. No. 75/355201
7
mark will not inhibit competitors, who are free to use
terms such as ‘grave locator’ or ‘deceased person locator’
to identify the involved goods or services; and that the
Examining Attorney has not provided any evidence of the
mark actually used by others in connection with any such
goods or services.3
The test for determining whether a mark is merely
descriptive is whether the term immediately conveys
information concerning a significant quality,
characteristic, function, ingredient, attribute or feature
of the product or service in connection with which it is
used, or intended to be used. See In re Abcor Development
Corp., 588 F.2d 811, 200 USPQ 215 (CCPA 1978); and In re
Bright-Crest, Ltd., 204 USPQ 591 (TTAB 1979). 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 term or phrase is being used on or in connection
3 In its reply brief, applicant argued for the first time that
“although not per se controlling,” nonetheless, the Board should
consider Article 6 of the Paris Convention inasmuch as Canada
does not register merely descriptive marks, “as a factor in favor
of granting registration.” (reply brief, p. 5.) The Board is
unpersuaded by this late-raised, unsupported argument.
Ser. No. 75/355201
8
with those goods or services, and the impact that it is
likely to make on the average purchaser of such goods or
services. See In re Consolidated Cigar Co., 35 USPQ2d 1290
(TTAB 1995); and In re Pennzoil Products Co., 20 USPQ2d
1753 (TTAB 1991). Consequently, “[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). Rather,
the question is whether someone who knows what the goods or
services are will understand the mark to convey information
about them. See In re Home Builders Association of
Greenville, 18 USPQ2d 1313 (TTAB 1990).
We agree with the Examining Attorney that applicant’s
mark immediately and directly conveys to purchasers that
applicant’s goods and services feature memorial information
about deceased persons. The term MEDIA is disclaimed in
applicant’s Canadian registration; and clearly, computer
software and interactive computer kiosks are types of
media, that is, these are objects on which data can be or
is stored. (See the dictionary definition of “media” set
forth above). Even applicant stated that “Applicant’s use
of MEDIA in the mark should not result in a determination
of descriptiveness of the mark as a whole.” (Request for
Reconsideration, p. 6, and brief, p. 12.)
Ser. No. 75/355201
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The dictionary listings establish that “MEMORIAL”
refers to commemorating, honoring, celebrating and/or
remembering a person (or an event). Further, the Nexis
evidence, examples of which are reproduced below,
demonstrates that the content of applicant’s kiosks is
“memorials”:
(1) ...Corey Wood, Intera Multimedia’s
western representative in Calgary,
tells me the kiosks can hold up to
6,000 multimedia memorials. Each
includes a photographic and word
memorial of a departed one. When
visiting a kiosk at a cemetery,
you just call up a video
presentation and look at fond
memories....Cemeteries generally
charge $250 a family to store and
activate the memorial. “The
Calgary Sun,” December 6, 1998;
and
(2) ...It’s a stainless-steel obelisk,
in a public room off the
cemetery’s central office, with a
computer screen bearing the
mathematical sign of
infinity....The memorial kiosk is
only the newest, most futuristic
example of tombstone technology
that promises to transform
cemeteries from place bound by
granite into playgrounds for the
imagination. “The Orange County
Register,” March 29, 1998.
When we consider the mark as a whole, and in the
context of applicant’s goods and services (involving
computer software and interactive computer kiosks for use
Ser. No. 75/355201
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in locating graves and deceased individuals, and voice
messaging services and information services, both involving
an interactive computer kiosk which contains pictures and
text of deceased individuals and grave locations), the
ordinary, commonly understood meaning of the words MEMORIAL
MEDIA immediately informs prospective purchasers that
applicant’s goods and services are intended to assist in
identifying and/or locating a variety of memorial
information on deceased persons. Thus, when the mark
MEMORIAL MEDIA is viewed in the context of applicant’s
goods and services, the purchasing public would immediately
understand the nature and purpose of the goods and
services. That is, purchasers would immediately understand
that these goods and services involve the act or process of
obtaining memorial information, not limited to location,4
about deceased individuals. See In re Gyulay, 820 F.2d
1216, 3 USPQ2d 1009 (Fed. Cir. 1987); In re Omaha National
Corporation, 819 F.2d 1117, 2 USPQ2d 1859 (Fed. Cir. 1987);
In re Intelligent Instrumentation Inc., 40 USPQ2d 1792
(TTAB 1996); and In re Time Solutions, Inc., 33 USPQ2d 1156
(TTAB 1994).
4 Applicant’s respective identification of services lists
“messages concerning deceased individuals and grave locations”;
and “biographies, video, pictures and text.”
Ser. No. 75/355201
11
Applicant’s argument that other words are available to
competitors to describe their goods and services is not
persuasive. In order to show that that a mark is merely
descriptive, it is not necessary to show that others are
using the specific involved word(s). It is well
established that a term may be merely descriptive even if
an applicant is the first or is the only entity currently
using it.5 See In re Tekdyne Inc., 33 USPQ2d 1949, 1953
(TTAB 1994); and Pennzoil Products, supra at 1756.
The third-party registrations submitted by applicant
to show examples where the term MEMORIAL was not
disclaimed, and the third-party registrations submitted by
the Examining Attorney to show examples where the term
MEMORIAL or the term MEDIA was disclaimed, are not
persuasive. While uniform treatment under the Trademark
Act is an administrative goal, the Board’s task in an ex
parte appeal is to determine, based on the record before
us, whether applicant’s mark is merely descriptive. As
often noted by the Board, each case must decided on its own
merits. We are not privy to the records of the third-party
registration files, and moreover, the determination of
5 Applicant’s use appears to be in Canada. There is no clear
evidence that applicant has commenced use of its mark in the
United States.
Ser. No. 75/355201
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registrability of those particular marks by the Trademark
Examining Groups cannot control the merits in the case now
before us. See In re Nett Designs Inc., __ F.3d __, 57
USPQ2d 1564, 1566 (Fed. Cir. 2001) (“Even if some prior
registrations had some characteristics similar to
[applicant’s application], the PTO’s allowance of such
prior registrations does not bind the Board or this
court.”) See also, In re Dos Padres Inc., 49 USPQ2d 1860,
1862 (TTAB 1998).
Decision: The refusal to register on the ground that
the mark is merely descriptive under Section 2(e)(1) is
affirmed.