J. Paul Martha

Trademark Trial and Appeal Board

Oct 6, 1998

No. 75027857 (T.T.A.B. Oct. 6, 1998)

Paper No. 9
Hohein/md
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF THE TTAB 10/6/98
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re J. Paul Martha
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Serial No. 75/027,857
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David V. Radack, Esq. for J. Paul Martha.
Alan C. Atchison, Trademark Examining Attorney, Law Office 102
(Myra K. Kurzbard, Managing Attorney).
_______
Before Simms, Hohein and Chapman, Administrative Trademark
Judges.
Opinion by Hohein, Administrative Trademark Judge:
J. Paul Martha has filed an application to register the
phrase "INTERNATIONAL BASKETBALL LEAGUE" for "entertainment
services, namely organizing and conducting basketball
competitions and exhibitions."1
Registration has been finally refused under Section
2(e)(1) of the Trademark Act, 15 U.S.C. §1052(e)(1), on the basis
that, when used in connection with applicant's services, the

1 Ser. No. 75/027,857, filed on December 5, 1995, which alleges a bona
fide intention to use such phrase in commerce. The words "BASKETBALL
LEAGUE" have been voluntarily disclaimed.
Ser. No. 75/027,857
2
phrase "INTERNATIONAL BASKETBALL LEAGUE" is merely descriptive of
them.
Applicant has appealed. Briefs have been filed, but an
oral hearing was not requested. We affirm the refusal to
register.
Relying upon a third-party registration mentioned for
the first time in its brief,2 applicant asserts that in view of
its analogous disclaimer of the words "BASKETBALL LEAGUE," "the
term ’INTERNATIONAL’ can function to distinguish Appellant’s
services from those of another and thus the entire mark is not
[merely] descriptive." Specifically, while noting that the
Examining Attorney has made of record "a dictionary definition of
’INTERNATIONAL’ as well as several third[-]party registrations"
which include disclaimers of such term,3 applicant contends that:

2 We note, however, that not only is the reference to such registration
untimely under Trademark Rule 2.142(d), but in any event a mere
listing of a third-party registration is insufficient to make it of
record inasmuch as the Board does not take judicial notice of
registrations which reside in the Patent and Trademark Office. See,
e.g., In re Duofold Inc., 184 USPQ 638, 640 (TTAB 1974). The proper
procedure for making information concerning a third-party registration
of record is, instead, to submit either a copy of the actual
registration or the electronic equivalent thereof, i.e., a printout of
the registration which has been taken from the Patent and Trademark
Office’s own computerized database. See, e.g., In re Consolidated
Cigar Corp., 35 USPQ2d 1290, 1292 (TTAB 1995) at n. 3; In re Smith &
Mehaffey, 31 USPQ2d 1531, 1532 (TTAB 1994) at n. 3; and In re Melville
Corp., 18 USPQ2d 1386, 1388-89 (TTAB 1991) at n. 2. Nevertheless,
since the Examining Attorney has not only elected not to object to
consideration of the information concerning the third-party
registration, but has treated it as being of record by discussing it
in his brief, we have considered such evidence for whatever probative
value it may have. See In re Nuclear Research Corp., 16 USPQ2d 1316,
1317 (TTAB 1990) at n. 2.
3 Applicant also points out that the Examining Attorney, in support of
the refusal to register, has made of record copies of two other third-
party registrations, namely, "Registration No. 1,375,316 for [the
mark] ’UNITED STATES BASKETBALL LEAGUE’ which is registered on the
SUPPLEMENTAL REGISTER and ... Registration No. 1,381,843 for [the
mark] ’USBL UNITED STATES BASKETBALL LEAGUE and Design’, in which the
Ser. No. 75/027,857
3
Countering these registrations, however,
Appellant makes of record U.S. Service Mark
Registration No. 1,546,808 for the mark
"INTERNATIONAL FOOTBALL LEAGUE" ("the ’808
Registration"). Although this registration
has been cancelled, it is evidence of United
States Patent and Trademark Office precedent
finding that a very similar mark to
Appellant’s was registered on the PRINCIPAL
REGISTER.
Notwithstanding the third[-]party
registrations cited by the Trademark
Examining Attorney, Appellant believes that
the proper result in this case is that the
mark is not descriptive and that the
precedent of the ’808 Registration is more
sound .... It is still Appellant’s
contention that the word "INTERNATIONAL" is
not descriptive when applied to Appellant’s
services ant [sic] thus the Trademark
Examining Attorney’s descriptiveness refusal
is improper and should be reversed.
The Examining Attorney, on the other hand, argues that
because the phrase "INTERNATIONAL BASKETBALL LEAGUE" immediately
identifies "features of the applicant’s services, namely, an
international league of basketball players and/or competitions,"
the term "INTERNATIONAL" is merely descriptive thereof and the
words "BASKETBALL LEAGUE" constitute generic terms. Therefore,
and in view of applicant’s acknowledgment of the latter by virtue
of his disclaimer of the words "BASKETBALL LEAGUE," the Examining

terms ’UNITED STATES BASKETBALL LEAGUE’ have been disclaimed." While,
in each instance, such marks are registered for "entertainment
services, namely organizing and conducting basketball competitions and
exhibitions," it would appear that the marks are so registered because
the phrase "UNITED STATES BASKETBALL LEAGUE" was considered to be
primarily geographically descriptive of those services, within the
meaning of Section 2(e)(2) of the Trademark Act, 15. U.S.C.
§1052(e)(2), rather than because it was found to be merely descriptive
thereof. Such evidence, other than showing the descriptiveness of the
words "BASKETBALL LEAGUE" (which applicant in any event has conceded
by virtue of the voluntary disclaimer thereof), is thus of limited
probative value as to the issue of mere descriptiveness in this
appeal.
Ser. No. 75/027,857
4
Attorney maintains that "the entire mark ... is merely
descriptive." In support of his position, the Examining Attorney
has made of record a definition from Webster’s II New Riverside
University Dictionary (1988) which lists "international" as an
adjective meaning "1. Of, pertaining to, or involving two or more
nations. 2. Extending across two or more national borders."4
The Examining Attorney has also furnished with his
final refusal copies of the following third-party registrations
to show that, by including a disclaimer of the term
"INTERNATIONAL," it is the current practice of the Patent and
Trademark Office to regard such term as merely descriptive when
used in connection with marks which contain that term and which
are registered for sporting events or competitions:
(1) Reg. No. 2,013,099, issued on
November 5, 1996, for the mark "INTERNATIONAL
SENIOR GAMES" and design for, inter alia,
"organizing and conducting a series of
competitions consisting of sports and
cultural activities ... for individuals over
the age of fifty years"; the words
"INTERNATIONAL SENIOR GAMES" are disclaimed;
(2) Reg. No. 1,988,026, issued on July
23, 1996, for the mark "INTERNATIONAL MARTIAL
ARTS GAMES KOIDE" for "organizing exhibitions
for martial arts purposes and entertainment
in the nature of martial arts games"; the
words "INTERNATIONAL MARTIAL ARTS GAMES" are
disclaimed;
(3) Reg. No. 1,977,806, issued on June
4, 1996, for the mark "INTERNATIONAL HOCKEY
SCHOOLS" and design for "educational

4 The same dictionary, the record shows, defines "basketball" in
relevant part as a noun connoting "[a] game played between two teams
of five players each, the object being to throw the ball through an
elevated basket on the opponent’s side of the rectangular court" and
lists "league" in pertinent part as signifying "[a]n association of
sports teams or clubs that compete chiefly among themselves."
Ser. No. 75/027,857
5
services, namely, conducting training camps
in the field of hockey"; the words
"INTERNATIONAL HOCKEY SCHOOLS" are
disclaimed;
(4) Reg. No. 1,757,293, issued on March
9, 1993, for the mark "IJSBA INTERNATIONAL
JET SPORTS BOATING ASSOCIATION" and design
for "organizing, promoting, and conducting
personal watercraft races and events"; the
words "INTERNATIONAL JET SPORTS BOATING
ASSOCIATION" are disclaimed; and
(5) Reg. No. 1,536,845, issued on April
25, 1989, for the mark "IWF INTERNATIONAL
WRESTLING FEDERATION" and design for
"entertainment services, namely staging
wrestling exhibitions and musical
performances"; the words "INTERNATIONAL" and
"WRESTLING FEDERATION" are disclaimed.
The Examining Attorney, in view of the above evidence,
maintains that (footnote omitted):
The applicant has already conceded the
descriptiveness of the two terms "BASKETBALL
LEAGUE" by entering a disclaimer of the
terms. The only issue on appeal involves the
descriptiveness of the term INTERNATIONAL in
relation to the applicant’s services. The
third[-]party registrations provided by the
Examining Attorney all involved sporting
activities, e.g., [games,] martial arts,
hockey, watercraft races and wrestling. The
services identified in those registrations
also involved sporting event competitions.
The term "INTERNATIONAL" was disclaimed along
with the other descriptive wording in these
marks ....
These disclaimers of the term
"INTERNATIONAL" in connection with sporting
competitions underscore the term’s
descriptive meaning. See 15 U.S.C. Section
1056; TMEP section 1213. As used by others
in the sports competition field,
"INTERNATIONAL" describes the scope or nature
of the sporting events. For example, the
sporting events may involve international
competitions between different countries or
may feature participants from different
countries. Therefore, the term is considered
descriptive of a feature of these services.
Ser. No. 75/027,857
6
The applicant’s mark "INTERNATIONAL
BASKETBALL LEAGUE" is no different from the
third[-]party registrations discussed above.
The applicant’s services involve an
association or league featuring international
basketball competitions. Therefore, the
entire mark consists of descriptive and
generic terms and the entire mark is
considered merely descriptive of the
applicant’s services under Section 2(e)(1) of
the Trademark Act.
As to applicant’s reliance "on Registration No.
1,546,808, a cancelled registration for the mark ’INTERNATIONAL
FOOTBALL LEAGUE,’ as precedent for allowing its mark," the
Examining Attorney insists that: "[T]he vast majority of
registrations containing the term ’INTERNATIONAL’ for sporting
competitions have either disclaimed the term or were registered
on the Supplemental Register. On balance, Office practice has
been to hold the term ’INTERNATIONAL’ descriptive and therefore
to require a disclaimer of the term." Finally, the Examining
Attorney additionally points out that:
The ... Board and federal courts have
considered and held the term "INTERNATIONAL"
merely descriptive in relation to different
services. For example, the mark
"INTERNATIONAL BANKING INSTITUTE" was held
merely descriptive in connection with
organizing seminars and conferences related
to international topics and issues. In re
Institutional Investor, Inc.[,] 229 USPQ 614
(TTAB 1986); "INTERNATIONAL TRAVELERS CHEQUE"
was held merely descriptive of financial
services. International Travelers Cheque Co.
v. Bankamerica Corp., 211 USPQ 753 (7th Cir.
1981); "INTERNATIONAL TRAVEL AGENTS’ TRAINING
SCHOOL" was held generic in relation to
travel agency and travel agent school
services. Travel Bug Ltd. v. Muscarello, 4
USPQ2d 1444 (N.D. Illinois 1987).
Ser. No. 75/027,857
7
It is well settled that a term or phrase is considered
to be merely descriptive of goods 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 or services. See
In re Abcor Development Corp., 588 F.2d 811, 200 USPQ 215, 217-18
(CCPA 1978). It is not necessary that a term or phrase 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 or phrase describes a
significant attribute or idea about them. Moreover, whether a
term or phrase is merely descriptive is determined not in the
abstract but in relation to the goods or services for which
registration is sought, the context in which it is being used on
or in connection with those goods or services and the possible
significance that the term or phrase would have to the average
purchaser of the goods or services because of the manner of its
use. See In re Bright-Crest, Ltd., 204 USPQ 591, 593 (TTAB
1979). 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).
We agree with the Examining Attorney that, utilizing
the above test, the phrase "INTERNATIONAL BASKETBALL LEAGUE," as
applied to the entertainment services of organizing and
conducting basketball competitions and exhibitions "immediately
Ser. No. 75/027,857
8
describes [a league or] association of basketball teams involved
in international competition." As the Examining Attorney has
accurately observed, "[t]he applicant has not denied that its
services involve international competitions," as the term
"international" is defined in the dictionary definition of
record, and the third-party registrations demonstrate that
current Patent and Trademark Office practice is to treat such
term as merely descriptive when applied to activities involving
sporting events or competitions. Accordingly, and in light of
case law precedent, because the phrase "INTERNATIONAL BASKETBALL
LEAGUE" conveys forthwith a significant feature or characteristic
of applicant’s services, it is merely descriptive thereof within
the meaning of the statute.
Decision: The refusal under Section 2(e)(1) is
affirmed.
R. L. Simms
G. D. Hohein
B. A. Chapman
Administrative Trademark Judges,
Trademark Trial and Appeal Board