Louis R. Bucalo

Trademark Trial and Appeal Board

Mar 13, 2001

No. 75486134 (T.T.A.B. Mar. 13, 2001)

03/13/01
Paper No. 10
RFC
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Louis R. Bucalo
________
Serial No. 75/486,134
_______
Amy F. Divino of Steinberg & Raskin for Louis R. Bucalo.
Robert L. Lorenzo, Trademark Examining Attorney, Law Office
111 (Craig Taylor, Managing Attorney).
_______
Before Cissel, Hohein and Chapman, Administrative Trademark
Judges.
Opinion by Cissel, Administrative Trademark Judge:
On May 15, 1998, applicant filed the above-referenced
application to register the mark “ALLNEWS” on the Principal
Register for “providing of news information that customers
access by telephone,” in Class 41. The application was
based on applicant’s assertion that he possessed a bona
fide intention to use the mark in commerce in connection
with the services.
The Examining Attorney refused registration under
Section 2(e)(1) of the Lanham Act on the ground that the
THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Ser No. 75/486,134
2
mark applicant seeks to register is merely descriptive of
the services identified in the application because the mark
“describes the applicant’s news service as one that would
be reporting the entire news events or happenings to its
telephone clients.”
In support of his position, he quoted dictionary
definitions of the word “news” as “information about recent
events or happenings, especially as reported by newspapers,
periodicals, radio or television,” and of the word “all” as
“being or representing the entire or total number, amount,
or quantity: All the windows are open. Deal all the
cards.” Attached to the refusal to register were copies of
six third-party registrations for marks which include the
term “ALL NEWS” in which the term is disclaimed or the mark
is registered under Section 2(f). The Examining Attorney
argued that these registrations establish the
descriptiveness of the term sought to be registered.
The Examining Attorney also required amendment to make
the recitation of services more definite. He suggested the
following language: “telephone information service
featuring local, national and international news that
customers access by telephone,” in Class 42.
Applicant responded by adopting the suggested
recitation of services, but arguing that “ALLNEWS” is not
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3
merely descriptive of the services as they are identified
in the application, as amended.
The Examining Attorney accepted the amendment to the
recitation of services, but was not persuaded by
applicant’s arguments on the issue of mere descriptiveness.
The refusal to register under Section 2(e)(1) was made
final with the second Office Action. Submitted with this
action in support of the refusal were a number of excerpts
from stories retrieved from the Nexis
database of
publications. From this evidence it is clear that news is
now available to consumers via wireless telephones, and
that radio or television stations which provide only
newscasts are referred to by the terms “all news stations,”
“all news radio” or “all news television stations.”
Applicant timely filed a Notice of Appeal, followed by
an appeal brief. Submitted as exhibits to applicant’s
brief were copies of third-party registrations of marks
which applicant argues are similar to the mark sought to be
registered in the case now before us.
In his brief1, the Examining Attorney objected to the
additional evidence submitted with applicant’s brief.
Trademark Rule 2.142(d) provides that the record in an
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application should be complete prior to the filing of the
Notice of Appeal. The Board may, in its discretion, permit
additional evidence to be submitted after that time, but
the rule allows this to be done only in response to a
request by either the applicant or the Examining Attorney.
In the case at hand, neither made such a request, and the
Examining Attorney objected in a timely fashion, so the
third-party registrations submitted with applicant’s appeal
brief have not been considered.
Applicant did not request an oral hearing before the
Board.
The sole issue before us in this appeal is whether the
term “ALLNEWS” is merely descriptive of a telephone
information service featuring local, national, and
international news that customers can access by telephone.
Based on careful consideration of the record and arguments
of applicant and the Examining Attorney, we find that the
mark is merely descriptive of this service, and therefore
1 We acccept the Examining Attorney’s explanation of the clerical
mistake that led to the late mailing of his appeal brief. We
therefore have considered it as if it had been timely mailed.
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is unregistrable under Section 2(e)(1) of the Lanham Act.
The Examining Attorney and applicant do not disagree
on the standard for registrability under Section 2(e)(1).
A mark is unregistrable under this section if it
immediately and forthwith provides information about a
significant quality, characteristic, function, feature,
purpose or use of the goods or services with which it is,
or is intended to be, used. In re MetPath Inc., 223 USPQ
88 (TTAB 1984), and In re Bright-Crest, Ltd., 204 USPQ 591
(TTAB 1979). In order to be properly refused registration
as merely descriptive, the mark must directly and
immediately convey information about the characteristics of
the goods or services with some specificity or
particularity. If this information is indirect or vague,
the mark may be considered suggestive, rather than
descriptive, but the mark does not have to describe the
services exactly. In re Entenmann’s, Inc., 15 USPQ2d 1750
(TTAB 1990).
In the case before us on appeal, the mark applicant
seeks to register, “ALLNEWS,” is merely descriptive of the
services set forth in the amended application because it
immediately and forthwith conveys information about a
significant characteristic, function or feature of the
services, namely that applicant’s telephone information
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service features all news. Applying the ordinary meanings
of the words “all” and “news” to the combination of the two
words results in a connotation that is consistent with the
other evidence made of record by the Examining Attorney
which demonstrates that “all news” and its variants are
terms used in the communications industry in connection
with broadcast formats featuring only news. Whether
prospective customers of applicant’s services would
interpret the mark as an indication that applicant provides
all the news, i.e., everything that is newsworthy, or as an
indication that all applicant provides is news, without,
for example, music or commentary, as in “all news” radio or
“all news” television, is immaterial. Either of these
connotations leads to the conclusion that the mark
applicant seeks to register is merely descriptive of the
services recited in the application.
Applicant makes a number of arguments that are not
persuasive of a different conclusion. The first is that
when “ALL” and “NEWS” are used together in connection with
the recited services, whatever information the resulting
mark provides about applicant’s services is descriptive
only in a “vague” or “indirect” sense. To the contrary,
the combination of these descriptive words itself provides
specific information with respect to the recited services,
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namely that the services consist of providing only news.
Applicant submitted no evidence in support of his theory
that the mark is descriptive only in a vague or indirect
sense.
Applicant contends that a person would have to engage
in a multi-stage reasoning process to determine the
attributes of applicant’s services from consideration of
the mark. As the Examining Attorney points out, however,
whether a mark is merely descriptive is determined not in
the abstract, but rather in relation to the goods or
services for which registration is sought, the context in
which the mark is used, or will be used, in connection with
those goods or services, and the possible significance
which the mark would have, because of that context, to the
average purchaser of the goods or services in the
marketplace where they are sold. In re Abcor Development
Corp., 588 F.2d 811, 200 USPQ 215 (CCPA 1978). The test is
not whether someone could look at only the mark and
correctly speculate as to significant characteristics,
purposes or functions of the services with which it is
used. The test is whether one who understands what the
services are would be provided with information about their
characteristics, purposes or functions by consideration of
the mark. This test is plainly met in the instant case.
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Thus, applicant’s argument that because when one
encounters the word “news,” one does not immediately think
of news as reported by telephone is not well taken. The
question before us is whether someone who understands that
the service is a telephone information service featuring
local, national and international news that customers
access by telephone would, upon encountering the mark
“ALLNEWS” in connection with the service, understand that a
significant characteristic or feature of the service is
that the only thing applicant’s customers can access by
telephone is news.
Applicant argues that the term sought to be registered
“is being used in a suggestive and non-descriptive manner.”
(brief, p.4). This application is based on applicant’s
assertion that he intends to use the mark, not on a claim
of actual use of it, however. This record contains no
evidence that applicant has in fact used the mark, much
less that it has been used in a “suggestive and non-
descriptive manner.”
Applicant argues that “ALLNEWS” is a coined term, and
that the combination of the words “all” and “news” results
in a unitary mark which will cause customers of applicant’s
services to “have to pause and reflect on the significance
of the combined designation ALLNEWS in order to understand
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that, as used in connection with applicant’s services, the
telephone can be used to access a service that provides
local, national and international news.” (brief, p.6).
The record before us contains no evidence or reasoning in
support of this contention. To the contrary, as noted
above, the combination of these two descriptive words
results in a term which is itself merely descriptive of the
services set forth in the application.
That applicant has combined the words “all” and “news”
without a space or hyphen between them does not alter the
descriptive significance of the combined term. Combining
these two descriptive words into a single term does not
result in a mark that is incongruous, unexpected or clever.
Similarly, whether or not anyone else has ever adopted
“ALLNEWS” as a mark or used it in connection with the same
or similar services is immaterial. In re Gould Paper
Corp., 834 F.2d 1017, 5 USPQ2d 1110 (Fed. Cir. 1987).
Moreover, in view of our ruling with respect to the third-
party registrations submitted by applicant with his brief,
there is no evidence that others have registered, much less
used, marks similar to the one sought to be registered
here. Even if the record contained evidence of
registration by others of the same or similar marks for the
same or similar services, such evidence would not be
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determinative of this appeal. The Board is not bound by
previous decisions by Examining Attorneys who passed other
marks to publication. In re Nett Designs, Inc., 57 USPQ2d
1564 (Fed. Cir. 2001). We are obligated to decide each
case before us on its own record and merits. In re
Cosvetic Laboratories, Inc., 202 USPQ 842 (TTAB 1979).
The record in this case clearly demonstrates that
“ALLNEWS,” if used in connection with a telephone
information service featuring local, national and
international news that customers can access by phone,
would be merely descriptive of the services because it
would immediately and forthwith inform potential customers
of a significant purpose, function, feature or
characteristic of the services.
Decision: The refusal to register under Section
2(e)(1) of the Lanham Act is affirmed.
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