Milacron Inc.

Trademark Trial and Appeal Board

Jan 5, 2001

No. 75625095 (T.T.A.B. Jan. 5, 2001)

1/5/01 Paper No. 10
BAC
UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Milacron Inc.
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Serial No. 75/625,095
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John W. Gregg, Esq. of Milacron Inc.
Rodney Dickinson, Trademark Examining Attorney, Law Office
112 (Janice O’Lear, Managing Attorney).
_______
Before Hanak, Walters and Chapman, Administrative Trademark
Judges.
Opinion by Chapman, Administrative Trademark Judge:
On January 22, 1999, Milacron, Inc. filed an
application to register the mark JOB SHOP MALL on the
Principal Register for “services of enabling others to
place advertisements on a global computer network site”1 in
International Class 35. Applicant’s claimed date of first
use is January 4, 1999.
Registration has been finally refused under Section
2(d) of the Trademark Act, 15 U.S.C. §1052(d), on the
1 The acceptability of the identification of services is an issue
in this appeal and will be fully addressed later in this
decision.
THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Ser. No. 75/625095
2
ground that applicant’s mark, when used in connection with
its services, so resembles the mark JOB SHOP SHOWS, which
is registered for “organizing and conducting trade show
exhibitions for the contract manufacturing and job shop
industries,”2 as to be likely to cause confusion, or to
cause mistake, or to deceive.
Additionally, registration has been finally refused
under Section 2(e)(1) of the Trademark Act, 15 U.S.C.
§1052(e)(1), on the ground that applicant’s mark, when used
in connection with applicant’s services, is merely
descriptive of same.
The Examining Attorney also made final the requirement
for a more definite identification of services.3
Applicant has appealed. Both applicant and the
Examining Attorney have briefed the issues before us. An
oral hearing was not requested.
Turning first to the question of the identification of
services, the Examining Attorney did not accept the
original identification of services (“services of providing
2 Registration No. 2,068,463, issued June 10, 1997, under Section
2(f) of the Trademark Act, 15 U.S.C. §1052(f). Registrant
disclaimed the term “shows.” The claimed date of first use is
January 1987.
3 There is no indication in this record that the Examining
Attorney consulted the Administrator for Trademark Classification
and Practice, or that a copy of the final Office action was
referred to that Administrator pursuant to TMEP §804.06.
Ser. No. 75/625095
3
access to WEB site for posting business listing”), and
suggested, if accurate: “promoting the businesses of others
by placing advertisements on a global computer network
site.” In response, applicant offered the following
amendment to the identification of services: “services of
enabling others to place advertisements on a global
computer network site.” Applicant’s proposed amendment to
the identification of services has been rejected by the
Examining Attorney as indefinite.
Both applicant and the Examining Attorney argued the
issues before us based on the proposed amended
identification of services. Thus, our decision relates to
the question of the acceptability of the proposed amended
identification.
Section 1(a)(1)(A) of the Trademark Act, 15 U.S.C.
§1051(a)(1)(A), requires that the written application
specify the goods or services on or in connection with
which applicant uses the mark. Trademark Rule
2.33(a)(1)(v) requires, in relevant part, that a trademark
application must set forth “the particular goods or
services” with which the mark is used. Further, the
identification of goods or services must be specific and
definite. See TMEP §§804.01, and 1301.05. The TMEP also
sets forth the guidelines which the Examining Attorney
Ser. No. 75/625095
4
should consider in determining the appropriateness of any
identification of goods or services. The Examining
Attorney contends that the “awkward wording” (brief, p. 9)
in applicant’s proposed identification is indefinite; is
not the common terminology for the services; and does not
accurately describe the services. Applicant contends that
it operates a website and provides the service of enabling
others to “post” advertisements on the site, and
“searching” of those postings at the site; and that
applicant knows of no other common terminology for
applicant’s services, and none was proposed by the
Examining Attorney.
Upon careful review of the information of record, we
find that applicant’s identification of services, albeit
somewhat awkward, nonetheless, sufficiently defines the
services in connection with which applicant uses its mark.
Thus, the refusal to register in the absence of further
specification of the identification of services was
improper.
We turn now to the refusal to register on the ground
of mere descriptiveness. It is well settled that a term is
merely descriptive of goods or services, and therefore
unregisterable pursuant to Section 2(e)(1), if it
immediately conveys knowledge or information about the
Ser. No. 75/625095
5
qualities, characteristics, or feature of the goods or
services on or 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). Moreover, the
immediate idea must be conveyed with a “degree of
particularity.” In re TMS Corporation of the Americas, 200
USPQ 57, 59 (TTAB 1978); and In re Entenmann’s Inc., 15
USPQ2d 1750, 1751 (TTAB 1990), aff’d, unpub’d, Fed. Cir.
February 13, 1991. A suggestive term is one which
suggests, rather than describes, such that imagination,
thought or perception is required to reach a conclusion on
the nature of the goods. See In re Gyulay, 820 F.2d 1216,
3 USPQ2d 1009 (Fed. Cir. 1987).
Of course, 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 (TTAB 1979). See also, In re Consolidated Cigar Co.,
35 USPQ2d 1290 (TTAB 1995); and In re Pennzoil Products
Co., 20 USPQ2d 1753 (TTAB 1991).
Ser. No. 75/625095
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It has long been acknowledged that there is often a
very narrow line between terms which are merely descriptive
and those which are suggestive, and the borderline between
the two is hardly a clear one. See In re Atavio Inc., 25
USPQ2d 1361 (TTAB 1992).
In support of his refusal to register based on
descriptiveness the Examining Attorney submitted (i) The
American Heritage Dictionary definition of “mall” as “A
large, often enclosed shopping complex containing various
stores, businesses, and restaurants usually accessible by
common passageways”; (ii) excerpts from several Nexis
stories to show that “the term ‘job shop’ is commonly used
to refer to the service of custom manufacturing and
delivering parts for others”; and (iii) excerpts from
several Nexis stories to show that “in recent years, the
term ‘mall’ when used in connection with global computer
networks has come to be used to refer to global computer
network websites that allow the user to get information
about and shop for the goods and services of various stores
or businesses, in a manner similar to a traditional mall.”
(Brief, p. 7).4 The Examining Attorney also contends that
4 We note that some of the Nexis stories are from foreign
publications or are newswire reports, both of which are of little
probative value because they are not presumed to have appeared in
printed stories circulated in the United States.
Ser. No. 75/625095
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applicant’s specimens of record show that applicant
provides information and assistance about job shops, as the
specimens include wording, such as, “Tell the world what
you have to offer, and find what you need" and “This is the
place to post a free ‘classified ad’ listing of the
services you offer, and to look for suppliers with the
capabilities you need.”
Applicant concedes that its services enable the
posting of advertisements in the job shop industry, but
contends that applicant does not provide any job shop
services, directly or indirectly, and the mark is not
merely descriptive of applicant’s services; and that the
consumers for applicant’s services are persons or entities
who desire to post advertisements on applicant’s website
(i.e., those who offer or seek contract manufacturing
services). Applicant further argues that it does not
operate a tangible publicly accessible facility of retail
establishments; and that the Examining Attorney’s Nexis
excerpts relating to “mall” all refer to “on-line mall,”
but applicant’s mark does not include the word “on-line,”
and, therefore, the Examining Attorney has not established
the usage and meaning of the term “mall” which he asserts.
Viewing the record in its entirety, we find that the
Examining Attorney has not established a prima facie
Ser. No. 75/625095
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showing that the mark JOB SHOP MALL, taken as a whole, is
merely descriptive of applicant’s services. The burden of
proving that applicant’s mark is merely descriptive rests
with the Examining Attorney. The dictionary definition of
the term “mall,” and the Nexis excerpts showing uses of
“on-line mall” and “job shop” do not show that the term JOB
SHOP MALL has a readily recognized meaning with regard to
the involved services of enabling others to post
advertisements on a website. Applicant is not offering a
“mall” service, and the Examining Attorney’s speculation is
not sufficient for our holding to the contrary. See In re
TBG Inc., 229 USPQ 759 (TTAB 1986)(the term SHOWROOM ONLINE
for the service of “leasing computer databases and video
disks in the field of interior furnishings and related
products of others” held not merely descriptive).
When, as in this case, doubt exists as to whether a
term is merely descriptive, it is the practice of this
Board to resolve doubt in favor of the applicant and pass
the application to publication. See In re Atavio, supra;
and In re Gourmet Bakers Inc., 173 USPQ 565 (TTAB 1972).
In this way, anyone who believes that the term is, in fact,
descriptive, may oppose and present evidence on this issue
to the Board.
Ser. No. 75/625095
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Finally, we turn to the refusal to register under
Section 2(d), based on the registered mark JOB SHOP SHOWS
for “organizing and conducting trade show exhibitions for
the contract manufacturing and job shop industries.” In
determining this issue we have followed the guidance of the
Court in In re E. I. duPont de Nemours & Co., 476 F.2d
1357, 177 USPQ 563 (CCPA 1973). In any likelihood of
confusion analysis, two key considerations are the
similarities between the marks and the similarities between
the goods and/or services. See Federated Food, Inc. v.
Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24 (CCPA
1976).
Turning first to a consideration of the respective
marks, the Examining Attorney takes the position that the
marks are similar because “the first two words of both
marks are identical, and the third word is not
distinctive.” (Brief, p. 3.) Applicant contends that the
marks are simply not the same and the words “SHOWS” and
“MALL” create different commercial impressions.
As noted previously, the registered mark issued under
Section 2(f) of the Trademark Act and, in addition,
includes a disclaimer of the word “shows.” Further,
applicant’s specimens clearly indicate that its services
Ser. No. 75/625095
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involve postings for the “job shop” industry.5 The only
words common to both marks are “job shop,” which are highly
suggestive or descriptive. This record indicates that the
term “job shop” is weak because of its descriptive nature,
and thus, the term will be more easily distinguished by
purchasers.
We agree with applicant that these marks, JOB SHOP
SHOWS and JOB SHOP MALL, when considered in their
entireties, are different in appearance and connotation and
create different commercial impressions. Registrant’s mark
indicates a relation to trade shows for or involving job
shops. Applicant’s mark, on the other hand, connotes
searching for or locating various job shoppers for the
manufacturing processes.
When the marks are considered in their entireties, and
given the nature of the marks, we do not find the marks are
similar.
In considering the involved services, it is clear that
registrant’s services of organizing and conducting trade
shows for the job shop industry and applicant’s services of
enabling others to place advertisements on a website are
not the same. The Examining Attorney’s evidence to
establish that these particular services are closely
5 The Examining Attorney has not required any disclaimer.
Ser. No. 75/625095
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associated and commonly come from the same source consists
of several excerpted stories from Nexis6 which include both
the words “advertisement(s) and “trade show(s).”
Specifically, the Examining Attorney argues that these
stories establish that “advertisements and trade shows are
common methods of advertising goods and services and are
frequently employed together to advertise goods and
services.” (Final Office action, February 14, 2000, p. 3.)
However, as argued by applicant, the Examining
Attorney is treating applicant’s service as if it is an
“advertising service” and comparing that with the
registrant’s service of organizing and conducting trade
shows. However, it is clear that applicant does not
provide an “advertising service,” but rather it provides
the service of enabling others to place advertisements on a
website. Also, as applicant contends, these stories simply
do not establish that organizers of trade shows are also
sources for advertising services. Thus, we find, on this
ex parte record, that the services are not closely related.
Based on the dissimilarity of these highly suggestive
marks, and the dissimilarity of the involved services, we
6 These excerpts again included numerous stories from wire
services which are of limited probative value as explained in
footnote 4, supra.
Ser. No. 75/625095
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find that there is no likelihood that the purchasing public
would be confused by applicant’s use of JOB SHOP MALL as a
mark for its services of enabling others to place
advertisements on the global computer network.
Decision: The refusals to register under both
Sections 2(d) and 2(e)(1), as well as the requirement for a
more definite identification of services, are all reversed.