Northridge Cellular, Inc.

Trademark Trial and Appeal Board

Jun 13, 2001

No. 75687288 (T.T.A.B. Jun. 13, 2001)

06/13/01
Paper No. 11
EJS
UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Northridge Cellular, Inc.
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Serial No. 75/687,288
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Anthony O. Cormier for Northridge Cellular, Inc.
Linda E. Blohm, Trademark Examining Attorney, Law Office
110 (Chris A. F. Pedersen, Managing Attorney).
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Before Seeherman, Hanak and Walters, Administrative
Trademark Judges.
Opinion by Seeherman, Administrative Trademark Judge:
Northridge Cellular, Inc. has appealed from the final
refusal of the Trademark Examining Attorney to register
2-WAY WIRELESS as a mark for “retail store services
featuring cellular telephones, pagers, and wireless
equipment and accessories therefor.”1 Registration has been
refused pursuant to Section 2(e)(1) of the Trademark Act,
1 Application Serial No. 75/687,288, filed April 19, 1999, and
asserting a bona fide intention to use the mark in commerce.
THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Ser. No. 75/687,288
2
15 U.S.C.. 1052(e)(1), on the ground that applicant’s mark
is merely descriptive of its services.
The appeal has been fully briefed, but an oral hearing
was not requested.
We affirm the refusal of registration.
A mark is merely descriptive if it immediately conveys
information concerning a quality, characteristic, function,
ingredient, attribute or feature of a product or service.
In re Venture Lending Associates, 226 USPQ 285, 286 (TTAB
1985. See also, In re Gyulay, 820 F.2d 1216, 3 USPQ2d 1009
(Fed. Cir. 1987).
The evidence of record, consisting of articles taken
from the NEXIS database and third-party registrations, show
that "2-WAY WIRELESS” is a descriptive term for, inter
alia, pagers and cellular telephones. See, for example,
the following NEXIS excerpts:2
When a lender wants to order a broker
price opinion, appraisal, or look at a
photo, the two way wireless pagers and
e-mail features speed up that process.
“Mortgage Technology,” March 2000
Metrocall, with 6 million customers,
and its partners are betting that
Internet access on two-way wireless
pagers….
“The Washington Post,” February 7, 2000
2 See, also, Registration No. 2,006,525 for one-way and two-way
wireless personal communications devices, namely, pagers, mobile
telephones and wireless modems.
Ser. No. 75/687,288
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BellSouth Wireless Data LP is using
‘Rbco Software Inc’s enterprise
application integration technology to
link the systems… that help it set up
two-way wireless pagers for new
customers.
“Informationweek,” December 6, 1999
In South America, Africa, Asia, and
many island countries, cellular and PCS
phones are the only solution because an
infrastructure of wired communications
services does not exist. Almost half
of all new sales of two-way wireless
equipment will be in these areas.
“Electronic Buyers’ News,” January 8,
1996
Newton source, retailer of Apple
Computer Inc’s MessagePads, Newton
personal digital assistant technology
and two-way wireless communications
products and services, opened a new
store May 10 in Chicago.
“Wireless Week,” May 20, 1996
Applicant does not dispute that 2-WAY WIRELESS is
merely descriptive of the goods to be sold in its retail
stores. Indeed, applicant acknowledges that “the phrase
describes two characteristics of certain radio products.”
Brief, p. 3.
However, it is applicant’s position that 2-WAY
WIRELESS is not merely descriptive of its retail store
services because it is not the generic name of any product
sold in applicant’s stores. Applicant points to In re
France Croissant, Ltd., 1 USPQ2d 1238 (TTAB 1986) and In re
Ser. No. 75/687,288
4
Pencils, Inc., 9 USPQ2d 1410 (TTAB 1988) as standing for
the proposition that “when the mark under consideration is
for retail services and the mark makes reference to the
products sold in those stores, if the entire mark is
nothing more than the generic name for the products,
registration will not be allowed.” Brief, p. 3. Applicant
extrapolates from these cases that if the mark is not the
generic name for the products, it is registrable even if it
describes a major characteristic of the products.
In France Croissant the Board found LE CROISSANT SHOP
and design to be merely descriptive of restaurant services,
noting that, as stated in In re Le Sorbet, Inc., 228 USPQ
27 (TTAB 1985), a mark for restaurant services which
comprises the generic name of a food which is the specialty
of the house is merely descriptive of the restaurant
services. The Board also found, in the Pencils case, that
the word PENCILS was merely descriptive of one of the items
sold in retail stationery and office supply stores.
However, although these cases stand for the
proposition that marks which are the generic terms for
items sold through the stores are merely descriptive of the
retail store services, we cannot agree with applicant’s
corollary conclusion, namely, that if the mark is not the
generic name for the goods which are sold, the mark cannot
Ser. No. 75/687,288
5
be merely descriptive of the retail store services. On the
contrary, marks which describe a characteristic of the
goods sold through an applicant’s retail store services
have been found to be merely descriptive. See, for
example, In re Anania Associates, Inc., aka, Off the Rack,
223 USPQ 740 (TTAB 1984), which held OFF THE RACK merely
descriptive of retail men’s apparel store services, and In
re Melville Corporation, 228 USPQ 970 (TTAB 1986), which
held BRAND NAMES FOR LESS merely descriptive of retail
store services in the clothing field. And, more recently,
the Court of Appeals for the Federal Circuit found that
1-888-M-A-T-R-E-S-S was merely descriptive of telephone
shop-at-home services in the field of mattresses. The
Court concluded this because the mark immediately conveys
the impression that a service relating to mattresses is
available by calling the telephone number. The Court never
made a finding that 1-888-M-A-T-R-E-S-S is a generic term
for the goods sold through applicant’s services although,
if applicant’s position were correct, such a conclusion
would have been necessary to support the finding that
1-888-M-A-T-R-E-S-S was merely descriptive.
In view of the foregoing, we reject applicant’s
contention that a mark for retail store services can be
Ser. No. 75/687,288
6
found merely descriptive only if it is the generic name of
the goods sold by the retail store.
Applicant has also cited certain other cases,
including Magic Wand, Inc. v. RDB, Inc., 940 F.2d 638, 19
USPQ2d 1551 (Fed. Cir. 1991) and In re Seats, Inc., 757
F.2d 274, 225 USPQ 364 (Fed. Cir. 1985) for the proposition
that “the fact that a word is descriptive of a
characteristic of products sold at applicant’s store is not
a circumstance that, by itself, constitutes a bar to
registration.” Brief, p. 3. However, these cases do not
support the proposition for which they are cited. Neither
the Magic Wand nor the Seats cases involved the question of
whether the involved term was merely descriptive. In Magic
Wand, the petition for cancellation was brought more than
five years after the issuance of the registration, and
therefore mere descriptiveness was not a ground. In Seats,
the issue was genericness and/or whether the mark was
registrable under the provisions of Section 2(f) of the
statute (acquired distinctiveness).
In conclusion, it is not necessary, in order to
support a finding of mere descriptiveness, that the Patent
and Trademark Office show that the applied-for mark is a
generic term for the goods sold through the retail store
services. In this case, the Office has met its burden of
Ser. No. 75/687,288
7
proving that the mark is merely descriptive by showing that
2-WAY WIRELESS immediately conveys information about a
characteristic of the goods applicant sells through its
“retail store services featuring cellular telephones,
pagers, and wireless equipment and accessories therefor.”
Accordingly, the mark is merely descriptive of these
services.
Decision: The refusal of registration is affirmed.