Northwest Airlines, Inc.

Trademark Trial and Appeal Board

Dec 12, 2000

No. 75367405 (T.T.A.B. Dec. 12, 2000)

12/12/00
Paper No. 016
EWH/her
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Northwest Airlines, Inc.
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Serial No. 75/367,405
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Elizabeth C. Buckingham of Dorsey & Whitney LLP for
Northwest Airlines, Inc.
Andrea Nadelman, Trademark Examining Attorney, Law Office
110 (Chris Pedersen, Managing Attorney)
_______
Before Hanak, Hairston and Bucher, Administrative Trademark
Judges.
Opinion by Hanak, Administrative Trademark Judge:
Northwest Airlines, Inc. (applicant) seeks to register
NORTHWEST AIRLINES WORLDSERVICES in typed drawing form for
“aircraft repair and maintenance services provided for
others” (class 37) and for “airline transportation services
provided for others” (class 39). The intent-to-use
application was filed on October 3, 1997. Applicant
disclaimed the exclusive right to use AIRLINES.
THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Ser No. 75/367,405
2
Citing Sections 2(e)(1) and 6(a) of the Trademark Act,
the examining attorney refused registration because
applicant did not disclaim WORLDSERVICES. It is the
contention of the examining attorney that this word is
merely descriptive of both types of services for which
applicant seeks registration.
When the refusal to register was made final, applicant
appealed to this Board. Applicant and the examining
attorney filed briefs. Applicant did not request an oral
hearing.
As has been stated repeatedly, “a term is merely
descriptive if it forthwith conveys an immediate idea of
the ingredients, qualities or characteristics of the goods
[or services].” In re Abcor Development Corp., 588 F.2d
811, 200 USPQ 215, 218 (CCPA 1978) (emphasis added);
Abercrombie & Fitch Co. v. Hunting World, Inc., 537 F.2d 4,
189 USPQ 759, 765 (2nd Cir. 1976). Moreover, the immediate
idea must be conveyed forthwith with a “degree of
particularity.” In re TMS Corp. of the Americas, 200 USPQ
57, 59 (TTAB 1978); In re Entenmann’s Inc., 15 USPQ2d 1750,
1751 (TTAB 1990), aff’d 90-1495 (Fed. Cir. February 13,
1991).
We begin our analysis by a review of the evidence
which the examining attorney has submitted in an effort to
Ser No. 75/367,405
3
establish that WORLDSERVICES is descriptive of aircraft
repair and airline transportation services. At the outset,
we note that the examining attorney concedes that he has
been unable to locate any dictionary definition of the term
WORLDSERVICES, whether depicted as one word or two words,
or whether depicted in the singular or plural form.
(Examining attorney’s brief page 6). Of course, the
absence of the term WORLDSERVICES (one word or two;
singular or plural) is not dispositive of the issue of mere
descriptiveness.
The examining attorney’s evidence consists of excerpts
of stories appearing in the NEXIS data base and five third-
party registrations where in the term WORLD SERVICE(S) has
been disclaimed. It should be made clear that the
examining attorney has made of record no NEXIS excerpts or
third-party registrations involving the term WORLDSERVICES
wherein said term has been depicted as one word, either in
the singular or plural form.
As noted in Office action number 3, the examining
attorney has separated the NEXIS excerpts into two groups
-- those dealing with industries or endeavors totally
unrelated to the airline industry (exhibit C) and those
related to the airline industry (exhibit D). Of course, it
is fundamental that the mere descriptiveness of a word or
Ser No. 75/367,405
4
term is not judged in the abstract, but rather is judged in
relationship to the goods and services for which
registration is sought. Abcor Development, 200 USPQ at
215. Accordingly, while we will not ignore those NEXIS
excerpts dealing with industries totally unrelated to the
airline industry (exhibit C), we will give more weight to
those NEXIS excerpts related to the airline industry
(exhibit D).
Considering first the approximately 15 NEXIS excerpts
comprising exhibit C, we note that the vast majority of
them (at least 12) are from foreign publications or are
mere wire service releases. Excerpts from foreign
publications and wire services are entitled to very little
weight in determining whether a particular word or term is
merely descriptive in the United States. Moreover, even if
we were to consider these foreign publications and wire
service releases, they demonstrate that the term “world
service” has no particular meaning. For example, an
excerpt of an article from a British Broadcasting
Corporation story states, in part, that “Radio Ukraine is
no longer a world service because its transmission zones
are confined to Europe, the Middle East and Central Asia.”
The disparity in meanings of the term “world service” is
further demonstrated by the following passage from the May
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18, 1999 issue of Investor’s Business Daily, one of the few
publications submitted by the examining attorney which
appears in the United States: “And it [the Defense
Department] has used them [reservists] for missions less
and less related to national defense than to world service
– disaster relief, peace keeping, nation-building and
discretionary wars against Yugoslavia and Iraq.”
In short, because the evidence which the examining attorney
has submitted as exhibit C (1) consists primarily of
foreign publications and wire service releases; (2) deals
with industries and endeavors totally unrelated to the
airline industry; and (3) does not reveal any particular
meaning of the term “world service,” we find that said
evidence does not advance the case of the examining
attorney in establishing that WORLDSERVICES is merely
descriptive for aircraft repair and airline transportation
services.
Turning to the consideration of those NEXIS excerpts
which pertain to the airline industry (exhibit D), we find
that these excerpt do not support the examining attorney’s
position in that not one of the excerpts uses the term
“world service(s)” in a descriptive fashion. Rather, when
the term “world service(s)” is used in connection with the
airline industry, it is used in a manner of a trade name or
Ser No. 75/367,405
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service mark. For example, an article appearing in The
Times-Picayune of December 5, 1996 contains the following
sentence: “Pak is the president of World Service, an
airline cleaning and supply service.” Moreover, many of
the stories make reference to Pan Am World Services, a
former division of Pan Am Airlines. In sum, in considering
those NEXIS stories dealing specifically with the airline
industry (exhibit D), we find that these stories in no way
establish that the term “world service” is merely
descriptive. Indeed, if anything, these stories have
conditioned the public to view World Service as a
proprietary term.
Finally, we note that the examining attorney has
submitted as exhibit E five third-party registrations where
in the term “world service(s)” has been disclaimed. Two
comments are in order. First, none of these five
registrations involve services even remotely related to the
services for which the applicant seeks registration.
Second, in any event, we are not privy as to why the five
registrants elected to disclaim the term “world
service(s).”
Having considered all the examining attorney’s
evidence, we find that in its totality it simple fails to
establish that the term WORLDSERVICES is merely descriptive
Ser No. 75/367,405
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for aircraft repair and airline transportation service.
Indeed, as just noted, the examining attorney’s own
evidence pertaining to the airline industry (exhibit D),
suggests, if anything, that in this particular industry the
term World Service has been used in a manner so as to
condition the relevant purchasing public to view it as a
proprietary term.
Having determined that the examining attorney has
failed to meet his burden of proof, we could end this
opinion at this point. However, one final comment is in
order. It has been held that words such as GLOBE or WORLD
have such “sweeping, all-inclusive meanings” such that said
terms are simple not geographically descriptive. See 2 J.
McCarthy, McCarthy on Trademarks and Unfair Competition
section 14:7 at page 14-15 (4th ed. 2000) and cases cited
therein. Of course, the issue before us presently is not
the issue of primarily geographically descriptive, but
rather the issue of merely descriptive. However, we think
that the same reasoning applies in both instances. The
word “world” has many meanings including the planet earth;
the whole universe; the human race; and a great deal or a
large amount. Webster’s New World Dictionary (2d ed.
1970). We do not think that consumers of aircraft repair
services or airline transportation services, upon seeing
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the term WORLDSERVICES, would believe that said services
are actually rendered everywhere. Indeed, applicant, a
major international airline, does not offer services in
many significant parts of the world, including the
continents of Africa, Australia and South America. Rather,
we believe that consumers, upon seeing the term
WORLDSERVICES, would be more likely to come away with a
vague notion that said services are extensive or that said
services are world class (i.e. high in quality). In short,
the term WORLDSERVICES does not convey any information
about applicant’s services with the aforementioned required
“degree of particularity.”
Decision: The refusal to register is reversed.