Penton Media, Inc.

Trademark Trial and Appeal Board

Jul 6, 2001

No. 75649162 (T.T.A.B. Jul. 6, 2001)

7/6/01
Paper No. 9
AD
UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
________
In re Penton Media, Inc.
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Serial No. 75/649,162
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Kenneth L. Mitchell of Woodling, Krost & Rust for Penton
Media, Inc.
Dominick John Salemi, Trademark Examining Attorney, Law
Office 107 (Thomas Lamone, Managing Attorney).
_______
Before Seeherman, Bottorff and Drost, Administrative
Trademark Judges.
Opinion by Drost, Administrative Trademark Judge:
On February 22, 1999, Penton Media, Inc. (applicant)
filed a trademark application to register the mark INTERNET
DEVICE MAGAZINE (typed drawing) for goods ultimately
identified as “magazines directed to equipment and devices
used in the global computer information network” in
International Class 16.1
1 Serial No. 75/649,162. The application alleges 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. 75/649,162
2
The Examining Attorney refused to register the mark on
the ground that the mark, when applied to the goods, is
merely descriptive under Section 2(e)(1) of the Trademark
Act. 15 U.S.C. § 1052(e)(1). After the Examining Attorney
made the refusal final, applicant filed a notice of appeal.
Both applicant and the Examining Attorney have filed
briefs, but an oral hearing was not requested.
We affirm the Examining Attorney’s refusal to
register.
The Examining Attorney’s position is that applicant’s
goods are “magazines directed to equipment and devices used
in a global computer information network, i.e., the
internet.” Final Office Action, p. 1. Inasmuch as the
title of the magazine would be descriptive of the content
or subject matter of the magazine, the Examining Attorney
determined that it was merely descriptive when it would be
applied to applicant’s magazines directed to equipment and
devices used on the Internet. The Examining Attorney
supported his refusal with printouts from LEXIS/NEXIS
showing that the term “internet device” was used to
describe devices that connect users to the internet.
In response to the Examining Attorney’s refusal,
applicant argues that, from the articles that the Examining
Attorney submitted to support his refusal, “no one can
Ser No. 75/649,162
3
discern what is meant by the term INTERNET DEVICE.”
Applicant’s Appeal Brief, p. 2. In addition, applicant
asserts that the “term INTERNET is still new and does not
have a widely known meaning and is not descriptive.” Id.
A mark is merely descriptive if it immediately
describes the ingredients, qualities, or characteristics of
the goods or services or if it conveys information
regarding a function, purpose, or use of the goods or
services. In re Abcor Development Corp., 588 F.2d 811, 200
USPQ 215, 217 (CCPA 1978). A term may be held descriptive
even if it only describes one of the qualities or
properties of the goods or services. In re Gyulay, 820
F.2d 1216, 1217, 3 USPQ2d 1009, 1009 (Fed. Cir. 1987). We
look at the mark in relation to the goods or services, and
not in the abstract, when we consider whether the mark is
descriptive. Abcor, 588 F.2d at 814, 200 USPQ at 218.
It is well settled that the title of a magazine is
descriptive if it describes the contents of the magazine.
See, e.g., In re Gracious Lady Services, Inc., 175 USPQ 380
(TTAB 1972) (“CREDIT CARD MARKETING” merely descriptive of
periodic pamphlet devoted to subjects of interest to those
engaged in the credit card merchandising field); In re
Nippon Kokan Kabushiki Kaisha, 171 USPQ 63 (TTAB 1971)
(“JAPAN STEEL NOTES” merely descriptive of a magazine
Ser No. 75/649,162
4
pertaining to the Japanese steel industry); In re Medical
Digest, Inc., 148 USPQ 148 (TTAB 1965) (“OB/GYN DIGEST” is
merely descriptive of magazines in the field of obstetrics
and gynecology).
In this case, there is significant evidence that the
term INTERNET DEVICE refers to devices that connect users
to the Internet.
The embedded database is for applications which
support mobile workers and Internet devices, such as
personal digital assistants, set-top boxes, and
possibly devices such as automobile navigation
systems. Open Manufacturing, Winter 2000, p. 18.
[I]t’s the only PC maker to have stand-alone retail
outlets – should be an advantage when it comes to
selling the new Internet devices and accompanying
services. Money, April 2000, p. 62.
Compaq refers to its latest product, the iPAQ, as an
Internet device, implying that its primary purpose is
to access the Web. Such a product is typically meant
for consumers. PC Magazine, March 21, 2000, p. 46.
This spring, the company will unveil a new line of
compact, stylish PCs and other Internet devices. PC
Magazine, March 21, 2000, p. 79.
The next generation of wireless Internet devices will
be more robust and useful. Atlanta Journal and
Constitution, March 15, 2000, p. 7D.
… best hope for Microsoft is to evolve and adapt — as
technology moves away from the Windows platform of the
personal computer toward new Internet devices and
services. Washington Post, March 15, 2000, p. A27.
This evidence demonstrates that there are devices that
connect users to the Internet that are referred to as
Ser No. 75/649,162
5
Internet devices. The term “internet device” is used to
describe a variety of devices that access the Internet,
including personal digital assistants, wireless Internet
devices, and set-top boxes. Therefore, we cannot accept
applicant’s arguments that the no one can discern what the
term “Internet device” means based on the articles. The
articles clearly indicate that the term “Internet device”
refers to various devices used to connect users with the
Internet. The terms Internet and device, both individually
and as a unitary term, appear to have readily understood
meanings that would be apparent to prospective purchasers
of applicant’s magazine.
In addition, applicant’s identification of goods is
for magazines directed to devices used on the Internet.
The term “global computer information network” is simply a
reference to the Internet. See On-line Careline Inc. v.
America Online Inc., 229 F.3d 1080, 56 USPQ2d 1471, 1475
(Fed. Cir. 2000) (Providing telecommunications connections
to a global computer network related to the use of the
Internet); In re Styleclick.com Inc., 57 USPQ2d 1445, 1447
(TTAB 2000) (Services concerning shopping via a global
computer network involve the Internet). The identification
of goods itself makes it clear that the content of
applicant’s magazines will be directed to devices used on
Ser No. 75/649,162
6
the Internet. Thus, a magazine entitled INTERNET DEVICE
MAGAZINE directed to Internet devices and equipment is
merely descriptive of the magazine. Under long-established
case law, we must determine whether a term is descriptive
in relation to the goods or services for which applicant
seeks registration. Because the subject matter of
applicant’s magazine would be equipment and devices used in
the global computer information network, nothing would be
left to the imagination of the prospective purchasers if
INTERNET DEVICE MAGAZINE were used for these publications.
The title, INTERNET DEVICE MAGAZINE, immediately tells
consumers what the subject matter of the magazine is.
Therefore, the term would be merely descriptive of the
goods.
Decision: The Examining Attorney’s refusal to
register the mark INTERNET DEVICE MAGAZINE on the ground
that the term would be merely descriptive of applicant’s
magazines is affirmed.