Premier Internet Corp.

Trademark Trial and Appeal Board

May 11, 2001

No. 75599648 (T.T.A.B. May. 11, 2001)

5/11/01
Paper No. 9
HRW
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Premier Internet Corporation
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Serial No. 75/599,648
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Andrew N. Spivak of Morrison & Foerster LLP
for Premier Internet Corporation.
Henry S. Zak, Trademark Examining Attorney, Law Office 108
(David Shallant, Managing Attorney).
_______
Before Simms, Hairston and Wendel, Administrative Trademark
Judges.
Opinion by Wendel, Administrative Trademark Judge:
Premier Internet Corporation has filed an application
to register the mark NEWSBREAKER for “news delivery
services, namely, providing news and information via a
global computer network.”1
Registration has been finally refused under Section
2(e)(1) of the Trademark Act on the ground that the mark,
when used in connection with the recited services, is
1 Serial No. 75/599,648, filed December 4, 1998, claiming a first
use and first use in commerce date of September 18, 1998.
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF
THE TTAB
Ser No. 75/599.648
2
merely descriptive thereof. The refusal has been appealed
and applicant and the Examining Attorney have filed briefs.2
An oral hearing was not requested.
The Examining Attorney maintains that the term
NEWSBREAKER merely describes a feature of applicant’s on-
line news delivery services in two contexts, either as a
descriptor of the nature of the stories provided
(newsbreaking stories or newsbreakers) or as a descriptor
of the nature of the entity providing these stories (an
organization delivering newsbreaking stories or a
newsbreaker).
Looking to the specimens of record, the Examining
Attorney quotes the following language used in describing
the contents of the NEWSBREAKER NEWS:
A New Concept in News for Santa Monica
Newsbreaker News Service in Santa Monica will bring
you everything, and more, than is offered by any other
local media. We will have a daily editorial, feature
stories, columnists, local news events.
From these statements, the Examining Attorney contends,
that the “news delivery services” of applicant appear to be
no different in content than any other type of media which
provides newsworthy material to the community. He argues
2 The application was reassigned to a new Examining Attorney for
preparation of the brief.
Ser No. 75/599.648
3
that the applicant is simply offering an “alternative news
source, rendered via an electronic computer network.”
With this background, the Examining Attorney maintains
that the term “newsbreaker” has particular significance
when used in connection with news reporting or delivery
services. He argues that a first descriptive meaning for
the term is as an identifier of stories of particular news
interest. He relies upon the following excerpts from NEXIS
articles, selected from those made of record by the prior
Examining Attorney, to demonstrate this connotation:
We were given the inside tract on that newsbreaker
during the 30th Annual New York State Outdoors Writers
Association’s spring conference ...
The Times Union (May 21, 1997);
Nike’s regeneration of the ‘Just Do It’ campaign is
another recent newsbreaker.
SportStyle (April 1995);
This is the first, however, devoted to a selection of
the anonymous “Notes and Comments,” “Talk of the Town”
pieces and newsbreakers he composed for the magazine
The Times Union (January 27, 1994).
He argues that the term “newsbreaker,” within this meaning,
would describe a feature or characteristic of applicant’s
services in that it describes the type of stories delivered
by applicant, namely, “newsbreaking stories of interest to
the local community or newsbreakers.”
The second meaning of the term “newsbreaker” which the
Examining Attorney contends is applicable to applicant’s
Ser No. 75/599.648
4
news delivery services is the use of the term to identify
the source or provider of newsbreaking stories. He relies
upon the following excerpts to demonstate this usage:
The tabloid format was necessitated by PennWell
positioning the new publication as a newsbreaker
within the market...
min’s b-to-b (December 21, 1998);
On the tech side, online newsbreakers like C/Net and
ZDNet continue to encroaching [sic] on the magazine’s
traditional space...
Marketing Computers (June 1997);
And while every edition of “Frontline” is not a
distinctive newsbreaker, the series hits more often
than it misses.
The Boston Herald (October 24, 1995).
Given this meaning for “newsbreaker”, the Examining
Attorney maintains that the term would be merely
descriptive of a feature or characteristic of applicant
itself, namely, as an organization which delivers news
breaking news. This descriptive significance, he argues,
would carry over to the news delivery services offered by
applicant.
Applicant strongly contests the probative value of the
NEXIS evidence being relied upon by the Examining Attorney.
Noting that of the 147 “hits” obtained by the Examining
Attorney only 18 of the articles have been made of record,
applicant contends that most usages even in these articles
are not applicable to applicant’s particular services.
Ser No. 75/599.648
5
Applicant points to stories in which “Newsbreakers” is used
as the title of a television show, to the name of an award,
or to a publication or particular person labeled as being a
“newsbreaker,” in that this is one which, or who, “breaks”
the news.3 Applicant insists that it merely delivers news
of others via the computer and that its computer services
do not involve sending reporters into the field or any news
“breaking.” Applicant argues that consumers would not
consider the mark descriptive of applicant’s delivery
services, since news delivery providers are not viewed as
those “breaking the news.” Applicant asserts that it is the
particular media programs, publications and individuals
that create and “break” news stories, whereas entities such
as applicant simply deliver such stories. Thus, applicant
contends, NEWSBREAKER is no more than suggestive of its
computerized news delivery services.
In addition, applicant points out that its copending
application for the mark NEWSBREAKER for “computer software
for the display of moving or static text, multiple images,
and statistical evidence and information in a global
computer information network, local and wide area computer
3 The fact that applicant has ascertained that many of the
articles not relied upon by the Examining Attorney refer to a
race horse named Newsbreaker is totally irrelevant to the issue
before us.
Ser No. 75/599.648
6
networks” has been allowed to register by the Office.
Applicant argues that, since the subject matter of this
software is essentially the same as that of applicant’s
news delivery services, the registration is strong evidence
that that present application should also be passed to
registration.
A term is merely descriptive within the meaning of
Section 2(e)(1) if it immediately conveys information about
a characteristic or feature of the goods or services with
which it is being used. See In re Abcor Development Corp.,
588 F.2d 811, 200 USPQ 215 (CCPA 1978). Whether or not a
particular term 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 designation is being used, and the significance
the designation is likely to have to the average purchaser
as he or she encounters the goods or services bearing the
designation, because of the manner in which it is used.
See In re Bright-Crest, Ltd., 204 USPQ 591 (TTAB 1979). It
is not necessary that the term or phrase describe all the
characteristics or features of the goods or services in
order to be merely descriptive; it is sufficient if the
term or phrase describes one significant attribute thereof.
Ser No. 75/599.648
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See In re Pennzoil Products Co., 20 USPQ2d 1753 (TTAB
1991).
From the evidence of record we see that the term
“newsbreaker” has several nuances in meaning.4 Nonetheless,
it is clear that, although often used in reference to the
persons or entities which “break” news stories, the term
may also be used to refer to the type of news story itself.
Thus, even if we accept the limitation that applicant
merely delivers the news gathered by others, applicant may,
and most likely does, still deliver “newsbreaking” news or
“newbreakers.” Clearly, the title shown on the website
page submitted as a specimen, NEWSBREAKER NEWS, creates
such an inference and is indicative of the reaction that
consumers would have to the mark. See In re Pharmaceutical
Innovations, Inc., 217 USPQ 365 (TTAB 1983)(evidence of
context in which an applicant is using the mark is
probative of the reaction of purchasers to the mark.)
Thus, we agree with the Examining Attorney that the
term NEWSBREAKER merely describes a feature or
characteristic of applicant’s news delivery services,
namely, that these are “newsbreaking” stories or
4 We find the number of excerpts relied upon by the Examining
Attorney fully adequate to establish the various connotations of
the term.
Ser No. 75/599.648
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“newsbreakers.” Even if stories are garnered by others, it
is applicant who passes along this type of news to the
general public.
Furthermore, there is no restriction in the recitation
of services that the news which applicant provides is
gathered solely by others. Applicant has provided no
evidence to substantiate its claim that a news delivery
service would be so limited. Thus, even the connotation of
a “newsbreaker” as one who actually “breaks” the news is
not inapplicable to applicant’s news delivery services. At
the very least, we agree with the Examining Attorney that
the term “newsbreaker” would be equally descriptive of
applicant as an organization which delivers “newsbreaking
news,” whether gathered internally or by outside sources.
If applicant can aptly be described as an organization
providing a “newbreaking” service, its news delivery
services can well be described as being those of a
“newbreaker.” 5
Accordingly, we find the term NEWSBREAKER, when used
in connection with news delivery services for providing
news and information via a global computer network, merely
descriptive thereof. The fact that applicant may have
5 We note the particular NEXIS article in which reference is
specifically made to “online newsbreakers.”
Ser No. 75/599.648
9
obtained a registration for the same term when used in
connection with computer software products does not alter
our decision. The descriptiveness of the term NEWSBREAKER
in connection with a news delivery service is the issue
here, not in connection with computer software products
which may be used in the implementation of this service.
Decision: The refusal to register under Section
2(e)(1) is affirmed.