Promo Ink

Trademark Trial and Appeal Board

Feb 15, 2006

No. 76541018 (T.T.A.B. Feb. 15, 2006)

Mailed:
15 February 2006

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Promo Ink
________

Serial No. 76541018
_______

Donna Bogatin, pro se for Promo Ink.

Yong Oh (Richard) Kim, Trademark Examining Attorney, Law
Office 115 (Tomas V. Vlcek, Managing Attorney).
_______

Before Quinn, Drost, and Kuhlke, Administrative Trademark
Judges.

Opinion by Drost, Administrative Trademark Judge:

On August 29, 2003, applicant, Promo Ink, a sole
proprietorship with Donna Bogatin listed as the sole
proprietor, applied to register the mark PARTY AT A
DISCOUNT! (standard character form) on the Principal
Register for services identified as "preparation and
dissemination for others of advertising and promotional
matter via global computer communications networks in the
field of shopping for goods and services" in Class 35. The
THIS DISPOSITION
IS CITABLE
AS PRECEDENT OF
THE TTAB
Ser. No. 76541018
2
application (No. 76541018) is based on applicant’s
allegation of a bona fide intention to use the mark in
commerce.
The examiner has refused registration on the ground
that applicant’s mark when used in association with
applicant’s services is merely descriptive. 15 U.S.C.
§ 1052(e)(1). The examining attorney’s position is that
the mark, “from the plain meaning of the words, PARTY AT A
DISCOUNT!, taken as a whole, merely describes the purpose
of Applicant’s services, i.e., to advertise parties offered
at a discount.” Brief at 2.
Applicant argues (Brief at 1):
As the above noted diverse dictionary definitions for
the word “party” cited by the examining attorney in
his Office Action clearly confirm that 1) the word
“party” has diverse meanings and 2) the word “party”
can be used and understood in many different ways and
3) the word “party” can function as a noun, or an
adjective, or a verb, the use of the word “Party” in a
mark does not automatically or exclusively describe “a
group of people who have gathered to participate in an
activity.”

As cited by Applicant in Appeal dated February 10,
2005, dictionary definitions of the word “Party”
include “To take intense pleasure” and “Revel” and the
use of the word “Party” in the imperative phrase
“Party at a discount!” suggests and encourages
pleasure of any and all kinds, without regard to
place, activity (or lack thereof) or number(s) of
persons involved.

After the examining attorney made the refusal final,
this appeal followed.
Ser. No. 76541018
3
We begin our discussion by addressing applicant’s
objection to the examining attorney’s evidence. In the
first and second Office actions, the examining attorney
attached Internet printouts that the examining attorney
described as being from “applicant’s websites.” First
Office Action at 3; Second Office Action at 2. Two
examples are set out below.

Ser. No. 76541018
4

An example of the language in the fine print at the
bottom of one of the pages is set out below: “(c) 2003
PROMO Ink™” and "All Web site design, text, and selection,
arrangement thereof, are copyrighted works of PROMO Ink.
Urban Savings, Urban Directions, Life at a Discount, Urban
Coupons, Urban $avers, Savin' Maven, Metro Luxe, Party at a
Discount are TMs of PROMO Ink."
Applicant objects to the Internet printouts:
The application was a Section 1(b), Intent to Use
application and, accordingly, did not contain any
Specimen of Use. The examining attorney did not heed
applicant’s correctly filed Intent to Use application
and improperly sought to “produce” a specimen and then
append applicant’s properly filed Intent to Use
application with a “specimen” that the examining
attorney created himself.

Ser. No. 76541018
5
TMEP 904 “specimens” states “In an application for
registration under 1(b) of the Trademark Act, no
specimen is required at the time the application is
filed” and TMEP 905 “Method of Use” states “The
applicant is not required to specify the method or
intended method of use of a mark, in an application
under 1(a) or 1(b) of the Act.”

Reply Brief at 1.

The examining attorney points to the language at the
bottom of the printout to demonstrate that the pages are
indeed from applicant’s website.
An applicant who is actually using its mark may, for
various reasons, choose to file an intent-to-use
application. McCarthy on Trademarks and Unfair Competition
(4th ed. 2005) § 19:13. In addition, an intent-to-use
applicant may begin using its mark during the examination
of the application. If an intent-to-use application is
filed, the applicant is not required to meet the
requirements of use-based applications during the initial
examination of the application. However, the fact that
applicant has filed an intent-to-use application does not
limit the examining attorney’s evidentiary options, nor
does it shield an applicant from producing evidence that it
may have in its possession. Trademark Rule 2.61(b) (37 CFR
2.61(b)) provides that: “The examiner may require the
applicant to furnish such information and exhibits as may
be reasonably necessary to the proper examination of the
Ser. No. 76541018
6
application.” This provision is equally applicable to
intent-to-use applicants. TMEP § 814 (4th ed. April 2005)
(“The examining attorney may request literature, exhibits,
and general information concerning circumstances
surrounding the mark and, if applicable, its use or
intended use”) (emphasis added). See In re SPX Corp., 63
USPQ2d 1592, 1597 (TTAB 2002) (Board affirmed a refusal
based on an intent-to-use applicant’s failure to respond to
the examining attorney’s requirement for information); In
re DTI Partnership LLP, 67 USPQ2d 1699, 1700 n.2 (TTAB
2003) (“Nor did [the intent-to-use] applicant comply with,
or even acknowledge, the Trademark Examining Attorney's
specific requirements for submission of advertising or
promotional materials and for a description of the nature,
purpose and channels of trade of the goods”). If the
examining attorney had made this requirement in this case,
applicant would have been required to produce, if it
existed, evidence of the type that the examining attorney’s
Internet search revealed. The evidence was found as a
result of an Internet search and it was, therefore,
properly submitted by the examining attorney. TMEP
§ 701.01(b) (4th ed. April 2005) (“Articles downloaded from
the Internet are admissible as evidence of information
Ser. No. 76541018
7
available to the general public, and of the way in which a
term is being used by the public”).
We also note that applicant does not raise any point
that would indicate that there is any problem with the
nature of the printouts themselves. Applicant’s objection
is that the examining attorney is producing a specimen for
applicant, which he clearly is not doing. The examining
attorney is using the printouts as evidence that the mark
is merely descriptive of applicant’s services. Accord In
re Remacle, 66 USPQ2d 1222, 1224 n.5 (TTAB 2002)
(Particularly in the case before us, involving
sophisticated medical technology, it is reasonable to
consider a relevant article from an Internet web site, in
English, about medical research in another country, Great
Britain in this case, because that research is likely to be
of interest worldwide regardless of its country of
origin”). The examining attorney could have introduced
evidence of other parties’ use of the term that he
discovered on the Internet, and he is also permitted to
introduce evidence that applicant’s own literature supports
the descriptive nature of the term. It is also clear that
the examining attorney is not requiring applicant’s intent-
to-use application to meet the requirements of a use-based
Ser. No. 76541018
8
application. Therefore, we overrule applicant’s objection
to the printouts.
A second preliminary matter that we address is the
examining attorney’s objection to applicant’s reference to
six registrations in its brief and reply brief. We sustain
this objection for two reasons. First, the submission of
this evidence for the first time in applicant’s briefs is
untimely. 37 CFR § 2.142(d). Second, if applicants or
examining attorneys would like to rely on third-party
registrations for support of their position, they must
submit a copy of those registrations. Simply providing a
list of registrations is not sufficient. In re Duofold,
Inc., 184 USPQ 638, 640 (TTAB 1974) (“[T]he submission of a
list of registrations is insufficient to make them of
record”). Applicant did not do that in this case and,
therefore, we will not consider as evidence the
registrations listed in applicant’s briefs.
We now address the central issue in this case,
whether the mark PARTY AT A DISCOUNT! is merely
descriptive when used in association with the identified
services. 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
Ser. No. 76541018
9
services. In re Abcor Development Corp., 588 F.2d 811,
200 USPQ 215, 217 (CCPA 1978). See also In re Nett
Designs, 236 F.3d 1339, 57 USPQ2d 1564, 1566 (Fed. Cir.
2001). To be “merely descriptive,” a term need only
describe a single significant quality or property of the
goods or services. In re Gyulay, 820 F.2d 1216, 3 USPQ2d
1009, 1009 (Fed. Cir. 1987); In re MBNA America Bank N.A.,
340 F.3d 1328, 67 USPQ2d 1778, 1780 (Fed. Cir. 2003) (A
“mark is merely descriptive if the ultimate consumers
immediately associate it with a quality or characteristic
of the product or service”). We look at the mark in
relation to the goods or services, and not in the
abstract, when we consider whether the mark is merely
descriptive. Abcor, 200 USPQ at 218.
In order to show that applicant’s mark is merely
descriptive, the examining attorney has submitted
definitions of the terms, “party” and “discount.” First
Office Action at 2. Relevant excerpts from these
definitions are set out below.
Party –
(Noun) A social gathering especially for pleasure or
amusement: a cocktail party. A group of people who
have gathered to participate in an activity.
(Verb) – To celebrate or carouse at or as if at a
party: That night we partied until dawn.

Discount –
Ser. No. 76541018
10
A reduction from the full or standard amount of a
price or debt.

Applicant’s services involve the preparation and
dissemination for others of advertising and promotional
matter via global computer communications networks in the
field of shopping for goods and services. The Internet
evidence shows that there are services that involve
disseminating promotional information that feature discount
coupons for parties.
The Internet evidence shows that a significant feature
of the services involves discounts for parties. The
printouts refer to “‘Top Values’ for private parties in New
York City.” The following are listed under “Hot Deals:”
John’s of 12th Street - $50 Gift Certificate with
party.

Buona Notte Ristorante – FREE Wine with Party

44sw Ristorante & Lounge – FREE Sangria with Party

Stella Del Mare - $100 Gift Certificate with Party

O’Reilly’s Townhouse Restaurant - $50 Gift Certificate
with Party

Another page features the SNAFU Bar & Lounge. The
page contains the following information:
Throw your own party!
Private Candlelit Lounge see coupon below

$20 OPEN BAR 2-Hour Party
Per Person, 20 People Min., Complimentary for
Organizer
Ser. No. 76541018
11
Potential customers encountering a service that offers
them the opportunity to have a party at a restaurant or
lounge and receive a reduced rate or complimentary food
and/or beverages would immediately understand that the term
exactly describes the services, i.e., that the services
involve parties at a discount. Therefore, applicant’s mark
is merely descriptive of the identified services.
Applicant points out that there are numerous meanings
of the words in the mark. However, we must look at the use
of the mark in the context of the services.
Similarly, that applicant can take the dictionary
definitions of the individual words in the term and
come up with a meaning that makes no sense in
connection with the services recited in the
application does not mandate a different conclusion on
the issue of mere descriptiveness. As stated above,
the determination of descriptiveness is made in the
context of the identified services, and the meaning of
“ETHNIC ACCENTS” in connection with applicant's
services is clearly that of home furnishings or
decorations relating to various ethnicities.

In re Ethnic Home Lifestyles Corp., 70 USPQ2d 1156, 1159
(TTAB 2003). When prospective customers encounter the term
PARTY AT A DISCOUNT! for services that disseminate for
others promotional matter advertising discounts for parties
at restaurants and lounges, they will immediately
understand that the mark is describing a significant
feature of the services and not simply a suggestion of
“pleasure of any and all kinds.”
Ser. No. 76541018
12
We also have considered that applicant’s mark contains
an exclamation point, but this punctuation mark does not
significantly change the commercial impression of the mark.
It would simply emphasize the descriptive nature of the
mark to prospective purchasers, i.e., that customers can
receive discounts for their parties. In re Samuel Moore &
Co., 195 USPQ 237, 240 (TTAB 1977) (“Applicant has not
cited nor have we found any case where it was held that a
common punctuation mark, such as an exclamation point, was
sufficient to elevate an otherwise merely descriptive term
to the status of a registrable trademark. We do not do so
in this case”); In re S.D. Fabrics, Inc., 223 USPQ 54, 55
(TTAB 1984) (“Aside therefrom, we are not persuaded that
the design features of applicant's mark, namely, the
filling in of portions of some of the letters in the mark
and the separation of the two words of the mark with a
conventional punctuation mark, are so distinctive as to
create a commercial impression separate and apart from the
unregistrable components”). There is no reason in this
case to conclude that the punctuation mark here changes a
descriptive mark into a non-descriptive mark.
Ultimately, we conclude that PARTY AT A DISCOUNT! for
the services of preparation and dissemination for others of
advertising and promotional matter via global computer
Ser. No. 76541018
13
communications networks in the field of shopping for goods
and services is merely descriptive.
Decision: The examining attorney’s refusal to
register the term on the ground that the mark is merely
descriptive of the involved services is affirmed.