Quicklaw America, Inc.

Trademark Trial and Appeal Board

Feb 7, 2001

No. 75521756 (T.T.A.B. Feb. 7, 2001)

2/7/01
Paper No. 11
EJS
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Quicklaw America, Inc.,
by change of name from
Current Legal Resources, Inc.1
________
Serial No. 75/521,756
_______
Stuart Lewine, Vice President of Quicklaw America Inc. and
Legal Content Inc., pro se.
Tina L. Snapp, Trademark Examining Attorney, Law Office 105
(Thomas G. Howell, Managing Attorney).
_______
Before Seeherman, Hohein and Rogers, Administrative
Trademark Judges.
Opinion by Seeherman, Administrative Trademark Judge:
Quicklaw America Inc., by change of name from Current
Legal Resources, Inc., has appealed the final refusal to
register UNITED STATES CODE ONLINE for “providing the
updated and editorially enhanced text of the U.S. Code in
1 With its communication filed February 2, 2001, applicant has
advised the Office that its mark “has been transferred” to Legal
Content Inc. If applicant wishes any resulting registration to
issue in that name, it must record the assignment or other
transfer document with the U.S. Patent and Trademark Office.
THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Ser. No. 75/521,756
2
an on-line format, via a global computer network.”2
Registration has been refused pursuant to Section 2(e)(1)
of the Trademark Act, 15 U.S.C. 1052(e)(1), on the ground
that the mark is merely descriptive of applicant’s
services, and pursuant to Section 2(d) of the Act, 15
U.S.C. 1052(d), on the ground that applicant’s mark so
resembles the mark UNITED STATES CODE ANNOTATED, previously
registered for a “series of annotated books and pamphlets
dealing with the Constitution of the U.S. and the General
and Permanent Statutory Laws of the U.S.,”3 as to be likely,
when used in connection with applicant’s identified
services, to cause confusion or mistake or to deceive.
Applicant and the Examining Attorney have submitted
briefs, but an oral hearing was not requested.
We turn first to the refusal based on Section 2(e)(1).
A mark is merely descriptive, and therefore prohibited from
registration by Section 2(e)(1) of the Act, if it
immediately conveys information concerning a quality,
characteristic, function, ingredient, attribute or feature
of a product or service. It does not have to describe
2 Application Serial No. 75/521,756, filed July 20, 1998. The
application was filed based on a bona fide intention to the use
the mark; on September 14, 1998 applicant filed an amendment to
allege use asserting first use dates of August 5, 1998.
3 Registration No. 1,232,666, issued March 29, 1983; Section 8
affidavit accepted; Section 15 affidavit received.
Ser. No. 75/521,756
3
every one of these. It is sufficient if it describes a
single, significant quality, feature, function, etc. In re
Venture Lending Associates, 226 USPQ 285, 286 (TTAB 1985).
See also In re H.U.D.D.L.E., 216 USPQ 358 (TTAB 1982); In
re MBAssociates, 180 USPQ 338 (TTAB 1973).
Applicant’s services are identified as “providing the
updated and editorially enhanced text of the U.S. Code in
an on-line format, via a global computer network.” The
identification and specimens make clear that applicant
provides, in an on-line format, the text of the United
States Code. The term UNITED STATES CODE names the subject
matter of applicant’s services. As applicant has pointed
out, “United States Code” is the statutory name given to
the compilation of laws of the United States. As applicant
has acknowledged, the term UNITED STATES CODE “is merely
descriptive; it merely indicates that the relevant goods or
services involve a presentation of the federal government’s
official arrangement of federal laws, which arrangement is
officially named by statute as the ‘United States Code’.”
Brief, p. 4. The word ONLINE also has a readily understood
meaning, as the identification shows. When the words are
combined in the mark UNITED STATES CODE ONLINE and used in
connection with the identified services, it immediately and
directly conveys information about the subject matter
Ser. No. 75/521,756
4
presented by applicant, and the mode by which it is
provided.
Applicant asserts that its mark is not merely
descriptive because it does not make the United States Code
available on line as a “static and linear body of text,”
but updates its presentation on a daily basis, provides a
method of performing various types of searches, and a
system of hyperlinks enabling a user to jump directly from
one place in the text to a related place. Brief, p. 5.
However, as noted above, it is not necessary that a term
describe each of the characteristics of an applicant’s
services in order to be found merely descriptive. In this
case, the mark describes an essential characteristic of
applicant’s on-line services, namely, that the subject
matter includes, and indeed focuses on, the United States
Code. As such, it is merely descriptive of applicant’s
services. The fact that the mark does not also describe
the various enhancements by which a consumer may search the
United States Code does not avoid such a finding.
Nor are we persuaded by applicant’s argument that the
juxtaposition of UNITED STATES CODE and ONLINE in the mark
has an incongruous meaning because the United States Code
originally existed only in a print format. It is common
knowledge that many reference materials that once were
Ser. No. 75/521,756
5
found only in paper form are now available through computer
networks. For example, in the legal research area (the
area in which many of applicant’s consumers would
practice), law reports which were previously available
through book series are now available on-line and through
computer data bases, through such services and products as
LEXIS and BNA’s Intellectual Property Library on CD. Such
consumers will not see any incongruity in the mark UNITED
STATES CODE ONLINE; they will immediately recognize that
the United States Code is being presented in an on-line
version, just like many other legal volumes. Applicant’s
reliance on In re TBG Inc., 229 USPQ 759 (TTAB 1986)
(SHOWROOM ONLINE found not merely descriptive) is
misplaced; as explained in In re Putman Publishing Co., 39
USPQ2d 2021 (TTAB 1996), SHOWROOM was suggestive for that
applicant’s services because the applicant did not sell or
lease interior furnishings, or otherwise offer through its
computer database leasing service materials akin to that
offered by a showroom. The present case is more akin to
Putnam, in which FOOD & BEVERAGE ON-LINE was found to be
merely descriptive of “a news and information service
updated daily for the food processing industry, contained
in a database.” Just as in Putnam, applicant’s mark
Ser. No. 75/521,756
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describes the subject matter it presents and the method by
which it presents it.
Accordingly, the refusal of registration on the ground
that the mark is merely descriptive of the identified
services is affirmed.
This brings us to the refusal on the ground that
UNITED STATES CODE ONLINE for “providing the updated and
editorially enhanced text of the U.S. Code in an on-line
format, via a global computer network” is likely to cause
confusion with UNITED STATES CODE ANNOTATED for “series of
annotated books and pamphlets dealing with the Constitution
of the U.S. and the General and Permanent Statutory Laws of
the U.S.” In making our determination as to whether there
is a likelihood of confusion, we must consider all relevant
factors as set forth in In re E. I. du Pont de Nemours &
Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973). Each of the
factors may from case to case play a dominant role.
Kellogg Company v. Pack’em Enterprises, Inc., 951 F.2d 330,
21 USPQ2d 1142 (Fed. Cir. 1991).
In this case, three of the most important factors are
the similarities of the marks, the strength of the
registered mark, and the sophistication of the purchasers
of applicant’s services and the registrant’s goods.
Ser. No. 75/521,756
7
As noted above, the term “United States Code” is the
term used by statute to refer to the laws of the United
States, and is not entitled to exclusive appropriation by
anyone. Therefore, we do not accept the Examining
Attorney’s assertion that these words are the dominant part
of each mark. On the contrary, a determination of
likelihood of confusion cannot be based simply on the fact
that this term is common to both applicant’s and the
registrant’s marks. The remaining portions of the marks,
ANNOTATED and ONLINE, are different in appearance,
pronunciation and connotation. Although the words are
descriptive of the respective goods and services, they are
descriptive of different facets of the goods and services.
Normally, of course, marks would not be
distinguishable based on their descriptive elements. Here,
however, we are presented with a situation in which each of
the marks at issue is made up of descriptive words. The
cited mark was registered pursuant to the provisions of
Section 2(f), a recognition that UNITED STATES CODE
ANNOTATED was originally considered to be merely
descriptive, and was registered only upon the Examining
Attorney’s finding that it had acquired distinctiveness.
Nevertheless, we cannot, in the absence of any evidence to
Ser. No. 75/521,756
8
that effect,4 treat the cited mark as a strong mark which is
entitled to a wide scope of protection against any mark
which contains the words UNITED STATES CODE.
It must also be remembered that the likely consumers
of the registrant’s goods and applicant’s services are
those who wish to do legal research. These consumers must
be considered careful as well as sophisticated. They will
be familiar with the United States Code, and will not
assume a common source even for related goods and services5
simply because both marks contain this term. Rather, they
will look to the other elements in the marks. These
additional elements, even though descriptive, are
different, and these differences are sufficient, given the
weaknesses of both marks, to avoid confusion. We would
4 The Examining Attorney states that the fame of the registered
mark is one of the relevant factors and implies, with her
statement that “the other factors cannot be considered because no
relevant evidence concerning those factors is contained in the
record,” brief, p.3, that there is evidence on the factor of
fame. However, no such evidence has been submitted.
5 The Examining Attorney asserts in her brief that both
applicant and the registrant are “offering the relevant services
on-line.” Although the Examining Attorney has submitted copies
of other registrations owned by the registrant for computerized
legal research services, the cited registration is for goods,
i.e., a series of annotated books and pamphlets, and there is no
indication that registrant offers any computerized or on-line
research services under the cited mark. While we do not dispute
that applicant’s goods and the registrant’s services are related
in view of their similar subject matter and class of consumers,
much of the Examining Attorney’s arguments relating to the
channels of trade, marketing practices, and so on, appear to be
based on the notion that the cited registration is for services.
Ser. No. 75/521,756
9
also point out, in view of the cases cited in the Examining
Attorney’s brief, that this is not a situation in which
applicant has appropriated the mark of the registrant in
its entirety, and merely added descriptive wording to it.
Instead, applicant has taken a phrase which is included in
the registrant’s mark but is not the mark in its entirety,
a phrase, moreover, which is the official term for the
subject matter of its service, and added to it a
descriptive term which is different from that in the cited
registration.
Accordingly, we find that applicant’s use of UNITED
STATES CODE ONLINE for its identified services is not
likely to cause confusion with the cited registration for
UNITED STATES CODE ANNOTATED.
Decision: The refusal based on Section 2(e)(1) of the
Act is affirmed; the refusal based on Section 2(d) of the
Act is reversed.