SpecComm Int'l., Inc.

Trademark Trial and Appeal Board

Feb 28, 2001

No. 75300898 (T.T.A.B. Feb. 28, 2001)

02/28/01
Paper No. 16
TEH
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re SpecComm International, Inc.
________
Serial No. 75/300,898
_______
Lisa Kaufman of Blank Rome Comisky & McCauley LLP for SpecComm
International
Alex H. Butterman, Trademark Examining Attorney, Law Office 106
(Mary Sparrow, Managing Attorney).
_______
Before Quinn, Chapman and Holtzman, Administrative Trademark
Judges.
Opinion by Holtzman, Administrative Trademark Judge:
An application has been filed by SpecComm International, Inc.
to register the mark VIRTUAL FIRE & RESCUE EXPO for "conducting
educational workshops in the field of fire and rescue by means of
a global computer information network."1
1 Serial No. 75/300,898 filed May 30, 1997. Applicant has claimed
ownership of Registration No. 2,078,917 for the mark NATIONAL FIRE &
RESCUE and design with NATIONAL FIRE & RESCUE disclaimed.
THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Ser No. 75/300,898
2
The Trademark Examining Attorney initially refused
registration under Section 2(e)(1) of the Trademark Act on the
ground that applicant's mark is merely descriptive of its
services. In response to the refusal, applicant argued that the
mark is not descriptive and moreover claimed that the mark has
acquired distinctiveness under Section 2(f) of the Act. The
Examining Attorney rejected applicant's Section 2(f) claim and
issued a final refusal on the ground that the mark is "merely
descriptive and generic." Applicant responded by filing a notice
of appeal followed by its appeal brief. Recognizing that his
final was premature in view of applicant’s Section 2(f) claim, the
Examining Attorney requested a remand of the application in order
to properly issue a non-final action on the new issue. The Board
granted the remand, and the Examining Attorney subsequently issued
a new, non-final action on the basis of the insufficiency of the
evidence in support of applicant's Section 2(f) claim. Applicant
did not respond to the merits of the Office action but instead
filed a request with the Board to resume the appeal. By this
request, applicant made it clear that it did not wish to pursue
its claim of distinctiveness under Section 2(f) and that it wished
to go forward on the appeal based solely on the issue of whether
Ser No. 75/300,898
3
the mark is merely descriptive under Section 2(e)(1) of the Act.2
The Board granted applicant's request, noting that the appeal
would proceed solely on the issue of descriptiveness.3 The
Examining Attorney subsequently filed his appeal brief on that
issue.4 An oral hearing was not requested.
Thus, the only question on appeal is whether the mark is
merely descriptive of applicant's services.
The Examining Attorney contends in this regard that the
wording VIRTUAL FIRE & RESCUE EXPO, when considered in relation to
the identified goods, describes "the nature or characteristics
2 Specifically, applicant stated that: "...[a]pplicant wishes to move
forward with the Appeal based on the refusal under Section 2(e)(1) of
the Trademark Act. The issue of distinctiveness under Section 2(f) of
the Trademark Act is not before the Board and the Applicant does not
wish to have the Board consider such an issue at this time....Applicant
respectfully requests that the Appeal move forward based on [the Section
2(e)(1)] ground alone."
3 The Examining Attorney had included evidence with his Office action
following the remand consisting of dictionary definitions for "virtual,"
definitions of the terms "expo" and "exposition," articles taken from
the NEXIS database showing the word "virtual" used with either "expo,"
"show" or "exhibition," and Internet references to the phrase "virtual
expo." This evidence was also discussed and/or referenced by the
Examining Attorney in his appeal brief. Because applicant subsequently
withdrew its Section 2(f) claim and consequently did not respond to that
Office action on the merits, with the exception of the dictionary
definitions of which the Board can take judicial notice, none of that
evidence will be considered.
4 Although the Board, on October 3, 2000, granted applicant's request
for an extension of time to file a reply brief, no reply brief was
filed.
Ser No. 75/300,898
4
of the service and its subject matter." The Examining Attorney
maintains that the terms VIRTUAL and EXPO describe the nature of
the service; that the services involve an exposition that takes
place on a computer network; and that the phrase FIRE & RESCUE
describes the subject matter of the workshops that are part of the
exposition. In support of his position, the Examining Attorney
has relied on entries from general and technical dictionaries,
third-party registrations, lists of Internet search results,
portions of selected websites, excerpts of articles from the NEXIS
computer database, and the use of the mark in applicant's
specimens.
Applicant states in its brief that the mark is not
descriptive, but devotes virtually its entire argument to the
claim that the mark is not generic for its services. Applicant
argues that while the term as a whole "may suggest" its services,
"the mark cannot be generic since the services provided do not
actually rescue people, but deal with apparatus or means for
rescuing people." Applicant admits that "the genus of services at
issue is fire and rescue" (brief p.3) and that its mark "is
plainly about 'fire and rescue.'" (Brief p.4). According to
applicant, its services "seek to educate and teach the public the
proper techniques involved in fire and rescue procedures, as well
as describing and presenting devices used for such purposes."
(Brief p.2). Applicant maintains, however, that the Examining
Ser No. 75/300,898
5
Attorney has not "met his burden of showing" that the mark "is
generic" for the services. Applicant relies on five third-party
registrations containing the phrase "FIRE & RESCUE" and eight
third-party registrations which include the word "EXPO" in the
marks to support its claim that its own mark is not "generic" for
the identified services.5
As indicated earlier in this decision, and in accordance with
the applicant’s express request, the only issue to be decided in
this appeal is whether the Examining Attorney has met his burden
of showing that applicant’s mark is merely descriptive of its
services under Section 2(e)(1) of the Trademark Act. Any issues
concerning the acquired distinctiveness or genericness of
applicant's mark are not before us on appeal and will not be
decided or discussed herein. Thus, we turn our attention to the
Section 2(e)(1) issue.
A term is merely descriptive within the meaning of Section
2(e)(1) if it immediately conveys knowledge of the ingredients,
qualities, or characteristics of the goods or services with which
it is used. In re Gyulay, 820 F.2d 1216, 3 USPQ2d 1009 (Fed. Cir.
1987). Moreover, the question of whether a particular term is
merely descriptive must be determined not in the abstract, but in
5 None of these third-party registrations is properly of record.
Nevertheless, the Examining Attorney has stated that he does not object
to the evidence and, moreover, he addressed the evidence on the merits.
Accordingly, we have considered this evidence for whatever probative
value it may have.
Ser No. 75/300,898
6
relation to the goods or services for which registration is
sought. See In re Engineering Systems Corp., 2 USPQ2d 1075 (TTAB
1986).
The evidence made of record in this case is strongly
persuasive that the phrase VIRTUAL FIRE & RESCUE EXPO, when
applied to applicant’s services, immediately and without
conjecture, describes the nature of applicant’s services as well
as the subject matter and/or intended audience for those services.
The dictionary definitions submitted by the Examining Attorney and
the third-party registrations submitted by both applicant and the
Examining Attorney, illustrate the descriptive meaning of the word
"expo." One such dictionary entry defines "expo" as "any
exhibition or show" and refers to an "annual computer expo" as an
example of such an exhibition. The services identified in a
number of the third-party registrations for marks containing EXPO
(such as GOLFERS' EXPO; WEB EXPO; ELECTRONIC ENTERTAINMENT EXPO;
and BOOKEXPO AMERICA) indicate that educational programs and
activities for attendees, such as workshops, clinics and
conferences in a particular industry are typical of the services
offered at an expo. It is also noted that each of the EXPO marks
for those types of services issued on the Supplemental Register
and with a disclaimer of the term EXPO. While third-party
registrations are not conclusive on the question of
descriptiveness, if nothing else, we can see that the word "expo"
Ser No. 75/300,898
7
in the context of services such as those of applicant has been
treated consistently by the Office as, essentially, an
unregistrable term.
Moreover, the word VIRTUAL in applicant’s mark describes the
format of the exposition. Where traditionally, an expo and its
associated workshops would take place at a brick and mortar
facility, technology has made it possible to "attend" the
exhibition by accessing the Internet. As indicated in applicant's
description of services and as described in its specimens,
applicant's expo is conducted, "[e]tirely on the Internet." The
dictionary listing submitted by the Examining Attorney defines
VIRTUAL as "[n]ot real; a computer representation of something
that is real"6 and as "...the computer-enabled representation or
simulation of an action, transaction, object or state."7 We note,
for example, that a "Virtual Classroom" in that same dictionary is
described as "[a] learning environment in which students and
teachers are connected and interact by means of teleconferencing
or videoconferencing software, e-mail, and/or chat rooms." Thus,
in the context of applicant’s services, the word VIRTUAL simply
means that applicant's expo workshops are conducted online rather
than at a physical facility. See In re Styleclick.com Inc., __
6 Webster's New World Dictionary of Computer Terms. (7th ed.)
7 Official Internet Dictionary A Comprehensive Reference for
Professionals. (1993).
Ser No. 75/300,898
8
USPQ2d__ , Serial No. 75/459,912 (TTAB February 12, 2001)[VIRTUAL
FASHION is merely descriptive when used in connection with
electronic retailing services via the Internet featuring apparel,
fashion, accessories, personal care items, jewelry and cosmetics].
In addition, there is no question that FIRE & RESCUE directly
describes the subject matter and/or audience for applicant's EXPO.
Applicant admits that its "mark...is plainly about 'fire and
rescue'," and the evidence of record makes it clear that "fire and
rescue" identifies both a service and a class of service
providers. In this regard, the Examining Attorney points to the
use of "fire and rescue" in applicant's recitation of services as
describing the field in which applicant's workshops are offered,
and the Internet and NEXIS references which show that numerous
organizations, often in the nature of local or community service
agencies, use "fire and rescue" in their names. As can be seen
from the following examples, the descriptive nature of this use is
obvious: "COUNTY AGENCY: Department of Fire and Rescue Services";
"Stamford Fire & Rescue Department"; "Montgomery County Fire and
Rescue Services"; "Darlington Fire and Rescue Brigade"; and
"Catoosa County Fire and Rescue Department." In addition, the
Internet articles describe the capabilities of "fire and rescue"
departments and the operations they perform. Other NEXIS
references submitted by the Examining Attorney demonstrate that
"fire and rescue" refers to the industry itself or to industry
Ser No. 75/300,898
9
members. Examples of those articles appear below. (Emphasis
added).
While in many careers, the term professional implies
compensation, this is not so within the fire and rescue
professions. The Virginian-Pilot (Norfolk) (May 17, 1996).
Dyer said that nationwide, the fire and rescue industry made
a philosophical shift 15 to 20 years ago that added minutes
to response times. The Kansas City Star (April 24, 1997).
Finally, the descriptive meaning of "fire and rescue" in the
context of the services is confirmed by applicant’s own specimens
which contain the statement, "Bring the Worldwide Fire and Rescue
Community to your Department...National Fire & Rescue and WCES
introduce the industry’s first Online trade show."8
Thus, the evidence clearly shows that the phrase VIRTUAL FIRE
& RESCUE EXPO, when considered in its entirety, is merely
descriptive of applicant's services. The relevant purchasers of
applicant’s services, whether they are the fire and rescue
industry, or interested members of the community, would, without
the exercise of any imagination, immediately understand the phrase
to mean that applicant is providing online workshops in the fire
and rescue field.
Decision: The refusal to register is affirmed.
8 Applicant's third-party registrations incorporating "fire" and/or
"rescue" are not persuasive of a different result. In each of the
identified registrations, the "fire" and "rescue" terms have been
disclaimed. Applicant has also relied on a pending application which is
of no probative value.