Style-click.com, Inc.

Trademark Trial and Appeal Board

Feb 12, 2001

No. 75459912 (T.T.A.B. Feb. 12, 2001)

2/12/01
Paper No. 11
JQ
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Styleclick.com Inc.
________
Serial No. 75/459,912
_______
George W. Hoover of Blakely, Sokoloff, Taylor & Zafman for
applicant.
Heather D. Thompson, Trademark Examining Attorney, Law
Office 103 (Michael A. Szoke, Managing Attorney).
_______
Before Cissel, Seeherman and Quinn, Administrative
Trademark Judges.
Opinion by Quinn, Administrative Trademark Judge:
An application has been filed by Styleclick.com Inc.
to register the mark VIRTUAL FASHION for, as amended,
“computer software for consumer use in shopping via a
global computer network and computer software for providing
fashion, beauty and shopping advice” (in International
Class 9) and “electronic retailing services via a global
computer network featuring apparel, fashion, accessories,
THIS DISPOSITION
IS CITABLE AS PRECEDENT
OF THE T.T.A.B.
Ser No. 75/459,912
2
personal care items, jewelry and cosmetics” (in
International Class 35).1
The Trademark Examining Attorney has refused
registration under Section 2(e)(1) of the Trademark Act on
the ground that applicant’s mark, if used in connection
with applicant’s goods and/or services, would be merely
descriptive of them.
When the refusal was made final, applicant appealed.
Applicant and the Examining Attorney have filed briefs. An
oral hearing was not requested.
Applicant contends that its mark “may have a shade of
descriptive meaning,” but that “this meaning is only enough
to trigger the suggestive process and does not provide an
ordinary purchaser with a ready understanding of what the
goods and services are.” (brief, p. 4) Applicant goes on
to assert that “[g]ranted, virtual things are often created
by computerized or electronic means, but this does not make
the word ‘virtual’ synonymous with ‘computerized’ or
‘electronic.’” (brief, p. 4) With respect to the NEXIS
evidence submitted by the Examining Attorney, applicant
1 Application Serial No. 75/459,912, filed March 31, 1998, based
on applicant’s assertion of a bona fide intention to use the mark
in commerce. The original application was filed in the name of
MonaCad, Inc. The records of the Assignment Branch of the Office
reflect recordation of applicant’s change of name to
Styleclick.com Inc.
Ser No. 75/459,912
3
responds as follows:
The stories that were retrieved do
indeed show that “virtual store” is a
relatively commonly-used term to
describe online shopping facilities,
including those that deal in fashion
products. This conforms to the
accepted meaning of the word “virtual”
since a virtual store site provides the
consumer with the features of a
physical “brick and mortar” store
without actually being a store. This,
however, has no relevance to the issue
of whether or not applicant’s mark is
descriptive. To the extent that
Applicant’s goods and services relate
to “fashion,” the fashions actually
exist in reality. Just because fashion
products may be offered for sale in a
“virtual store,” that does not mean
that the products themselves are aptly
described as “virtual.” For example,
Amazon.com may be regarded as a virtual
bookstore, but it does not sell
“virtual books,” nor would “virtual
book” be properly considered as merely
descriptive of the goods or services
provided by Amazon.com. (brief, p. 4)
In arguing that the refusal should be reversed, applicant
relies on several third-party registrations of marks issued
by the Office which, in applicant’s view, are similarly
constructed to applicant’s mark, that is, the term
“virtual” followed by a word that is descriptive of the
goods and/or services.2 At most, applicant contends, it
2 Attached to applicant’s June 7, 1999 response are copies of
several third-party registrations retrieved from the database of
the Office. Applicant’s appeal brief shows a list of some of
these registrations. The list includes, however, additional
Ser No. 75/459,912
4
should only be required to disclaim the word “fashion.” In
addition to the third-party registrations, applicant
submitted a copy of its Web page.
The Examining Attorney submits that the term “virtual”
has become synonymous with computer-based and/or Internet-
delivered goods and services. According to the Examining
Attorney, the mark sought to be registered conveys the fact
that applicant intends to provide fashion information and
fashion shopping via software and retail websites, accessed
primarily by computers. The Examining Attorney contends
that the term “virtual” is analogous to the prefix letter
“E” in modern usage, referring to electronic or computer-
based goods and/or services. In support of the refusal,
the Examining Attorney introduced excerpts retrieved from
the NEXIS database showing uses of the term “virtual
fashion show.” Also of record are dictionary listings for
the terms “virtual” and “fashion.”
third-party applications, copies of which were not previously
submitted. The Examining Attorney, in her brief, made no mention
whatsoever regarding the third-party evidence and applicant’s
argument relating thereto. See: Trademark Trial and Appeal
Board Manual of Procedure (TBMP), §1207.03.
Although the registrations are properly of record and have been
considered, the additional third-party applications listed in
applicant’s appeal brief have not been considered in reaching our
decision. In re Duofold Inc., 184 USPQ 638, 640 (TTAB 1974).
Even if the evidence were considered, the same result would be
reached in this appeal inasmuch as the evidence, at best, is
merely cumulative in nature.
Ser No. 75/459,912
5
It is well settled that a term is considered to be
merely descriptive of goods and/or services, within the
meaning of Section 2(e)(1) of the Trademark Act, if it
immediately describes an ingredient, quality,
characteristic or feature thereof or if it directly conveys
information regarding the nature, function, purpose or use
of the goods and/or services. In re Abcor Development
Corp., 588 F.2d 811, 200 USPQ 215, 217-18 (CCPA 1978). It
is not necessary that a term describe all of the properties
or functions of the goods and/or services in order for it
to be considered merely descriptive thereof; rather, it is
sufficient if the term describes a significant attribute or
feature about them. Moreover, whether a term is merely
descriptive is determined not in the abstract, but in
relation to the goods and/or services for which
registration is sought, the context in which it is being
used on or in connection with those goods and/or services,
and the possible significance that the term would have to
the average purchaser of the goods and/or services because
of the manner of its use. In re Bright-Crest, Ltd., 204
USPQ 591, 593 (TTAB 1979). Accordingly, whether consumers
could guess what the product and/or service is from
consideration of the mark alone is not the test. In re
American Greetings Corp., 226 USPQ 365, 366 (TTAB 1985).
Ser No. 75/459,912
6
The dictionary evidence shows the term “virtual”
defined as follows: “Not real. The term virtual is
popular among computer scientists and is used in a wide
variety of situations. In general, it distinguishes
something that is merely conceptual from something that has
physical reality.” PC Webopaedia (1998). We take judicial
notice of these other listings for the term: “Not
physical. Exists in the software only or in the
imagination of the machine.” net.speak—the internet
dictionary (1994); “Used generally to describe something
without a physical presence or is not what it appears to
be. Virtual reality, for example, is made up of computer-
generated images and sounds rather than actual objects.”
The Computing Dictionary (1996); and “conceptual rather
than actual, but possessing the essential characteristics
of a real function.” The Illustrated Dictionary of
Microcomputers (3rd ed. 1990). The term “fashion” is
defined as “the prevailing style or custom, as in dress or
behavior; something, such as a garment, that is in the
current mode.” The American Heritage Dictionary of the
English Language (3rd ed. 1992).
The Examining Attorney also introduced excerpts
retrieved from the NEXIS database which show that one can
access the Internet to buy clothing and/or to get
Ser No. 75/459,912
7
information or advice regarding fashion. In this
connection, the articles also document the emergence of
“virtual stores” on Web sites which allow Internet surfers
to purchase on-line just about every product (including
clothing) or service imaginable. In the words of one
article, “[n]ow, every household that has an Internet
connection is a fashion store.” The New York Times
(February 8, 1999). The record also includes the following
examples: “...the growing number of ‘virtual fashion
malls’ and apparel manufacturer websites...” Apparel
Industry Magazine (August 1998); and several uses of
“virtual fashion show,” such as “[v]irtual fashion shows
featuring the very latest styles for men and women can be
found at dozens of sites” (CNBC News transcript (September
20, 1997)) and “a new video-imaging system, which allows
the viewer to watch a virtual fashion show” (WWD (February
18, 1997)). Other uses include the following:
Next, using footage of the original
Mugler dress as a reference, the exact
cut of the garment and fabric
characteristics were re-created in 3D,
then fitted to the virtual model. That
same attention to detail was also
applied to the virtual fashion show
set...
(Computer Graphics World, July 1998)
From computer-assisted design on
textiles to using computers for sales
to “staging” virtual fashion shows in
Ser No. 75/459,912
8
the way Mr. Lang has done, fashion has
been slow on the uptake.
(The New York Times, April 1, 1998)
Another article refers to applicant’s software as follows:
“That includes the $70 million renovation of its showroom
at Marina alla Scala in Milan, with high-tech visual
displays, retail space and ‘virtual fashion’ computers
throughout its showroom.” (WWD, June 12, 1997).
We find that the term VIRTUAL FASHION, when used in
connection with applicant’s goods and services, immediately
describes, without conjecture or speculation, a significant
characteristic or feature of the goods and/or services,
namely, that they involve retrieving, via computers and/or
the Internet, fashion information and/or shopping for
fashions in a virtual sense, that is, with the enhancements
offered by virtual reality. The NEXIS evidence indicates
that people have come to recognize that the term “virtual,”
when used in connection with computers and related goods
and services, means that someone at a computer is able to
encounter certain things in a non-physical or “virtual”
manner. In this sense, the term VIRTUAL FASHION describes
applicant’s identified goods and/or services as allowing
individuals using computers to encounter, in a virtual
manner, things relating to fashion, without physically
touching any fashion items. Consumers of applicant’s
Ser No. 75/459,912
9
particular goods and/or services would immediately
understand the term VIRTUAL FASHION as conveying this
information; there is nothing in the term VIRTUAL FASHION
which, in the context of applicant’s particular goods
and/or services, would be ambiguous, incongruous or
susceptible to any other plausible meaning.
We have reviewed the numerous third-party
registrations of record which issued on the Principal
Register. The marks include the following: VIRTUAL CAR
(“CAR” disclaimed) for “rental and leasing services, and
reservation services for the rental and leasing of
vehicles”; VIRTUAL ROADSHOW (“ROADSHOW” disclaimed) for
“dissemination of advertising for others via an on-line
electronic communications network, and advertising
services, namely, providing roadshows for public stock and
bond offerings on global computer networks”; VIRTUAL
EMPORIUM (“EMPORIUM” disclaimed) for “on-line ordering
services featuring general merchandise”; VIRTUAL FURNITURE
WAREHOUSE (“FURNITURE WAREHOUSE” disclaimed) for “retail
store and video furniture catalog services whereby home
furnishings available for purchase are displayed by
computer for purchase by the consumer”; VIRTUAL WINE CELLAR
for “dissemination to particular customers, by electronic
communications networks, information concerning wine stored
Ser No. 75/459,912
10
by applicant for the particular customer”; VIRTUAL
CONCIERGE for “electronic audio-visual display kiosk which
provides access to information on entertainment, sports,
and athletic event information, ticketing and seating
availability via keypads and/or touch screens”; and VIRTUAL
SHOPPING CENTER (“SHOPPING CENTER” disclaimed) for “audio
and video teleconferencing services, namely, providing
interactive shopping services conducted by means of an
interactive video teleconferencing apparatus, whereby the
consumer and a representative of a goods or services
provider at a site remote from the consumer are placed into
contact through the video teleconferencing apparatus.”
These registrations offer little help in making a
determination of the merits in this appeal. While uniform
treatment under the Trademark Act is an administrative
goal, our task in this appeal is to determine, based on the
record before us, whether applicant’s mark is merely
descriptive. As often noted by the Board, each case must
be decided on its own merits. We are not privy to the
records in the files of the cited registrations and,
moreover, the determination of registrability of particular
marks by the Trademark Examining Groups cannot control the
result in another case involving a different mark for
different goods and/or services. See: In re Nett Designs,
Ser No. 75/459,912
11
Inc., ___USPQ2d___, Appeal No. 00-1075, (Fed. Cir. January
9, 2001)[“Even if some prior registrations had some
characteristics similar to [appliant’s] application, the
PTO’s allowance of such prior registrations does not bind
the Board or this court.”].
Notwithstanding the above, it certainly does appear
that the Office has in the past not always taken the same
position with respect to marks of the nature of applicant’s
as the Examining Attorney urges in the present case.
Office practice has resulted in inconsistent treatment of
“VIRTUAL” type marks which are similar in nature to
applicant’s. In trying to understand the situation, we
would make the point that, with each passing day, computers
and the Internet becomes more pervasive in American daily
life. Many words, such as “virtual reality,” “virtual
store” and “e-mail” have made their way into the general
language. See: In re Styleclick.com Inc., ___USPQ2d___,
Ser. No. 75/459,910, (TTAB November 29, 2000)[E FASHION is
merely descriptive for the same goods and services as those
identified in the present application]; Continental
Airlines Inc. v. United Air Lines Inc., 53 USPQ2d 1385
(TTAB 1999)[E-TICKET is generic for computerized
reservation and ticketing of transportation services]; and
In re Putnam Publishing Co., 39 USPQ2d 2021 (TTAB
Ser No. 75/459,912
12
1996)[FOOD & BEVERAGE ONLINE is merely descriptive when
used in connection with a news and information service
updated daily for the food processing industry, contained
in a database]. We note that most of the third-party
registrations relied upon by applicant were issued in 1997
or 1998, with one issuing in 1999.3 While, by most
standards, one to three years in the past would be viewed
as “recent,” a year or two is an eternity in computer, or
“Internet,” time, given the rapid advancement of computers
and the Internet into every facet of daily life. Only
“recently,” the computer or Internet meaning of “virtual”
may have been known only by those few who were then using
computers or accessing the Internet. We have no doubt that
in the year 2001, the meaning of the term “virtual” is
commonly recognized and understood by most people as
meaning something that is merely conceptual rather than
something that has physical reality, especially in
connection with things encountered via computers and the
Internet.4 See: In re Cryomedical Sciences Inc., 32 USPQ2d
3 We also note that some of the underlying applications were
filed two years or more before the registration date. The lag
time between the initial examination of the application and the
issuance of the registration may have contributed to this
situation.
4 In this connection, we analogize to another situation
influenced by the proliferation of computers. At one time, the
Office accepted “computer programs” as a sufficient
identification of goods in International Class 9. Over time,
Ser No. 75/459,912
13
1377 (TTAB 1994)[SMARTPROBE is merely descriptive for
cryosurgical probes having electronic or microprocessor
components due to meaning of “smart” as a computer term].
In sum, “virtual,” when used as it is in applicant’s
mark, has a generally recognized meaning in terms of
computers and the Internet. When this non-source-
identifying prefix is coupled with the descriptive word
“fashion,” the mark VIRTUAL FASHION, as a whole, is merely
descriptive for applicant’s goods and/or services. That
applicant may be the first or only entity using VIRTUAL
FASHION is not dispositive. See: In re Central Sprinkler
Co., 49 USPQ2d 1194 (TTAB 1998).
The intent of Section 2(e)(1) is to protect the
competitive needs of others, that is, “descriptive words
must be left free for public use.” In re Colonial Stores,
Inc., 394 F.2d 549, 157 USPQ 382, 383 (CCPA 1968). As the
Internet continues to grow, merely descriptive “virtual”
terms for Internet-related goods and/or services must be
kept available for competitive use by others.
however, this identification was rendered indefinite “[d]ue to
the proliferation of computer programs over recent years and the
degree of specialization that these programs have.” Trademark
Manual of Examining Procedure, §804.03(b). Now, any
identification of goods for computer programs or comparable goods
“must be sufficiently specific to permit determinations with
respect to likelihood of confusion.”
Ser No. 75/459,912
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In view of the above, we conclude that VIRTUAL
FASHION, if used in connection with “computer software for
consumer use in shopping via a global computer network and
computer software for providing fashion, beauty and
shopping advice” and “electronic retailing services via a
global computer network featuring apparel, fashion,
accessories, personal care items, jewelry and cosmetics,”
would be merely descriptive under Section 2(e)(1) of the
Trademark Act.
Decision: The refusal to register is affirmed.