TTAB - Trademark Trial and Appeal Board - *1 IN RE WAVERLY, INC. Serial No. 74/053,650 June 10, 1993

Trademark Trial and Appeal Board

Patent and Trademark Office (P.T.O.)



Serial No. 74/053,650

June 10, 1993

Hearing: April 22, 1993


James E. Shlesinger of the law firm of Shlesinger, Arkwright & Garvey for applicant.



Teresa Rupp



Trademark Senior Attorney



Law Office 15



(Paul Fahrenkopf, Managing Attorney)



Before Rooney, Cissel and Quinn






Opinion by Quinn






 An application has been filed by Waverly, Inc. to register MEDICINE for a  "journal published periodically." [FN1] Applicant seeks registration on the Principal Register under the provisions of Section 2(f) of the Trademark Act, 15 U.S.C. § 1052(f).



 The Trademark Senior Attorney refused registration under Section 2(e)(1) of the Act, 15 U.S.C. § 1052(e)(1), on the ground that the matter sought to be registered is generic and, therefore, there is no amount of evidence of acquired distinctiveness which could demonstrate registrability. The Senior Attorney goes on to state, however, that in the event the term MEDICINE is not generic for journals, then applicant has submitted sufficient evidence to show acquired distinctiveness.



 Applicant has appealed. Applicant and the Examining Attorney have filed briefs. An oral hearing was held pursuant to applicant's request.



 The arguments for each side in this case can be summarized easily. The Senior Attorney contends, on the one hand, that "the term 'medicine' is the name of a field of study and therefore is generic of the class of publication in that field." (brief, p. 10). The Senior Attorney identifies the class of publication as "medical journals." The Senior Attorney does concede, as noted above, that acquired distinctiveness has been shown in the event MEDICINE is found to be not generic. Applicant argues, on the other hand, that the Office has not met its burden in showing genericness and that the record establishes acquired distinctiveness by virtue of seventy years of substantially exclusive and continuous use and public recognition of MEDICINE as a mark for applicant's journal.



 The evidence submitted in support of the final refusal includes a definition from The Random House Dictionary of the English Language (2d ed.) which defines "medical" as "of or pertaining to the science or practice of medicine." The Senior Attorney also relied upon excerpts retrieved from Mead Data Central's NEXIS data base showing uses of the terms "medical journal(s)," "emergency-medicine journals," "tropical medicine journals," and "sports medicine journals." Also submitted were NEXIS excerpts showing stories wherein the following publications were cited: Journal of the New York Academy of Medicine, New England Journal of Medicine, Military Medicine, Annals of Internal Medicine, Missouri Medicine, The American Journal of Medicine, Archives of Internal Medicine, British Journal of Hospital Medicine, and Academic Medicine. The Senior Attorney further relied upon excerpts from a publication titled Books In Print 1988-89 which allegedly show that "medicine is in fact a recognized subject for publications" (February 26, 1991 Office action, p. 2).



  *2 Applicant's original application papers included a claim of acquired distinctiveness based on substantially exclusive and continuous use of MEDICINE as a trademark for journals since 1922. The specimen of record is a cover of one of applicant's journals which shows the mark prominently displayed in the format reproduced below.





The specimen also includes a table of contents page which shows the mark displayed in the same format. On that page the contents of applicant's journals are described in general terms as follows: "Analytical Reviews of Internal Medicine, Dermatology, Neurology, Pediatrics, and Psychiatry." In response to the Senior Attorney's contention that the prima facie claim of acquired distinctiveness was insufficient and that MEDICINE was incapable of registration, applicant submitted the affidavit (dated January 10, 1991) of Alma Wills, president of applicant's journal division. Ms.  Wills indicates that applicant's journal was first published in 1922 under the designation MEDICINE and that since that date, through seventy volumes, the mark MEDICINE "has become distinctive of our product by virtue of extensive and continuous use over a sixty-nine year period." Ms. Wills states that for the period 1979- 1989, paid subscribers of applicant's journal totaled 82,359, an average of 7,487 subscribers per year. Applicant has spent money in subscription sales promotion and advertising sales promotion for the publication. Such promotion has occurred by way of direct mail, medical association meetings and advertisements in catalogs. For the period 1979-1989, applicant's promotional expenditures were approximately $128,000. Attached to the Wills affidavit are exhibits 1-7 which are described as sample unsolicited letters from customers and others. The letters allegedly show that the writers recognize MEDICINE as a mark for a journal originating from applicant.



 Applicant also relied upon excerpts from the Official Gazette which show recent issuance of registrations on the Supplemental Register for marks such as ONCOLOGY, PSYCHIATRY DIGEST, SOAP OPERA MAGAZINE, and BOAT JOURNAL, all for various types of publications. Applicant argued that this evidence shows that descriptive titles of publications are registrable and that the Office has taken inconsistent views in this area. For those reasons, applicant contends, a doubt is raised about the registrability of MEDICINE, and that doubt must be resolved in favor of applicant and publication of the mark sought to be registered.



 The present case brings to mind language found in the case of In re Distribution Codes, Inc., 199 USPQ 508 (TTAB 1978) wherein the Board opined that "[t]itles of publications present a unique problem in trademark law and specifically when we are dealing with the issue of whether a mark is merely descriptive of the goods." Id. at 510. That statement is no less true when the issue involves, as it does in this case, genericness. Nonetheless, the courts and this Board have recognized that titles of publications are not considered any differently from trademarks for other products; in these cases "we apply a test as close as possible to the tests of descriptiveness or validity applied to a mark used for any goods or services." Id.; and In re Gracious Lady Service, Inc., 175 USPQ 380, 381 (TTAB1972). See also: Jenkins Publishing Company v. Metalworking Publishing Company, Inc., 315 F.2d 955, 137 USPQ 358, 359 (CCPA1963); and Scholastic Inc. v. Macmillan Inc., 650 F.Supp. 866, 2 USPQ2d 1191, 1194 (S.D.N.Y.1987). The chief difficulty in categorizing publications comes about because "unlike most goods whose appearance will convey their nature, periodicals must depend principally on their titles to convey their character. Courts have been reluctant to find a magazine title generic, perhaps in part because the magazines in such cases were not literally the class title designated but were about that class." CES Publishing Corp. v. St. Regis Publications, Inc., 531 F.2d 11, 188 USPQ 612, 615 (2d Cir.1975) (emphasis in original); see also Technical Publishing Company v. Lebhar-Friedman, Inc., 729 F.2d 1136, 222 USPQ 839, 841 (7th Cir.1984) [recognizing that since magazine titles are primary means of conveying contents of magazines, "many magazine titles fall near the line between generic and descriptive marks"].



  *3 The Office has the burden of showing that a mark is generic and, thus, incapable of registration. In re Merrill Lynch, Pierce, Fenner and Smith, Inc., 828 F.2d 1567, 4 USPQ2d 1141 (Fed.Cir.1987). The critical issue in genericness cases such as this one is whether members of the relevant public primarily use or understand the term sought to be registered to refer to the genus (category or class) of goods or services in question. See: In re Women's Publishing Co. Inc., 23 USPQ2d 1876, 1877 (TTAB1992). Our primary reviewing court has set forth a two-step inquiry to determine whether a mark is generic: First, what is the genus (category or class) of goods or services at issue? Second, is the term sought to be registered or retained on the register understood by the relevant public primarily to refer to that genus (category or class) of goods or services? H. Marvin Ginn Corporation v. International Association of Fire Chiefs, Inc., 782 F.2d 987, 228 USPQ 528, 530 (Fed.Cir.1986). In the In re H. Marvin Ginn Corporation case the Federal Circuit reviewed prior court decisions involving the genericness and registrability of magazine/publication titles. In doing so the Federal Circuit acknowledged that it is difficult to lay down a general rule and that the approach to this issue must be on a case-by-case basis. In re H. Marvin Ginn Corp., id. at 531. The Court held that FIRE CHIEF, when applied to a magazine directed to the field of fire fighting, was not generic but rather was, at most, descriptive and capable of acquiring distinctiveness. The Court reversed the Board's holding of genericness and the case was remanded to the Board for determination of the issue of acquired distinctiveness.



 In the present case, we employ the same analysis as the Court's:

   First, what is the class of publications or magazines at issue? Second, is the title understood by the relevant public to refer primarily to that class of magazines?

Here, applicant is attempting to register its mark for a "journal published periodically." Applicant and the Examining Attorney agree, quite properly, that the class of publications at issue is "medical journals."



 We thus turn our attention to the critical issue, namely whether members of the relevant public refer to the class of medical journals as "medicine." In deciding this issue, we have reviewed all of the evidence of record, that is, the evidence submitted by the Examining Attorney, as well as by applicant, including the evidence specifically submitted to show acquired distinctiveness. See: In re Pennzoil Products Co., 20 USPQ2d 1753, 1757-58 (TTAB1991). The Examining Attorney, on the one hand, has submitted excerpts from a publication titled Books In Print 1988-89 which show the headings "Medicine", "Medicine-Year Books" and "Medicine-Dictionaries" and listings thereunder of "hardbound books, trade books, paperbound books, textbooks." Applicant, on the other hand, has submitted correspondence from prospective purchasers who appear to use MEDICINE as a source identifier for a journal originating from applicant.



  *4 We find that the most probative evidence touching on purchasers' perceptions of MEDICINE for medical journals is the letters from prospective purchasers or readers who appear to understand the designation MEDICINE as identifying a particular journal published by applicant. We agree with applicant that this evidence tends to show that purchasers perceive MEDICINE as a trademark which has become distinctive of applicant's journals.



 Although there is the recognized field of "medicine", we can discern no probative evidence that the relevant purchasing public primarily uses or understands the term "medicine" to refer to the class of publications known as "medical journals." MEDICINE, although highly descriptive of the subject matter of medical journals, simply does not name the class of publications, the generic name being "medical journals." "Medicine" is not "medical journals." See: American Association for the Advancement of Science v. Hearst Corp., 498 F.Supp. 244, 206 USPQ 605 (D.D.C.1980) [SCIENCE not generic, but only descriptive for a magazine and thus protectible with proof of secondary meaning]; McGraw Hill Publishing Co. v. American Aviation Associates Inc., 117 F.2d 293, 47 USPQ 494 (D.C.Cir.1940) [AVIATION descriptive of magazines--that magazines may be described by their subject matter is too clear to be doubted--but no secondary meaning found and registration held invalid]; and Travel Magazine, Inc. v. Travel Digest, Inc., 191 F.Supp. 830, 128 USPQ 533 (S.D.N.Y.1961) [TRAVEL for magazines is descriptive--material fact question as to secondary meaning]. See generally: 1 J.T. McCarthy, McCarthy on Trademarks and Unfair Competition, § 10.03[3] and [4] (3d ed. 1992); 1 J. Gilson, Trademark Protection and Practice, § 2.02 n. 4 (1992).



 Contrary to the Senior Attorney's argument, we do not believe that the fact that applicant's publication is a medical journal as opposed to a publication for general circulation, although a relevant consideration, mandates a different result in this case. See: In re H. Marvin Ginn, supra [magazine directed to field of fire fighting]; and American Assoc. for the Advancement of Science, supra [SCIENCE is a sophisticated magazine which caters to the scientific community]. We think the fact that applicant's journal is directed to a relatively small, highly sophisticated audience gives credence to the notion that relevant purchasers, such as doctors and medical librarians, are likely to view MEDICINE as a trademark and not as a generic term for medical journals. This is borne out by the letters accompanying Ms. Wills' affidavit.



 We have reviewed the registrations which applicant has relied upon. Although the registrations were issued on the Supplemental Register (see, for example, ONCOLOGY for medical journals), they do serve to highlight the Office's inconsistent treatment of publication titles and the registrability thereof. The registrations made of record by applicant surely are only the tip of the iceberg in this area, and we have no doubt that many more similar examples from the register easily could have been shown. We believe that language found in a recent Board opinion is equally appropriate in the present case:

    *5 While superficially it may be easy to dismiss these registrations, as we often do, on the basis that the records of those registrations are not before us and that each case must be decided on its own merits, it certainly does appear that the Office has in the past taken a different position with respect to marks of the nature of applicant's. Suffice it to say that Office practice has resulted in inconsistent treatment of magazine titles which are very similar in nature to applicant's.

In re Women's Publishing Co., Inc., supra at 1878.



 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 (CCPA1968). Obviously, generic terms, the ultimate in descriptiveness, likewise must be kept available for use by others, especially competitors. The record in this appeal, as noted above, includes references to publications bearing names such as New England Journal of Medicine, The American Journal of Medicine and Academic Medicine. The titles of these publications and the others cited by the Senior Attorney merely show ordinary uses of "medicine" in a descriptive sense. We do not think that the registration sought by applicant would preclude others in the medical journal publishing industry from using, in the titles of medical journals, the term "Medicine" in an ordinary descriptive sense to convey its descriptive meaning. That is to say, "[applicant's] registration carries with it a presumption of exclusive right, not to any use of the word, but to use of the mark in a trademark sense, i.e., as an indication of origin." Pacific Industries, Inc. v. Minnesota Mining and Manufacturing Co., 425 F.2d 1265, 165 USPQ 631, 632-33 (CCAP1970). See: Field Enterprises Educational Corp. v. Cove Industries, Inc., 297 F.Supp. 989, 161 USPQ 243 (E.D.N.Y.1969) [publisher of WORLD BOOK ENCYCLOPEDIA unable to enjoin use of ILLUSTRATED WORLD ENCYCLOPEDIA--although plaintiff proved secondary meaning, defendant was using the word WORLD in its primary, descriptive sense].



 In concluding our thoughts on this matter, we are reminded of language in In re Distribution Codes, Inc., supra at 511:

   A certain degree of flexibility and an understanding of the commercial realities of both the publishing business and of the business or industry to which a particular publication is directed are very helpful in making the necessarily subjective decision whether a particular title qualifies as a valid trademark. From the publisher's point of view, it is important to select a title, especially for a trade or technical journal, that conveys some idea of the subject matter of the contents; without at least a suggestive title, it would be hard for the publisher to reach and interest the relatively small (as compared to the general population) number of potential subscribers. From the point of view of competitors of the publisher, it is important not to grant, by way of a trademark registration, rights so broad and encompassing as to render unavailable, at least without the threat or possibility of litigation, the most apt or the only appropriate words to describe a journal's contents.

    *6 From the viewpoint of subscribers, we must recognize that there is a need to locate publications of potential professional interest (which tends toward tolerating greater suggestiveness in titles) while, at the same time, permitting competition among publications (which tends toward forbidding proprietary acquisition of titles that would foreclose effective competition by the preemption of the most, or only, effective names) and enabling subscribers to differentiate among publications in the same field (which tends toward protecting names by their registration as marks whenever this is appropriate).

As noted above, the commercial realities of the publishing business in the medical field should be considered. In light of these realities, and when all of the aforementioned competing interests are balanced in this case, we find that the designation MEDICINE for medical journals is not generic, but rather a highly descriptive term which, in applicant's case, has acquired distinctiveness as applied to applicant's medical journals.



 We are aware, of course, of the sometimes thin line of demarcation between a highly descriptive term and a generic term. Although the record herein presents a close case, any doubt on the matter should be resolved in applicant's favor and the mark should be published for purposes of opposition. See: In re Merrill Lynch, Pierce, Fenner, and Smith Inc., supra at 1144; In re Distribution Codes, Inc., supra at 511 ["Our decision is assisted by the fact that we have no information that anyone will be damaged by the registration of the mark but that anyone who would be injured will have an opportunity to file a notice of opposition and to develop a factual record upon which any question of descriptiveness could be adjudicated with more confidence than it can be on the basis of a priori assumptions."]. When the mark is published for opposition, those in the industry can decide for themselves whether or not they believe that registration of MEDICINE for medical journals will inhibit their right to compete with applicant.



 In view of the above, we conclude that the mark MEDICINE, as applied to a journal published periodically, is not generic, but rather merely descriptive. Inasmuch as the Senior Attorney has conceded that applicant submitted sufficient evidence to show acquired distinctiveness under Section 2(f), the mark is registrable on the Principal Register.



 Decision: The refusal of registration is reversed.



L.E. Rooney



R.F. Cissel



T.J. Quinn



Members, Trademark Trial and Appeal Board



FN1. Application Serial No. 74/053,650, filed April 27, 1990, alleging use since 1922.


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