Trademark Trial and Appeal Board
Patent and Trademark Office (P.T.O.)
*1 IN RE VEHICLE INFORMATION NETWORK, INC.
Serial No. 74/288,808
July 8, 1994
Trademark Examining Attorney
Law Office 12
(Deborah S. Cohn, Managing Attorney)
Before Sams, Rice and Cissel
Administrative Trademark Judges
Opinion by Cissel
Administrative Trademark Judge
This is an appeal from the final refusal to register "THE NATION'S LOCAL ELECTRONIC CLASSIFIEDS" on the Principal Register for "computer services namely, information storage and retrieval in the field of vehicles available for sale by dealers and private parties." The application was filed under Section 1(b) of the Lanham Act based on applicant's assertion of its bona fide intention to use the mark in commerce. The refusal to register is based on Section 2(e)(1) of the Act. The Examining Attorney finds that the words sought to be registered merely describe the services with which they are intended to be used.
In support of his position the Examining Attorney made of record a copy of dictionary definitions, from Webster's Third New International Dictionary (1986), of "classified advertisement" as "a single advertisement in a classified advertising section (as of a newspaper)--usu. called classified ad;" and of "classified advertising" as "advertisements grouped by subject usu. appearing under categorical headings in a section of a publication given over to such advertisements and consisting chiefly of descriptive listings in text type." Applicant submitted a copy of a dictionary listing, from Webster's Ninth New Collegiate Dictionary, of "classified" as meaning "divided into classes or placed in a class" and "withheld from general circulation for reasons of national security."
Citing In re MetPath, 223 USPQ 88 (TTAB1984) and In re Bright-Crest Ltd., 204 USPQ 591 (TTAB1979) for the proposition that a mark is merely descriptive if it describes a quality, feature, function or purpose of a service, the Examining Attorney contends that the words sought to be registered are unregistrable because they immediately convey the nature of the service of providing, by electronic means, "local classified advertisements gathered from throughout the nation." (brief, p. 3).
Applicant argues that the words are suggestive, rather than merely descriptive, of its proposed services, and that a multistage reasoning process is required in order to determine from the mark what the characteristics of the service are, in view of the incongruity created by combining the words "NATION'S" and "LOCAL." Applicant also contends that the arbitrary or suggestive nature of "CLASSIFIEDS" in connection with applicant's computer services renders the mark as a whole outside of the proscription of Section 2(e)(1).
There is no serious dispute concerning the legal standard for mere descriptiveness. The question before us is simply whether or not the words "THE NATION'S LOCAL ELECTRONIC CLASSIFIEDS" would immediately convey information about a characteristic or feature of applicant's computer services, which assertedly will consist of the storage and retrieval of information about vehicles for sale.
*2 After careful consideration, we hold that registration of these words for this service is barred by Section 2(e)(1) because reasonable purchasers of applicant's service are likely to understand the words, when they are used in connection with applicant's service, as indicating the nature of applicant's service.
To begin with, we explicitly reject applicant's argument that "CLASSIFIEDS" is arbitrary or suggestive with respect to these services. Although the quoted definitions of "CLASSIFIED ADVERTISING" and "CLASSIFIED ADVERTISEMENT" refer to "publication" and "text type," these terms are not limited by the definitions provided to tangible text published in concrete form on paper in newspapers and magazines. Rather, electronic media, such as computer networks, are clearly within the bounds of these definitions. Applicant does not appear to dispute that it plans to use the mark on advertisements published electronically for access by computer users on their video monitors. Under these circumstances "ELECTRONIC CLASSIFIEDS" clearly describes a feature of such services.
Contrary to applicant's argument, the fact that the proposed service will involve only one category of products, vehicles, does not render the term any less informative. The vehicles advertised by applicant may fall into different categories, e.g., new cars, used pickup trucks, antique autos, offered by dealers or offered by private owners, etc., but even if "vehicles" were to be considered as only one "category" or "classification," the term "ELECTRONIC CLASSIFIEDS" would still describe a computer service providing information about vehicles for sale. We can find no basis for adopting applicant's argument that "classifieds" would be descriptive of advertisements only for products which are not all in the same class or category.
A closer question is presented by the arguable incongruity created by combining the words "NATION'S" and "LOCAL." The Examining Attorney, as noted above, thinks prospective purchasers of applicant's service will understand the term sought to be registered to mean that applicant's service is providing local electronic classified advertisements from a nationwide data base, allowing users to access advertisements for vehicles for sale in particular local areas without having to sort through ads for vehicles located in other localities. Responsive to this contention, applicant's counsel argues that "Applicant does not provide information to consumers regarding any or every specific locality in the country." (brief, pp. 4, 5). We cannot understand how applicant could effectively advertise vehicles for sale without providing at least some indication of where the goods for sale are available, even if only by giving telephone numbers. Area codes convey location, and even the absence of an area code would tell a prospective purchaser that the call would be a local one.
In any event, the question of registrability must be determined, in proceedings before the Board, on the basis of the goods or services as set forth in the application, rather than in reference to the precise nature of the goods or services on or in connection with which the mark is actually used or intended to be used. See: Octocom Systems Inc. v. Houston Computers Services Inc., 918 F.2d 937, 16 USPQ2d 1783 (Fed.Cir.1990); In re Allen Electric and Equipment Co., 458 F.2d 1404, 173 USPQ 689 (CCPA1972); and In re Dataline Corp., 203 USPQ 878 (TTAB1979). We are left to consider whether a reasonable interpretation of the proposed mark would provide information about a feature or characteristic of the services as they are specified in the application. A typical purchaser of applicant's computerized advertising service would not be unreasonable in understanding the words used in the proposed mark to mean that the service consists of providing, on a nationwide basis, classified advertisements for vehicles available in particular local areas. Other possible interpretations could be that as far as local electronic classifieds are concerned, applicant claims to be the only one in the nation providing such services or the favorite or preferred one in the whole nation. None of these possible interpretations involves elaborate reasoning or consideration, and none is consistent with applicant's theory of incongruity. More important is the fact that as to each of these possibilities, the words sought to be registered would be immediately understood to convey information concerning the nature of the services, and the services are encompassed within applicant's identification.
Administrative Trademark Judges, Trademark Trial and Appeal Board