Trademark Trial and Appeal Board
Patent and Trademark Office (P.T.O.)
*1 IN RE KALMBACH PUBLISHING CO.
Serial No. 694,969
September 27, 1989
Allan B. Wheeler for applicant
Henry S. Zak
Trademark Examining Attorney
Law Office 1
(Deborah Cohn, Managing Attorney)
Before Sams, Rooney and Cissel
Opinion by Sams
Kalmbach Publishing Co. has appealed from the final refusal of the Trademark Examining Attorney to permit registration of applicant's mark "RADIO CONTROL BUYERS GUIDE", under the provisions of Section 2(f) of Trademark Act, for magazines. [FN1] The Examining Attorney refused registration, under Section 2(e)(1) of the Trademark Act, on the grounds that applicant's mark "RADIO CONTROL BUYERS GUIDE" is merely descriptive of the magazines to which the mark is applied, has not become distinctive of applicant's magazines through use in commerce, and is, in fact, so highly descriptive, when applied to applicant's magazines, as to be incapable of distinguishing the source of applicant's magazines from that of the like goods of others.
In support of his refusal to register, the Examining Attorney submitted copies of excerpts from stories that appeared in various printed publications and that were located through use of Mead Data's LEXIS/NEXIS computerized information retrieval system. The Examining Attorney attempted to locate in the LEXIS/NEXIS data base all those stories in which the phrases "radio control equipment," "radio control vehicle," or "radio control model" appeared. With the searches so framed, the system located fifteen stories in which the term "radio control equipment" appeared, two stories in which the term "radio control vehicle" appeared and ten stories in which the term "radio control model" appeared. Among the references to "radio control equipment" located by the LEXIS/NEXIS system were several references to "radio control equipment" used in air traffic control, a sort of radio control equipment different from that with which applicant's magazines is concerned. The references to "radio control vehicle" and "radio control model" that were found in stories located by the LEXIS/NEXIS system are clearly references to the sorts of products with which applicant's magazines are concerned.
In support of his position, the Examining Attorney also relies on uses of the term "radio control" found in the copy of applicant's magazine which was made of record in the case. He relies on these references to show that the term "radio control" is a common descriptive designation for a category of scale model automobiles, airplanes, etc. operated by radio control. The Examining Attorney also points to Reese Publishing Co., Inc. v. Hampton Int'l. Communications, Inc. at al., 620 F.2d 8, 205 USPQ 585 (2d Cir.1980) [U.S. District Court's holding of "VIDEO BUYERS GUIDE" as a generic term for a class of magazines upheld on appeal].
Applicant argues that the Examining Attorney's evidence fails to show that any party other than applicant uses the term "RADIO CONTROL BUYERS GUIDE" for any sort of publication and argues that its claimed use of the mark since 1975 is sufficient to support registration under Section 2(f) of Trademark Act. Applicant suggests that the Reese Publishing case should not be persuasive authority here, because it was an inter partes case in which more than one party was using the mark "VIDEO BUYERS GUIDE", a situation different from that disclosed by the present record, where there is no evidence that any other entity has used "RADIO CONTROL BUYERS GUIDE."
*2 The evidence on which the Examining Attorney relies in this case is more than sufficient to establish that "radio control" is the generic term for the subject matter to which applicant's magazines are directed. Even the cover of the edition of applicant's magazine that was made of record refers to applicant's publication as "The Hobbyist's Guide to the World of Radio Control." While the record does not contain any evidence of the generic use of the words "buyers guide," those words are used in their ordinary sense in applicant's asserted mark "RADIO CONTROL BUYERS GUIDE." Simply put, applicant's publication, denominated by the combination of the generic terms "RADIO CONTROL" and "BUYERS GUIDE," is a guide directed to buyers of radio control equipment and accessories. Where nothing is left for speculation or conjecture in an alleged trademark and the compound immediately and unequivocally describes the nature of the goods, a combination of generic terms will result in a term which is, itself, generic. See In re Gould Paper, 834 F.2d 1017, 5 USPQ2d 1110 (Fed.Cir.1987) [the mark "SCREENWIPE" for anti-static cloth for cleaning computer and television screens held generic]. In such circumstances, the absence of evidence that others have used the same combination of generic terms to designate their goods does not gainsay the genericness of the designation.
While we believe the evidence of record is sufficient to establish that "RADIO CONTROL BUYERS GUIDE" is a generic designation for a class of magazines of the type applicant publishes, we find, at the very least, that the evidence of record is not sufficient to establish that the mark "RADIO CONTROL BUYERS GUIDE" has become distinctive through use in commerce. Applicant's statement in its application papers that the mark has been used since 1975, without specific evidence of the extent of the mark's exposure to the purchasing public and of the purchasers' perception of the asserted mark, is insufficient to make out a proper showing, under Section 2(f) of the Trademark Act, that the highly descriptive term "RADIO CONTROL BUYERS GUIDE" has become distinctive of applicant's magazines.
Decision: The refusal to register is affirmed.
J. D. Sams
L. E. Rooney
R. F. Cissel
Members, Trademark Trial and Appeal Board
FN1. Serial No. 694,969, filed November 13, 1987.