Friday, January 27, 2006

TTAB Finds "MERCHANDISER" Descriptive of a Newspaper, Affirms Disclaimer Requirement

In a decision that will likely not make the front pages, the Board affirmed a PTO requirement that Applicant disclaim the word MERCHANDISER in the mark shown below for "newspapers primarily featuring classified advertisements and news articles" (NEWSPAPERS disclaimed). In re Advertising Marketing Services, Inc., Serial No. 76554285 (January 12, 2006) [not citable].

Examining Attorney Michael Webster argued that "Applicant's newspaper is a marketing newspaper containing ads and articles from MERCHANDISERS advertising their goods or services. The entire subject of the newspaper is the MERCHANDISERS who advertise in the paper."

Applicant countered by asserting that "MERCHANDISER is an example of personification; or the attribution of personal qualities to an inanimate object. A prospective purchaser upon seeing the term in connection with a newspaper containing an amalgamation of classified advertisements and news stories would have to use imagination and a multi-step reasoning process to discern what MERCHANDISER means. Consequently, the term is suggestive and not descriptive."

Applicant submitted more than 100 declarations from persons who received or advertised in the newspaper, each stating that the declarant was "familiar with the term MERCHANDISER ... defined as a 'businessperson engaged in retail trade,'" and was "not aware of any definition of the term MERCHANDISER that means 'a newspaper primarily featuring classified advertisements and news articles.'"

The Board, however, was not buying what Applicant was selling. It noted that Applicant's magazine "clearly contains advertisements from merchandisers."

"If a newspaper featured advertisers from plumbers, the word 'plumbers' would be descriptive. Applicant's term 'merchandisers' [sic], which covers a broader class of businesspeople, is similarly descriptive."

The Examining Attorney submitted three third-party registrations under Section 2(f) or on the Supplemental Register for marks including the term "Merchandiser" for publications: ARMY/NAVY STORE & OUTDOOR MERCHANDISER, AUTOMATIC MERCHANDISER, and RETAIL MERCHANDISER. Those registrations provided "some support" for the PTO's descriptiveness argument.

The Board concluded that:

"The term 'Merchandisers' describes applicant's advertisers, i.e., businesspeople engaged in retail trade. It also describes a feature of applicant's newspapers to the extent that it describes the subject matter of applicant's magazines inasmuch as applicant's magazines consist primarily of advertisements of merchandisers."

"When we view applicant's mark as a whole, the term MERCHANDISER NEWSPAPERS in the mark merely describes that applicant's newspapers contain advertisements of local merchants or merchandisers. As a result the term MERCHANDISER is merely descriptive...."

The Board allowed Applicant thirty days within which to submit an appropriate disclaimer, in which case the refusal to register will be reversed.

TTABlog comment: I think this was a close call, and the benefit of the doubt should have gone to Applicant. If the word had been the plural, "Merchandisers," then I can see it referring to the advertisers, but the singular makes me stop and think.

Text Copyright John L. Welch 2006.


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