BULKY DOCUMENTS
`(exceeds 300 pages)
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`Proceeding] Serial No: 78654480
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`Filed: 07-25-2007
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`Title: App1icant’s Opening Appeal Brief
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`Part 1 of 1
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`Processed by Duane Foster
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
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`Applicant:
`Expo Communications, Inc.
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`Mark:
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`VIDEOPINIONS
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`Serial No.2
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`78/654,480
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`Examiner:
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`Steven Foster
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`Law Office:
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`106
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`BEFORE THE
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`TRADEMARK TRIAL
`AND
`APPEAL BOARD
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`APPLICANT’S OPENING APPEAL BRIEF
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`Applicant appeals the trademark Examining Attomey’s refusal to register the intent-to-
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`use service mark application for VIDEOPINIONS in International Class 35 on the ground that it
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`is merely descriptive within the meaning of § 2(e)(l) of the Trademark Act, 15 U.S.C.
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`§l052(e)(l). Not only does the Examining Attorney bear the burden of proof in showing that the
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`Applicant’s mark is merely descriptive (§C_6, §,g,, In re Merrill, Lynch, Pierce, Fenner, and Smith,
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`I_n§,, 828 F.2d 1567 (Fed. Cir. 1987), In re Grand Forest Holdings Inc., 78 USPQ2d 1152 (TTAB
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`2006)), but any factual doubts are resolved in favor of the Applicant. In re The Stroh Brewery,
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`34 USPQ2d 1796, at *4-5 (TTAB 1995).
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`The issue presented is whether the United States Patent and Trademark Office (“Office”)
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`proffered substantial evidence to show that the Applicant’s mark merely describes the
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`Applicant’s identified services. But folded into this general issue, the Applicant presents, inter
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`alia, several sub-issues for review: (1) whether the Office improperly ignored the identified
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`services claimed by the Applicant in conducting its descriptiveness inquiry; (2) whether the
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`Office improperly defined the Applicant’s mark based on two arbitrarily chosen dictionary 4
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`Attorney Reference Nos. 131 14/27
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`definitions from amongst numerous possibilities; (3) whether the Office failed to make out a
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`prima facie case of obviousness when it conceded that there is little evidence of descriptive
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`usage of the proposed mark by third parties and where the only instances of usage found have
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`nothing to do with the Applicant’s services; and (4) whether the Office erred in ultimately
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`concluding that Applicant’s mark describes, more than just suggesting, the identified services.
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`FACTS
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`Applicant seeks registration on the Principal Register of the mark VIDEOPINIONS, in
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`typed form, for services identified in the application (as amended) as “[p]roviding information on
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`consumer products and services by way of a global computer network” in class 35 (Serial No.
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`78/654,480)‘ The Examining Attorney refused registration under §A2(e)(l) based on his
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`contention that Applicant’s mark is merely descriptive. When the Examining Attorney made the
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`refusal final, Applicant timely filed this appeal.
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`ARGUMENT
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`The Lanham Act § 2(e)(1) holds in pertinent part: “No trademark .
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`.
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`. shall be refiised
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`registration .
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`.
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`. unless it .
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`.
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`. consists of a mark which, when used on or in connection with the
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`goods of the applicant is merely descriptive .
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`.
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`. of them .
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`.
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`. .” The word “merely” has been
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`interpreted to mean that a mark is not descriptive unless it immediately conveys information with
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` ‘
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`Applicant originally filed for the mark in two international classes (35 and 38) on June 20, 2005
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`based on appIicant’s allegation of bona fide intent to use the mark under Trademark Act § l(b) and added
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`a third (41) based on the examiner’s recommendation. Applicant subsequently requested the division of
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`the application into its respective classes in an effort to have the mark examined for each class separately.
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`a “degree of particularity” concerning a significant quality, characteristic, function, attribute, or
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`feature of the goods or services in connection with which it is used or is intended to be used. In
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` , 2001 TTAB LEXIS 87, at *3 (TTAB Jan. 31, 2001); In re On Technology
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`Q3, 41 USPQ2d 1475, at *7 (TTAB 1996); In re Intelligent Medical Sys., 5 USPQ2d 1674
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`(TTAB 1987); In re TMS Corp. of the Amer.s, 200 USPQ 57, 59 (TTAB 1978); In re Colonial
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`Stores Inc., 394 F.2d 549 (CCPA 1968).
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`With all due respect, Applicant contends that several errors were made during the
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`examination of its mark. First, the Office ignored Applicant’s actual description of services, and
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`instead, focused on extrinsic evidence to completely redefine Applicant’s services as “the
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`provision of opinions by means of video.” Second, the Office proceeded to arbitrarily choose—
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`from amongst numerous possibilities—two particular dictionary definitions ofthe words “video”
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`and “opinion” purported to support the Office’s interpretation the applicant’s mark as meaning:
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`“the provision of opinions by means of video.” Combining these errors, the Office improperly
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`rewrote both the Applicant’s services and assigned a meaning of VIDEOPINIONS to the point
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`where the two converged into a singularity, namely, “the provision of opinions by means of
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`video.”
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`Applicant has never claimed use of its mark in connection with a service involving “the
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`provision of opinions by means of video.” Applicant’s class 35 services claim use in connection
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`with “[p]roviding information on consumer products and services by way of a global computer
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`network.” It is legally incorrect to ignore an applicant’s recited services, and instead, to redefine
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`the applicant’s goods and/or services based on extrinsic evidence and third party uses.
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`Furthermore, App1icant’s mark, VIDEOPINIONS, has no known or recognized meaning, and it
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`was incorrect to arbitrarily choose—from amongst numerous possible meanings—one particular
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`meaning which most supported the Office’s refusal to register the mark.
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`I.
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`IN DETERMINING WHETHER A MARK IS DESCRIPTIVE, THE OFFICE
`ERRED BY IGNORING THE APPLICANT’S IDENTIFIED SERVICES
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`The Examining Attorney in this case held that the Office need not look at the Applicant’s
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`identified services in making the descriptiveness refusal, z'.e., the Examining Attorney held that
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`the mark VIDEOPINIONS does not have to describe any aspect of the Applicant’s identified
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`S_(.‘._1'V_i<3£S_ to be descriptive. Instead, the Examining Attorney simply characterized App1icant’s
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`services (indeed, all three pending classes of services, 35, 38, and 41) as the “provision of
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`opinions by means of video.”2 The Examining Attorney ultimately based his characterization of
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`the Applicant’s services on third—party uses of the words “videos” and “opinion,” a
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`misrepresentation of the Applicant’s responses to the Examining Attorney’s information
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`requests, and apparently, based on the mark itself.
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`A.
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`The Office Erred By Ignoring the Recited
`Services in Applicant’s Complaint
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`Whether a particular mark is “merely descriptive” must be determined in relation to the
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`goods or services for which registration is sought. Cemer, 2001 TTAB LEXIS 87, at *3
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`(“[w]hether a tenn is merely descriptive is determined not in the abstract, but in relation to the
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`goods or services for which registration is sought”); TMS, 200 USPQ 57, 59 (“It is well settled
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` 2
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`The examiner wrote: “It appears that applicant’s services will involve the provision of opinions
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`by means of video.” Office Action, 1/ 1 1/06 (Ex. D at 2); see also Final Office Action, 8/17/07
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`(“Applicant seeks registration .
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`.
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`. for services wherein consumers offers opinions about products and
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`services on videotape”) (Ex. A at 3). It was because the classes were not being examined separately that
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`Applicant decided to divide its application into its respective classes.
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`that the question of whether a particular term is merely descriptive within the meaning of Section
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`2(e)(1) of the Act must be determined not in the abstract, but in relation to the goods or services
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`for which registration is sought. .
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`. .”); Stroh Brewery, 34 USPQ2d 1796, at *4—5 (“[I]n
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`determining whether a mark is descriptive, the mark must not be considered in the abstract, but
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`instead, it must be considered as ‘applied to the goods or services invo1ved.’”).
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`Contradicting this proposition of law, the Examining Attorney in this case expressly
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`stated that the Office need not consider the actual recited services in an analysis of
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`descriptiveness, writing:
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`Applicant is correct that whether a mark is merely descriptive is
`determined in relation to the identified goods or services, not in the
`abstract. .
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`. However, this does not mean that the descriptive
`feature of the services has to exist in the recitation of services in
`order for a mark to be merely descriptive.
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`Ex. A at 4 (citations omitted; emphasis added); s_e§ algg Ex. B at 3 (“[T]he fact that the feature
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`described by the mark is not evident in the recitation itself does not mean that it does not exist .
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`.
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`. .”). Although binding law holds that a mark need not describe the entirety of the recited goods
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`or services to be descriptive, the law has never held that the mark need not describe any element
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`of an applicant’s recited goods or services. 3 And there are sound policy reasons for this.
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` 3
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`The examiner cited a number of cases for the proposition that a mark may be “descriptive of
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`features of goods or services not reflected in the identification of goods or services themselves.” (Ex. B at
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`2-3). For example, in the case of In re Gfllay, 820 F.2d 1216 (Fed. Cir. l987)——relied upon by the
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`Examiner—the Board refused to register APPLE PIE for use in connection with apple pie scented
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`potpourri. In affirrning the decision, the Federal Circuit did not suggest that one may ignore the recitation
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`of goods in the application, it simply held that the apple pie scent was a key characteristic of the
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`applicant’s product even though potpourri is not technically apple pie and is not technically used to make
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`(continued. . .)
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`Any descriptiveness refusal must be tied to the actual identified goods or services for
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`which an applicant seeks registration and not based on whether the mark could describe E1
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` . For example, a computer company selling both computer
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`equipment and apples may still be able to obtain a registration for the mark APPLE in connection
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`with use for “computer equipment.” However, on the Examining Attomey’s statement of the
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`law, if the applicant computer company sold apples or had anything to do with apples
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`whatsoever, the applicant would be barred from a registration of the mark APPLE in any class of
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`goods or services. This is not the law. The Trademark Trial and Appeal Board (“Board”)
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`routinely allows for registration of a mark for certain classes (gg, class 38) while not others
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`(;c_g, 9), which again illustrates that the recited goods and services control the inquiry as to
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`whether a mark is descriptive. §e_e_, _e_.g, In re Epigenomics AG, 2006 TTAB LEXIS 85 (TTAB
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`Mar. 14, 2006) (reversing Section 2(e) refusal regarding class 38 services, while affirrning
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`refusal regarding inter alia services in class 42) (Ex. C). Virtually any recognizable word will be
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`descriptive for something in the universe; but that carmot be the test under Section 2(e).
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`For the present case, the Applicant’s business provides and/or intends to provide various
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`services in addition to the identified services in Applicant’s subject application. The Applicant’s
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`services involve “[p]roviding information on consumer products and services by way of a global
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`computer network.” The Applicant does not produce opinions by means of video as the
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`Examining Attorney has several times indicated, and the issue is not whether VIDEOPINIONS
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`apple pie. In the present case, the Applicant intends to use the mark on, inter alia, “[p]roviding
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`information on consumer products and services by way of a global computer network.,” not on opinions
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`of videos or videos of opinions, neither of which are key characteristics of the recited services.
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`describes “the provision of opinions by means of video.” The question for the purpose of
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`Section 2(e) is not whether the Applicant provides (or could provide) any service for which the
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`mark VIDEOPINIONS could be descriptive, but rather, whether (on a class—by-class basis) the
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`mark VIDEOPINIONS is descriptive of the identified services set forth in the Applicant’s
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`application. In other words, the question for this analysis is: Does VIDEOPINIONS describe
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`“[p]roviding information on consumer products and services by way of a global computer
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`network”?
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`The Examining Attorney has gone so far as to suggest that if the law required him to look
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`at the recitation of goods and/or services in detennining descriptiveness of a mark, he would
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`simply begin requiring applicants to amend their description of goods and/or services to support
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`his descriptiveness refusals.
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`To hold otherwise would be to insert a new issue into every
`application where the Office made a refusal based upon
`descriptiveness; for every refusal under Section 2(e)(1) of the
`Trademark Act, the examiner would make a corresponding
`reguirement that the applicant insert into the identification of
`goods or services clause the feature of the goods or services
`described by the mark.
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`(Ex. B at 3) (emphasis added). There appears to be no authority under federal law whereby an
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`examiner can arbitrarily require the amendment of services just to help make the examiner’s
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`descriptiveness refusal. Although 37 C.F.R. § 2.32(a)(6) requires trademark application to set
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`forth “[a] list of the particular goods or services on or in connection with which the applicant
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`uses or intends to use the mark,” the basis for a refusal under this rule rests on the lack of
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`specificity and definiteness of the identified goods or services. S_e_e_ TMEP §§ 805 and 1402.01
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`(3d ed. Rev. 2, 2003). Thus, although the Examining Attorney could have objected to the
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`recitation of services for indefiniteness, at this time, the Examining Attorney has held that
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`Applicant’s identification of services is acceptable as stated. SQ, ggg Ex. D at 2 (“The class 35
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`recitation is acceptable as stated”). Rewriting an Applicant’s specific and definite description of
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`services in order to render them descriptive could constitute an “abuse of discretion” in the
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`classic sense of the term.
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`The Examining Attorney has also previously indicated that unless the Office is able to
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`look beyond an applicant’s recited services, “applicants could easily avoid descriptiveness
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`refusals simply by being careful not to include in the recitation the feature of the goods or
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`services described by the mark.” Ex. A at 4. But applicants have no incentive to mis-describe
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`their goods or services in an intent-to-use application because they would never be able to
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`transform an approved application into a registration by submitting a specimen of use coinciding
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`with the recited goods or services: If the goods or services are mis-described, the applicant
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`would not be using its mark in connection with the claimed goods or services. Moreover, it
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`would be counterproductive for an applicant to remove from its recitation of services the very
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`services it wishes to protect. An applicant’s rights under the Lanham Act are potentially
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`restricted to the claimed services, and if the applicant left out a description of its true services,
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`the applicant would be potentially surrendering rights for that particular use.
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`B.
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`Extrinsic Evidence Should Not be Used to
`Rewrite the Applicant’s Identified Services
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`In this case, instead of considering the Applicant’s recited services in class 35, the
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`Applicant believes that the Office attempted to rewrite the Applicant’s claimed services based on
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`extrinsic evidence. First, the Examining Attorney pointed to webpages from third party websites
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`purporting to discuss the products and services of the Applicant. Some of the third parties
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`misused and/or characterized the Applicant’s services, and the Applicant has written to third
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`parties asking them to correct their use the Applicant’s mark. E, g.g,, Ex. E at 135 (Ex. 10).
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`But more importantly, it is incorrect to rely on third party representations about the Applicant’s
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`intended services over and above the Applicant’s express identification of its intended services.
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`Respectfully, Applicant also contends that the Office mischaracterized and misinterpreted
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`Applicant’s responses to the his 37 C.F.R. § 2.6l(b) request for information. Applicant never
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`stated that its intended services for this mark involves the “provision of opinions by means of
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`video,” and instead, Applicant explained that “Applicant itself does not provide opinions about
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`the products or services of others per se. .
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`. .” In response to one of the Examining Attomey’s
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`questions, the Applicant responded: “The Applicant’s services inciui soliciting, collecting, and
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`sharing audiovisual demonstrations and information about consumer products and services.”
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`First, this is not a statement of a class 35 advertising service. Second, the Applicant explained
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`that such works “may not” include a consumer opinion about a particular product or service.
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`Although the Applicant stated that a work could conceivably include an “opinion” as well as a
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`demonstration or general information, a work could also conceivably include an elephant, a goat,
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`a rhinoceros, a belief of an individual, and various other subjects. Applicant has never stated that
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`“the provision of opinions by means of video” was a significant quality, characteristic, function,
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`attribute, or feature of the services with which Applicant’s mark is intended to be used in class
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`35.
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`Respectfully, Applicant contends that the Office erred by rewriting Applicant’s services
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`based on speculation instead of simply looking at the accepted recitation of services. gag, gg,,
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`In re Stahlbush Island Farms, Inc., 2005 TTAB LEXIS 548 (TTAB Dec. 20, 2005) (Ex. F) (“The
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`Examining Attorney. .
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`. has been unable to precisely identify what significant aspect of
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`applicant’s goods the term ‘FARMERS MARKET’ immediately describes, speculating instead
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`only as to such generalities as that ‘applicant's goods are, in some manner, like those goods
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`found at farmer's markets’; that applicant’s ‘goods may have the look, taste and smell of fresh
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`fruits and vegetables’; and that ‘the goods are somehow like those purchased at a farmers
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`market’.”); , 2003 TTAB LEXIS 114, at *9-10 (TTAB Mar. 6,2003)
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`(Ex. G) (“The significance of the mark and specifically what it describes about the goods and/or
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`services, when applied to or used in connection with the goods and/or services, is ambiguous and
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`unclear. The Examining Attorney has left too much for speculation and assumption”); I_1i_gAir_
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`Control Science, 1997 TTAB LEXIS 185, at *3-4 (TTAB June 18, 1997) (Ex. H) (“[W]e find no
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`support in this record for the Examining Attomey’s position that DUST ANALYST is merely
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`descriptive of applicant’s services because it conveys to prospective purchasers that applicant’s
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`services involve the ‘analysis of dust itself.’ Applicant has identified its services as ‘analysis,
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`design and engineering of dust collection systems for others.’ There is nothing in this record
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`which indicates that such services involve the analysis of dust, and in fact, applicant’s attorney
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`maintains that applicant’s services do not include analysis of dust.”).4
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`II.
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`IN DETERMINING THE COMMERCIAL IMPRESSION OF THE
`APPLICANT’S MARK, THE OFFICE ERRED BY ARBITRARILY CHOOSING
`TWO DICTIONARY DEFINITIONS MOST CLOSELY MATCHING ITS HIS
`CHARACTERIZATION OF THE APPLICANT’S SERVICES
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`Neither the word “video” nor “opinions” is inherently descriptive of class 35 services.
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`There are numerous service marks registered in class 35 which contain both the word “video,”
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`_e;g_., Ex. E at 58-112 (Ex. 6 ) (VIDEOSPACE, VIDEOSHOPPING, VIDEOSEEKER,
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`VIDEORESUMECREATOR, VIDEOMASTERS, VIDEOMARATHON, VIDEOLOGO,
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`VIDEOFINDER, VIDEOVIEW, VIDEOTRONIC, VIDEOSTITIAL, VIDEO-SCRIPT,
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` 4
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`Because these dispositions are not citable as precedent, Applicant only cites them (and other non-
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`precedential opinions mentioned in this brief) as an instructive examples, not binding precedent.
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`-10..
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`VIDEOLINK, VIDEOFARM.COM), and the word “opinion,” gg, Ex. E at 140-161 (Ex. 12)
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`(OPINIONPORT, OPINIONBANK, OPINIONSCOPE, OPINIONSPOT, OPINIONQUEST,
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`OPINIONLAB, OPINIONSITE, VALUEDOPINION, ECHOPINION,
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`QUALITYOPINIONS.COM, INTERNETOPlNIONS.COM, WORLDOPINION, OPINION 1).
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`The Office carefully avoided any explicit statement as to how consumers would interpret
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`the mark VIDEOPINIONS and instead simply concluded that, whatever it means, it must be
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`descriptive of Applicant’s services. And although the Examining Attorney concluded that
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`VIDEOPINIONS creates no impression differing from a combination of “video” and “opinion,”
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`the Office offered no explication, justification, or evidence to support the conclusion.
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`I_n__r§
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`Grand Forest Holdings Inc., 78 USPQ2d 1152 (TTAB 2006) (“What we lack in this case is
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`significant evidence that, when prospective purchasers encounter term FREEDOM FRIES used
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`on frozen French fried potatoes, they will immediately understand that it identifies a feature,
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`quality, or characteristic of the applicant’s goods”); Epigenomics GmbH, 2003 TTAB LEXIS
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`114, at *9 (Ex. G) (“It is not clear how the relevant purchasers would regard the term DIGITAL
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`PHENOTYPE; and there is no evidence that the relevant consumers would readily understand a
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`connection between DIGITAL PHENOTYPE and the various diagnostic kits, laboratory
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`equipment, and research and development and Internet access services”). Although the
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`Examining Attorney proffered a few select dictionary definitions and several webpages
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`purporting to use the words “video” and “opinion,” the submissions do not show use of the
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`Applicant’s mark for its identified services. Therefore, the Office failed to meet its burden to
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`show that the mark VIDEOPINIONS merely describes some significant aspect of Applicant’s
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`services with a degree of particularity.
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`A.
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`The Office Concedes That There is a Little Evidence of
`Descriptive Usage of the Phrase “Video Opinions”
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`Although the Examining Attorney apparently conducted extensive searches for instances
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`of use of the phrase “video opinions,” the Examining Attorney concluded: “[T]he Office cannot
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`supply a large quantity of evidence of descriptive usage of the phrase ‘video opinions’ by
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`others.” Ex. B at 2. Although the Examining Attorney submitted a few articles sparming the
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`past 16 years along with a few random webpages wherein the words “video” and “opinion” were
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`used in conjunction, Applicant objects to the relevance of each article/webpage because in each
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`case, Applicant’s mark is not used to describe anything like Applicant’s actual and intended
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`services, i. e. , information on consumer products.
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`For example, the 1996 Kansas City Star article entitled “Students View life from both
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`sides of camera” uses the phrase “video opinion pol1”—not “videopinions.” Not only does the
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`phrase “video opinion poll” have nothing to do with the Applicant’s intended and identified
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`service, but also, the term “opinion poll” is a common compound term recognized by the Oxford
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`English Dictionary (Ex. B at 10-12). In the 1991 LA Times article entitled “Private Eyes”
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`concerns how everyday people record odd and diverse subjects on their camcorders ranging from
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`photojournalistic events to their neighbors in hot-tubs. (Ex. B at 12-15). In the passage quoted
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`by the Examining Attorney, “video opinions” is used to refer to recordings of individuals
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`discussing their frustration of network news coverage of the Gulf War. Clearly, the phrase is not
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`used to describe “[p]roviding information on consumer products and services by way of a global
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`computer network.”
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`There are a number of instances in the past and in other cases wherein the Board has
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`come across similar circumstances and held that NEXIS articles and stray webpages submitted as
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`evidence of use cannot show descriptiveness when they do not show the proposed mark being
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`-12-
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`used to describe the applicant’s recited services. In the case of In re Haningon, 219 USPQ 854,
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`856 (TTAB 1983), the Office refused registration of COLLEGE ACADEMY for “education
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`services, namely, providing special learning programs for gifted and talented children in grades 4
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`to 8.” There was no evidence showing use of the composite tenn COLLEGE ACADEMY in the
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`academic field.
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`I_d; Likewise, in this case, there is no evidence showing use of VIDEOPINIONS
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`(or “video opinions”) in the field of providing information on consumer products and services by
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`way of a global computer network. _S_e<fis_o In re L.Vad Technology, Inc., 2006 TTAB LEXIS
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`160 (TTAB Apr. 28, 2006) (Ex. I) (reversing refusal of PATCH BOOSTER for “heart assist
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`devices” and rejecting NEXIS articles because they “do not support a finding that ‘patch’ is
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`merely descriptive of applicant’s goods”); In re Adamchik, 2006 TTAB LEXIS 345, at *8—10
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`(TTAB Aug. 7, 2006) (Ex. J) (holding that the Office’s “single example of use of ‘object style’
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`in instructions for working with drawing objects and graphics fails to demonstrate that
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`OBJECTSTYLE merely describes a function, feature or characteristic of the recited services”).
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`B.
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`Despite the Office’s Submission of a Few Dictionary
`Definitions, the Coined Mark VIDEOPINIONS Has No
`Meaning at All, and the Combination of “Video” and
`“Opinions” Evokes a New Commercial Impression
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`VIDEOPINIONS is a coined term. The term “video opinion” or “video opinions”
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`appears in no known dictionary. Nonetheless, the Examining Attorney has tried to deconstruct
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`the mark into the words “video” and “opinion” separately, suggesting that each individually
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`describe some aspect of the Applicant’s services. The analysis is flawed for several reasons: (1)
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`The words “video” and “opinion” have numerous known meanings and it was improper to
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`arbitrarily select meanings which most closely matched the Examining Attorney’s
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`characterization of Applicant’s services. (2) In this case, the combination of two otherwise
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`known terms creates an entirely new commercial impress.
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`Attorney Reference Nos. 131 14/27
`Serial Nos. 78/654,480
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`1.
`
`Given The Various Definitions of “Video” And
`“Opinion,” The Expression VIDEOPINIONS or
`“Video Opinion” Has No Clear Meaning
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`For the word “video,” the Examining Attorney cited the Microsoft® Encarta® dictionary
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`(Ex. A at 39-41) and stated that the word has “its normal meaning.” Ex. A at 4. But Encarta®
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`lists five definitions of the noun and two definitions of the adjective. Ex. E at 40-41 (Ex. 1).
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`When one also considers the definitions of www.Infoplease.com (g1_. at 43-44 (Ex. 2)), Merriam-
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`Webster Online definitions of “video” (Q at 46-48 (EX. 3)); American Heritage Dictionary gig
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`at 51 (Ex. 4)); Dictionary.com (i_d_. at 50-51); and the Oxford English Dictionary (Q at 56-57
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`(Ex. 5)), one is inundated with definitions ranging from, inter alia, music videos, movies, video
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`recorders, Videocassettes or videotapes, television, and the visual portion of television.
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`_S_e_e Ex.
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`E at 6-7 (listing more than 30 definitions). Given the various grammatical forms and definitions
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`of the word “video,” the question presents itself: What does the term “video” mean to
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`consumers? The Examining Attorney never explains.
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`For the word “opinion,” the Examining Attorney offered definitions from two sources:
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`Infoplease.com and Merriam-Webster Online. Ex. A at 27-28. But again, when one also
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`considers the definitions from Microsoft® Encarta (Ex. E at 114-15 (Ex. 7)), American Heritage
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`(i_d, at 117-23 (Ex. 8)), and the Oxford English Dictionary (i_(L at 125-33 (Ex. 9)), one is
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`inundated by definitions ranging from, inter alia, favorable esteem, a formal statement by a
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`judge, a belief or conclusion held with confidence but not substantiated by positive knowledge or
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`proof, the public or general opinion, and/or a judgment based on special knowledge. Given the
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`various definitions of the word “opinion,” the following question presents itself: What does the
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`word “opinion” mean to consumers? The Examining Attorney defines “opinion” as follows:
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`“The term ‘opinion’ is defined as ‘a personal view, attitude, or appraisal’ or as ‘a view,
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`Attorney Reference Nos. 13114/27
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`judgment, or appraisal formed in the mind about a particular matter.”’ Ex. A at 3. The
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`Examining Attorney offers no justification for choosing this definition from amongst the many
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`and diverse possibilities.
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`Given all the various meanings of the terms “opinion” and “video,” consumers cannot
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`come to any clear understanding as to what “videopinions” (or “video opinions”) could possibly
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`mean. In an analogous case, the Office originally refused registration of the mark POLYDECK
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`as descriptive of, inter alia, “polyethylene dock sections.” In re FineLine Lakeshore Servs.,
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`LLB, 2006 TTAB LEXIS 339, at *9-12 (TTAB Aug. 24, 2006) (Ex. K).
`
`The Examining Attorney argues that POLYDECK is a compound
`term with two merely descriptive components: ‘deck’ which is an
`alternative generic term for ‘dock’ and ‘poly’ which is an
`abbreviation for ‘polyethylene.’
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`Id. The Board looked at the proffered dictionary definitions and noted that “poly” had multiple
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`definitions and could mean an abbreviation of “polyethylene” or suggest that the particular
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`goods—dock sections—may be configured in many ways. The Court held that the fact that the
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`terms had multiple meanings made the combined mark POLYDECK more suggestive than
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`descriptive.
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`This indicates further that the combination of ‘poly’ and ‘deck’
`may have a suggestive meaning which is more than the sum of its
`parts contrary to the Examining Attomey’s position.
`Accordingly, we conclude that POLYDECK is not merely
`descriptive of ‘polyethylene dock sections.’ In concluding so we
`acknowledge that there is some doubt and that, in such a case
`under Trademark Act Section 2(e)(l), we must resolve doubt in
`favor of applicant.
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`I_cL at *9-12 (emphasis added and citations omitted). Like the case in FineLine, the tenns
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`“video” and “opinion” have multiple definitions. Indeed, the term “video” may be used as a
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`noun or an adjective and there are literally hundreds of permutations and possibilities, many of
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`Attorney Reference Nos. 131 14/27
`Serial Nos. 78/654,480
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`which make no sense (ggv combining the noun “video” with “opinion” creates nonsense, similar
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`to “cat dog”). The mark VIDEOPINIONS may suggest in the mind of consumers (i) an opinion
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`poll in video format (as indicated in the Kansas City Star article proffered by the examiner); (ii)
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`video recordings of court proceeding or court “opinions”; (iii) a video of political or religious
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`issues; (iv) written movie reviews, Q, reviews of videos. Applicant’s coined term could suggest
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`a lot of different things, none of which describe or even hint of the Applicant’s claimed service
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`of “[p]roviding information on consumer products and services by way of a global computer
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`network.” Because of the diverse possible consumer interpretations of the mark
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`VIDEOPINIONS, the Applicant’s mark should be deemed, if not fancifiil, at most suggestive.
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`The ambiguity raised by the various meanings and consumer interpretations weighs in favor of
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`the Applicant because any doubt “must resolve in favor of the applicant.” In re Rank
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`Organisation Ltd., 222 USPQ 324, 326 (TTAB 1984).
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`Even though Applicant contends that a consumer could not possibly ascertain its services
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`from hearing its mark, Applicant is not here arguing that point. Applicant is arguing that the
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`coined word VIDEOPINIONS or the combination of “video” and “opinions” has no meaning
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`whatsoever in the English language or in the minds of consumers. To that extent, the present
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`case resembles the circumstances of Harrington, wherein the Board reversed a descriptiveness
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`refusal of COLLEGE ACADEMY for “education services” in part because “the composite of the
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`two words is not a term in general use to describe educational services (or anything else, for that
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`matter) and has no dictionary meaning.” 21