Erm... "News Corp" is a major company... be careful...
And here we come to the essential difference between a "trade name" and a trademark.
Note the following registered trademark for a logo:
http://tarr.uspto.gov/servlet/tarr?regser=serial&entry=75011712
Note the expressly disclaimed generic matter in the mark (in bold below):
Word Mark NEWS CORP
Goods and Services IC 042. US 100 101. G & S: providing multiple-user access to a global computer network for the transfer and dissemination of entertainment, music, information, shopping book reviews, television and movie reviews, interactive trivia and multiplayer games, and the advertisments of others. FIRST USE: 19950900. FIRST USE IN COMMERCE: 19950900
Mark Drawing Code (3) DESIGN PLUS WORDS, LETTERS, AND/OR NUMBERS
Design Search Code 01.07.02 - Globes with meridians and parallels only
Serial Number 75011712
Filing Date October 30, 1995
Current Filing Basis 1A
Original Filing Basis 1A
Published for Opposition March 18, 1997
Registration Number 2078510
Registration Date July 15, 1997
Owner (REGISTRANT) NEWS CORPORATION LIMITED, THE CORPORATION AUSTRALIA 2 Holt Street Sydney, New South Wales AUSTRALIA 2010
(LAST LISTED OWNER) NEWS HOLDINGS LIMITED CORPORATION AUSTRALIA 2 HOLT STREET SYDNEY, NEW SOUTH WALES AUSTRALIA 2010
Assignment Recorded ASSIGNMENT RECORDED
Attorney of Record Stacy J. Grossman, Esq.
Disclaimer NO CLAIM IS MADE TO THE EXCLUSIVE RIGHT TO USE "NEWS CORP" APART FROM THE MARK AS SHOWN
Type of Mark SERVICE MARK
Register PRINCIPAL
Affidavit Text SECT 15. SECT 8 (6-YR). SECTION 8(10-YR) 20070808.
Renewal 1ST RENEWAL 20070808
Live/Dead Indicator LIVE
Now, in a later application, News Corp attempted to demonstrate acquired distinctiveness in the "NEWS CORP" part of the mark.
The USPTO refused, stating in pertinent part:
Applicant must also disclaim the generic wording “News Corp” apart from the mark as shown because it merely describes applicant’s business. The phrase “news corporation” is commonly used to refer to corporations that specialize in media issues. Please see the attached evidence consisting of seven websites and ten articles from the LexisNexis database, which show the generic use of the phrase “news corporation” in this manner. In addition, the term “news” is defined as “information about recent events or happenings, especially as reported by newspapers, periodicals, radio, or television. b. A presentation of such information, as in a newspaper or on a newscast. 2. new information of any kind.” Please see attached definition. As such, the term “news” is descriptive of applicant’s services in that applicant provides entertainment programs featuring news. Also, please see the attached evidence from five websites, which show the descriptive use of the term “news” in connection with services identical to those of the applicant, as well as ten printouts from the USPTO X. Search database showing disclaimers for the term “news” in relation to marks for services identical to those of the applicants. This evidence shows that the term “news” is generic in relation to applicant’s services. Trademark Act Section 6, 15 U.S.C. §1056; TMEP §§1213 and 1213.03(a).
Also, terms such as “Corporation,” “Inc.” and “Ltd.” must be disclaimed because they merely specify applicant’s entity type and do not function as a trademark or service mark to indicate source. See In re Patent & Trademark Services, Inc., 49 USPQ2d 1537, 1539-40 (TTAB 1998); In re Industrial Relations Counselors, Inc., 224 USPQ 309, 310 n.2 (TTAB 1984); In re E. I. Kane, Inc., 221 USPQ 1203, 1206 (TTAB 1984); In re Packaging Specialists, Inc., 221 USPQ 917, 919 (TTAB 1984); TMEP §1213.03(d).
The computerized printing format for the Office’s Trademark Official Gazette requires a standardized format for a disclaimer. TMEP §1213.08(a)(i). The following is the standard format used by the Office:
No claim is made to the exclusive right to use “News Corp” apart from the mark as shown.
See In re Owatonna Tool Co., 231 USPQ 493 (Comm’r Pats. 1983).
The Office can require an applicant to disclaim exclusive rights to an unregistrable part of a mark, rather than refuse registration of the entire mark. Trademark Act Section 6(a), 15 U.S.C. §1056(a). Under Trademark Act Section 2(e), 15 U.S.C. §1052(e), the Office can refuse registration of the entire mark where it is determined that the entire mark is merely descriptive, deceptively misdescriptive, or primarily geographically descriptive of the goods. Thus, the Office may require the disclaimer of a portion of a mark which, when used in connection with the goods or services, is merely descriptive, deceptively misdescriptive, primarily geographically descriptive, or otherwise unregistrable (e.g., generic). TMEP §1213.03(a). If an applicant does not comply with a disclaimer requirement, the Office may refuse registration of the entire mark. TMEP §1213.01(b).
A “disclaimer” is thus a written statement that an applicant adds to the application record that states that applicant does not have exclusive rights, separate and apart from the entire mark, to particular wording and/or to a design aspect. The appearance of the applied-for mark does not change.
A disclaimer does not physically remove the disclaimed matter from the mark, but rather is a written statement that applicant does not claim exclusive rights to the disclaimed wording and/or design separate and apart from the mark as shown in the drawing.
Please note that even though registration of the mark is sought on the Principal Register under Section 2(f), the Office still requires applicant to disclaim “Corp” because such wording is merely a generic term for applicant’s organization as discussed above. It is also an entity designation and has no trademark significance. In re Wella Corp., 565 F.2d 143, 196 USPQ 7 (C.C.P.A. 1977); In re Creative Goldsmiths of Washington, Inc., 229 USPQ 766 (TTAB 1986); In re Carolyn’s Candies, Inc., 206 USPQ 356 (TTAB 1980); TMEP §1213.03(b).
Claim of Acquired Distinctiveness
Applicant’s Section 2(f) in part claim as to NEWS CORP is unacceptable.
Applicant must establish acquired distinctiveness by a preponderance of the evidence. Yamaha Int’l Corp. v. Hoshino Gakki Co., 840 F.2d 1572, 6 USPQ2d 1001 (Fed. Cir. 1988). This evidence may include specific dollar sales under the mark, advertising figures, samples of advertising, consumer or dealer statements of recognition of the mark, and any other evidence that establishes the distinctiveness of the mark as an indicator of source. The Office will decide each case on its own merits.
The amount and character of evidence needed to establish acquired distinctiveness depends on the facts of each case and particularly on the nature of the mark sought to be registered. See Roux Laboratories, Inc. v. Clairol Inc., 427 F.2d 823, 166 USPQ 34 (C.C.P.A. 1970); In re Hehr Mfg. Co., 279 F.2d 526, 126 USPQ 381 (C.C.P.A. 1960); In re Gammon Reel, Inc., 227 USPQ 729 (TTAB 1985). More evidence is needed where a mark is so highly descriptive that purchasers seeing the matter in relation to the named goods and/or services would be less likely to believe that it indicates source in any one party. See, e.g., In re Bongrain International Corp., 894 F.2d 1316, 13 USPQ2d 1727 (Fed. Cir. 1990); In re Seaman & Associates, Inc., 1 USPQ2d 1657 (TTAB 1986); In re Packaging Specialists, Inc., 221 USPQ 917 (TTAB 1984). However, no amount of purported proof that a generic term has acquired secondary meaning can transform that term into a registrable trademark. Such a designation cannot become a trademark under any circumstances. See Miller Brewing Co. v. G. Heileman Brewing Co., 561 F.2d 75, 195 USPQ 281 (7th Cir. 1977), cert. denied, 434 U.S. 1025, 196 USPQ 592 (1978).
Because all of the words in applicant’s mark are generic as used with the services they cannot be registered as a trademark under section 2(f).
