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A publishing company's previous federal trademark registrations of “NKJV” as having acquired distinctiveness for bibles under Section 1052(f) make it illogical to find that a very similar term has not acquired distinctiveness, the Trademark Trial and Appeal Board ruled Jan. 28 (In re Thomas Nelson Inc., T.T.A.B., No. 76681269, 1/28/11).
While agreeing that the NKJV is merely descriptive and would be recognized as an abbreviation for “New King James Version” bibles, the board reversed the refusal to register the term, citing evidence of its acquired distinctiveness.
Thomas Nelson Inc. of Nashville, Tenn., is a publisher of religious materials that in 2001 registered the terms “NKJV New King James Version” and “NKJV” mark and design for bibles under Section 2(f) of the Trademark Act, 15 U.S.C. §1052(f), which allows for registration of a mark that has acquired distinctiveness. The company later submitted a use-based application to the Patent and Trademark Office to register the term “NKJV” in relation to bibles.
Concluding that the claimed mark was merely descriptive, the trademark examining attorney refused registration under Section 2(e)(a). The applicant then sought to register the mark as having acquired distinctiveness, but the trademark examining attorney still declined to register.
Thomas Nelson appealed, arguing that its desired mark was not merely descriptive, and even if it was, the company could demonstrate acquired distinctiveness under Section 2(f).
Administrative Trademark Judge Marc A. Bergsman began by expressing surprise that “this application could reach the Board on appeal without resolution by the applicant and examining attorney of either of the two questions presented,” given the two registrations that the applicant already held under Section 2(f).
The board acknowledged that if an applicant seeks registration under Section 2(f) without “expressly reserving its right to argue that its mark is inherently distinctive,” this constitutes an admission that the desired mark is not inherently distinctive. However, an applicant can avoid that admission if it claims in the alternative that the mark, while descriptive, has acquired distinctiveness, the board added.
This issue could have been resolved if the examining attorney had reviewed the files for the prior registrations to see if Thomas Nelson had already conceded the descriptiveness issue or if the PTO itself had already found that Thomas Nelson's use of the “NKJV” mark had acquired distinctiveness, the board said.
Going on to consider the descriptiveness of the NKJV marks, the board noted the evidence--including web-based advertising and other online searches--proffered by the examining attorney to show that the marks were descriptive. However, the board rejected the examining attorney's reliance on a summary of results from a google search. Simply conducting a search on an internet search engine and submitting a summary of the results “has little probative value, because such a list does not show the context in which the term is used on the listed web pages,” the board said, adding:
In this case, because we are determining whether consumers would perceive NKJV as a trademark or as a description of the bibles, the text provided with the search summary results was too scant to be helpful in making that determination. Accordingly, the search summary results did not provide sufficient context to have any probative value and, therefore, we gave those search results no consideration.
Instead, the board set forth this standard for deciding whether NKJV is merely descriptive of bibles:
1. Whether NKJV is an abbreviation for “New King James Version”;
2. Whether “New King James Version” is merely descriptive of bibles; and
3. Whether a relevant consumer viewing NKJV in connection with bibles would recognize it as an abbreviation of the term “New King James Version.”
As to the first question, the board cited evidence in the record from online dictionaries and guides to abbreviations that “NKJV” was indeed an abbreviation for “New King James Version.” Furthermore, one of Thomas Nelson's already registered marks--“NKJV New King James Version”--was itself likely to give the message to consumers that “NKJV” is an abbreviation.
The second question was also resolved by dictionary citations, which established that “New King James Version” is merely descriptive for certain versions of the bible, the board said. Finally, the board found that consumers would also recognize “NKJV” when used in connection with bibles to be an abbreviation for the descriptive phrase.
The board thus concluded that “NKJV” was merely descriptive when used in connection with bibles.
The board rejected the argument that the term was not descriptive because there were no competitors in the bible publishing marketplace that also used the term NKJV.
“The fact that no other competitor is using NKJV does not make it an inherently distinctive trademark when the only significance projected by the term is merely descriptive,” the board said.
Further, the board rejected the argument that NKJV should be found inherently distinctive when other abbreviations for versions of the bible--namely, “NCV” and “NIV”--had been registered as inherently descriptive. The board said that asserted trademarks must be analyzed for distinctiveness on a case-by-case basis and not be registered on the basis of shared characteristics with other marks.
“The question of whether a mark is merely descriptive must be determined based on the evidence of record at the time registration is sought,” the board said.
Finally, turning to the question of acquired distinctiveness, the board again noted that the letters NKJV had already been registered twice by the applicant under Section 2(f) for bibles. Given those two previously registered marks, the board said, “it appears illogical on its face” to find that the term NKJV had not acquired distinctiveness.
Thus, the board affirmed the examiner's refusal to register the mark under Section 2(e)(1) as merely descriptive, but it reversed the refusal to register under 2(f) for lack of acquired distinctiveness. The board ordered that Thomas Nelson's application be published for opposition.
The board's opinion was joined by Administrative Trademark Judges Albert Zervas and Peter W. Cataldo.
Thomas Nelson was represented by Edward D. Lanquist Jr. of Waddey & Patterson, Nashville, Tenn. The PTO was represented by Tracy Whitaker-Brown, trademark examining attorney.
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