Trademark Trial and Appeal Board
Patent and Trademark Office (P.T.O.)
*1 IN RE DISC JOCKEYS, INCORPORATED
Serial No. 74/012,172
June 12, 1992
Issued: May 14, 1992
John T. Rogers of the firm Rogers, Howell & Haferkamp for applicant.
Trademark Examining Attorney
Law Office 8
(Thomas Lamone, Managing Attorney)
Before Rooney, Cissel and Hohein
An application was filed to register on the Principal Register the term DJDJ for disc jockey services for parties and social events. Use since June 2, 1986 was alleged. Registration has been finally refused on the ground that the term sought to be registered is merely descriptive of applicant's purported services. Applicant has appealed.
In support of its right to register, applicant argues that in considering descriptiveness a mark must be viewed in its entirety and that a mark in its entirety may be distinctive even if portions of it or, indeed, all portions of it, are descriptive if viewed separately. It is asserted that, while the Examining Attorney found, in dictionaries and Nexis materials, that DJ means "disc jockey", it is error to further conclude that DJDJ has any ordinary or well-known descriptive meaning to the public. An entry in a dictionary or other such reference would be conclusive on the issue of descriptiveness, argues the applicant, if such an entry disclosed that the meaning of the term, when considered with the particular services, does nothing but or only describes those services, but DJDJ, in its entirety, cannot be proven by any entry to have any meaning. It is maintained that it requires substantial mental exercise to suggest anything concrete in connection with the services; that the plural of DJ is perhaps formed as DJ's while DJDJ is not a proper plural construction; that the public may take DJDJ to suggest a plurality of disc jockeys but to arrive even at this understanding of DJDJ, the public must have already used imagination; and that even more imagination must be used to come to a suggestion of the applicant's services. Applicant argues further that registration of DJDJ will not infringe competitors' needs for common descriptive words and symbols; that DJDJ is indicative of source or origin; and that doubt should be resolved in favor of publication.
A term is considered merely descriptive if, as used in relation to the goods or services on which, or in connection with which, it is used, it immediately conveys information about a significant ingredient, quality, characteristic, function, feature composition, purpose or attribute of those goods or services. The question of whether a term is merely descriptive is not to be resolved in the abstract, but must be considered in relation to the goods or services for which registration is sought, the context in which the mark is used, and the significance that the mark is likely to have, because of the manner in which it is used, to an average purchaser in the marketplace. See In re Engineering Systems Corporation, 2 USPQ2d 1075 (TTAB 1986) and cases cited therein.
*2 In this case, there is no question that the term DJ is descriptive as applied to the services of providing disc jockey services for parties and social events. DJ is a commonly used abbreviation and one which is immediately recognized by the public. The Examining Attorney has submitted dictionary definitions and Nexis evidence which establish the public perception of DJ as an abbreviation of the term "disc jockey". Applicant argues that an "entry in a dictionary (or a like reference) would be conclusive on the issue of descriptiveness if such an entry disclosed that the meaning of the term, when considered with the particular services, does nothing but or only describe those services". In support of this contention, applicant has cited the case of In re Colonial Stores, Inc., 394 F.2d 549, 157 USPQ 382 (CCPA 1968) in which the Court reversed the Board's holding that SUGAR & SPICE is merely descriptive of bakery products. However, it is to be noted that the term in question there, in addition to its descriptive meaning in connection with baked goods, also had a double entendre in that it called to mind the words of a nursery rhyme, "sugar and spice; and everything nice." The Court said that, "[O]n the record below, the mark clearly does not tell the potential purchaser only what the goods are, their function, their characteristics or their use, or, of prime concern here, their ingredients."
In this case, there is no doubt that DJ is a descriptive designation as used in connection with the services of providing disc jockey services for parties and social events. It is a commonly used abbreviation for "disc jockey" and one which is immediately recognized. Applicant does not deny that fact. Therefore, the only question to be determined is whether repeating those letters as DJDJ is enough to render the resultant composite a registrable trademark.
It is true that terms which may not individually be considered trademarks may become such upon being combined into a composite. However, combining two descriptive terms is insufficient to accomplish that goal unless the combination is such as to create a new and different commercial impression from that which is engendered by the separate components. See Surgicenters of America, Inc. v. Medical Dental Surgeries, Co., 202 USPQ 401 (CA9 1978) and In re Uniroyal, Inc., 215 USPQ 716 (TTAB 1982).
We do not believe that DJDJ is rendered any less descriptive by repeating the letters. It is unlikely that a viewer would, as applicant suggests, engage in some kind of mental gymnastics to reach the conclusion that DJDJ is somehow intended to be a plurality of disc jockeys, which, it is noted by applicant, is grammatically incorrect. The fact remains that, when considered in connection with disc jockey services, DJ is recognized by the viewer as the accepted abbreviation for a disc jockey. At best, on seeing DJDJ, it would occur to a viewer that the letters are repeated for emphasis. There is nothing in the composite which changes the meaning of the letters in any manner which would give them a different meaning. If one were to express the view that milk was "creamy creamy" or that a red bicycle was "red red" or that a razor was "sharp sharp", the repetition of the words "creamy", "red" and "sharp" would be understood as emphasis and the combinations of these words would not, simply because of their repetition, be rendered something more than descriptive. Nothing new or different is imparted by the simple repetition of the descriptive expression DJ. Thus, the composite expression is, in our view, equally descriptive as used in connection with the identified services.
*3 In view thereof, the refusal to register on the Principal Register is affirmed.
Members, Trademark Trial and Appeal Board
G. D. Hohein
While I agree with the majority's statement of the law with respect to mere descriptiveness and concur that the term "DJ" is a commonly used and recognized abbreviation for "disc jockey," I part company with their application of the law to the facts of this appeal. Specifically, I find that the mark "DJDJ," when applied to "disc jockey services for parties and social events," is suggestive rather than merely descriptive since the repetition of the term "DJ" as part of a single designation creates a mark which is ambiguous. As such, the mark does not immediately convey information about any particular quality, characteristic, function, feature, purpose or other significant attribute of applicant's disc jockey services.
Although I would not go so far as to state that repeating a term invariably takes the combination out of the realm of mere descriptiveness, I believe that in this case the repetition of the abbreviation "DJ" in the mark "DJDJ" creates a new and different commercial impression from that of the components when considered separately. The resultant combination does not simply describe, as opposed to suggesting, disc jockey services which, for instance, are exceptional or otherwise better than the norm. It is thus unlike the examples offered by the majority, in which the repetitive addition of the same terms arguably serves to create designations which merely describe a finer or superlative state of the product ("creamy creamy" connoting a creamier or the creamiest milk; "red red" signifying a redder or the reddest bicycle; and "sharp sharp" denoting a sharper or the sharpest razor). The reiteration of the term "DJ" in the mark "DJDJ," in stark contrast, does not impart a similar descriptive significance.
The majority contends, however, that "[a]t best, on seeing DJDJ, it would occur to a viewer that the letters are repeated for emphasis" and that "[t]here is nothing in the composite which changes the meaning of the letters in any manner which would give them a different meaning". While, admittedly, the mark "DJDJ" tells a person that applicant's services have something to do with a disc jockey or DJ, just what that something is is left for speculation, imagination or conjecture. The majority fails to point to any aspect of applicant's services which would be directly and literally described by the mark and I can perceive none given the ambiguity resulting from the aggregation of the terms "DJ" and "DJ" into a single designation. Instead, in light of the redundancy of the term "DJ" therein, deriving the meaning or connotation of the mark "DJDJ" requires the exercise of imagination or mental processing to arrive at the conclusion that the term "DJ" is repeated simply for the sake of emphasis or, perhaps, is meant to underscore an extra level of performance.
*4 Finally, I agree with applicant that use and/or registration of the mark "DJDJ" will not interfere with the legitimate rights of others rendering disc jockey services to use the generic term "DJ" and that, to the extent that there may be any doubt as to whether the mark is merely descriptive, that doubt should be resolved, in accordance with the Board's policy, in favor of applicant by allowing publication of the mark for opposition. [FN1]
Accordingly, since I find that the mark "DJDJ," when considered as a whole and not fragmented into its component elements, is suggestive rather than merely descriptive of "disc jockey services for parties and social events," I would reverse the refusal to register and permit applicant's mark to proceed to publication.
FN1. See, e.g., In re Morton-Norwich Products, Inc., 209 USPQ 791 (TTAB 1981) and In re Gourmet Bakers, Inc., 173 USPQ 565 (TTAB 1972).