The opinion
THIS OPINION IS A
PRECEDENT OF THE TTAB
Mailed:
January 28, 2011
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Thomas Nelson, Inc.
________
Serial No. 76681269
_______
Edward D. Lanquist, Jr. of Waddey & Patterson, P.C. for
Thomas Nelson, Inc.
Tracy Whitaker-Brown, Trademark Examining Attorney, Law
Office 111 (Craig D. Taylor, Managing Attorney).
_______
Before Zervas, Cataldo and Bergsman,
Administrative Trademark Judges.
Opinion by Bergsman, Administrative Trademark Judge:
Thomas Nelson, Inc. (“applicant”) filed a use-based
application to register the mark NKJV, in standard
character form, on the Principal Register for “bibles,” in
Class 16. Applicant claimed ownership of the following
registrations for bibles:
1. Registration No. 2501485 for the mark NKJV NEW
KING JAMES VERSION, in typed drawing form, registered under
the provisions of Section 2(f) of the Trademark Act of
1946, 15 U.S.C. §1052(f), on October 30, 2001. The Section
Serial No. 76681269
8 affidavit has been accepted and the Section 15 affidavit
has been acknowledged;
2. Registration No. 2514142 for the mark NKJV and
design shown below. Applicant registered this mark under
the provisions of Section 2(f) of the Trademark Act on
December 4, 2001. The Section 8 affidavit has been
accepted and the Section 15 affidavit has been
acknowledged.
The Trademark Examining Attorney refused to register
applicant’s mark under Section 2(e)(1) of the Trademark Act
of 1946, 15 U.S.C. §1052(e)(1), on the ground that
applicant’s mark is merely descriptive. According to the
Examining Attorney, NKJV immediately informs consumers that
applicant’s bible is the New King James Version.1
While maintaining that its mark is not merely
descriptive, applicant requested in the alternative that
NKJV be allowed to register on the Principal Register under
Section 2(f). The Examining Attorney continued the refusal
under Section 2(e)(1) and denied registration under Section
1
The Examining Attorney’s Brief, unnumbered page 6.
2
Serial No. 76681269
2(f). The issues on appeal are whether applicant’s mark is
merely descriptive and, if so, whether applicant’s mark has
acquired distinctiveness.
Preliminary Matter
It is surprising that this application could reach the
Board on appeal without resolution by the applicant and
examining attorney of either of the two questions
presented, in view of the fact that applicant owns the two
registrations noted above for NKJV NEW KING JAMES VERSION
and NKJV and design issued under the provisions of Section
2(f).
If an applicant initially seeks registration based on
acquired distinctiveness or amends its application to seek
registration based on acquired distinctiveness without
expressly reserving its right to argue that its mark is
inherently distinctive, registration under Section 2(f) is
an admission that the mark is not inherently distinctive.
Yamaha International Corporation v. Hoshino Gakki Co. Ltd.,
6 USPQ2d 1001, 1005 (Fed. Cir. 1988); Kasco Corp. v.
Southern Saw Services, Inc., 27 USPQ2d 1501, 1506 n.7 (TTAB
1993) (“By amending (without) reservation its application
to claim that its green wrapper had become distinctive of
its saw blades, [defendant] conceded that the green wrapper
was not inherently distinctive of its saw blades … when
3
Serial No. 76681269
[defendant] amended its application to claim the benefits
of Section 2(f), it did not reserve its right to argue in
the alternative that its green wrapper was, from the
outset, inherently distinctive”); see also TMEP §1212.02(c)
(7th ed. 2010). An applicant can avoid the admission that
its mark is not inherently distinctive if it makes the
claim of acquired distinctiveness in the alternative and
files an appeal of the refusal on the basis that the mark
is not inherently distinctive (e.g., the mark is merely
descriptive). Of course, if an appeal in the alternative
results in a finding of descriptiveness and also the
presence of acquired distinctiveness, then descriptiveness,
though not conceded by the applicant, would be present.
During the prosecution of this application, the better
practice would have been for the examining attorney to have
reviewed the files for applicant’s prior registrations to
determine whether applicant had previously conceded that
NKJV is merely descriptive or, perhaps had its mark found
descriptive on appeal. At that point, the descriptiveness
refusal might have been obviated because applicant could
not have in good faith continued to maintain its position
that NKJV was not merely descriptive. Furthermore, the
examining attorney would have known the particulars of the
Section 2(f) claims in the prior registrations. In this
4
Serial No. 76681269
regard, because the USPTO has already recognized that the
letters NKJV when used in connection with bibles had
acquired distinctiveness, that question, too, might have
been resolved.
Evidence of Descriptiveness
The Examining Attorney submitted the following
evidence to demonstrate that NKJV is merely descriptive
when used in connection with bibles:
1. Entries from the AcronymFinder.com and the
FreeDictionary.com websites identifying NKJV as meaning
“New King James Version.”2 The examining attorney also
submitted an entry from the Dictionary.com website that did
not identify NKJV but provided a link to the
AcronymFinder.com website. The AcronymFinder.com website
displayed a link to an advertisement for “NKJV Bibles in
Bulk.” The examining attorney did not follow-up this link
to show what it displayed. The Dictionary.com website also
displayed links to what appear to be advertisements for
NKJV Open Bible and NKJV Narration. The examining attorney
did not follow-up this link to show what it displayed.
Finally, the FreeDictionary.com website had links to
advertisements for NKJV bibles (“NKJV at Amazon.com” and
2
November 27, 2007 Office Action.
5
Serial No. 76681269
“Case Quantity. Wholesale Bibles … We currently sell KJV,
Nkjv, NIV, Amplified, Nrsv, Spanish NVI, and RVR bibles”).
2. An advertisement from the Amazon.com website for
the book Life Application Study Bible NKJV “by Tyndale”
which is touted as the “#1 Selling Study Bible.”3 While it
is not clear who “by Tyndale” is referencing, other
material in the record shows that William Tyndale was an
important figure in the history of the English Bible.
William Tyndale published the first English version of the
Bible translated from Hebrew and Greek sources in 1525.4
3. In the reader comments to the Cammenga article
referenced in footnote 4, one reader asked, “NKJV vs. KJV …
as far as easier reading for a new christian (sic) (my
wife) would the NKJV be better. (sic)” In the text, it is
clear that the letters KJV are an abbreviation for King
James Version and that the letters NKJV are an abbreviation
for the New King James Version.5
3
April 30, 2008 Office Action. Applicant asserts that this
title is sold by applicant. (Applicant’s August 12, 2008
Response).
4
The Columbia Encyclopedia, “Bible” (6th Ed. 2001-2007) attached
to the April 30, 2008 Office Action. One commentator referenced
William Tyndale as “[t]he father of the English Bible.” Ronald
Cammenga, “KJV vs. NIV” published in the GraceOnlineLibrary.org
website attached to the October 16, 2008 Office Action.
5
See also Abbreviations Dictionary, p. 579 (2001), American
Heritage Dictionary of the English Language (2007), The Columbia
Encyclopedia, “Bible” (6th Ed. 2001-2007), Merriam-Webster.com
all attached to the April 30, 2008 Office Action.
6
Serial No. 76681269
4. An excerpt from the “Answers” section of the
Yahoo.com website asking the question, “Nkjv vs niv6 – which
is best, all suggestions are welcome? … i (sic) have a nkjv
bible, now my friend presented me with a niv (sic) version.
which (sic) version you (sic) think is best and why?”7 One
response stated that “I mainly use NKJV, although I think
the NIV is fine. I just feel the NKJV is more poetic and
flows better … The NKJV is more conversational and easier
to read.” In the text, it is clear that the letters NKJV
are an abbreviation for the New King James Version.
5. Brent Kercheville, “My Top Bible Translations”
(2008) appearing in the ChristianMonthlyStandard.com
website identified his top Bible translations including the
“New King James Version (NKJV).”8 Kercheville writes that
“I still have the burgundy genuine leather bound NKJV Open
Bible given to me on my 16th birthday … I still use the NKJV
from time to time … the NKJV is still good and
trustworthy.” Kercheville uses initials to refer to the
different Bible versions (e.g., English Standard Version
(ESV), Holman Christian Standard Bible (HCSB), New Revised
Standard Version (NRSV)).
6
NIV stands for the New International Version of the bible.
7
October 16, 2008 Office Action.
8
October 16, 2008 Office Action.
7
Serial No. 76681269
6. An excerpt from the Scribd.com website posting an
article by Dr. Dale A Robbins, “Why So Many Bible
Translations?”9 Dr. Robbins explains that “Dr. Lewis
Foster, one of those who helped translate the NIV and NKJV
says, ‘It is necessary to continue making translations and
revising old ones if people are to read the Word of God in
their contemporary languages.’”
7. An excerpt from the “Bible Versions” column in
the Chick Publications website (chick.com) written by David
W. Daniels, author of “The King James Bible Companion.”10
Question: I know the New King James is
said to be a “revision of the King
James.” But were the Greek and Hebrew
texts for the New King James the same
as they were for the King James?
Answer: The NKJV is not a revision of
the King James Bible at all. The Greek
and Hebrew behind the NKJV are the same
as for the modern perversions. They
are not the same as the Greek and
Hebrew behind the King James Bible,
God’s preserved words in English.
(Emphasis in the original).
8. Terry Watkins, “The Teen Study Bible” appearing
in the Biblebelievers.com website refers to different
versions of the Bible by acronyms (e.g., American Standard
9
October 16, 2008 Office Action.
10
October 16, 2008 Office Action.
8
Serial No. 76681269
Version (ASV), New International Version (NIV), New King
James Version (NKJV)).
9. An excerpt from the Fitnessforoneandall.com
website “Verse Evaluations: KJV vs. NKJV – Part One.”11 In
this essay, the author discusses “the relationship of the
King James Version (KJV) and the New King James Version
(NKJV). The Literal Translation of the Bible (LITV for
“Literal Version”) and the Modern King James Version (MKJV)
were also referred to.” (Emphasis in the original).
10. An excerpt from the Biblesbythecase.com website
advertising the sale of various versions of the NKJV
Bible.12
We note that in the October 16, 2008 Office Action,
the examining attorney submitted a search summary of
results from the GOOGLE search engine. A search summary of
Internet search 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. See In re Bayer
Aktiengesellschaft, 488 F.3d 960, 967, 82 USPQ2d 1828, 1833
(Fed. Cir. 2007) (GOOGLE® search results that provided very
little context of the use of ASPIRINA deemed to be “of
11
October 16, 2008 Office Action.
12
October 16, 2008 Office Action. Applicant reiterates that it
is the exclusive distributor of the New King James Version of the
Bible in the United States and this advertisement is of
applicant’s Bibles. (Applicant’s December 11, 2008 Response).
9
Serial No. 76681269
little value in assessing the consumer public perception of
the ASPIRINA mark”); In re Tea and Sympathy, Inc., 88
USPQ2d 1062, 1064 n.3 (TTAB 2008) (truncated Google® search
results entitled to little probative weight without
additional evidence of how the searched term is used);
In re Thomas, 79 USPQ2d 1021 (TTAB 2006) (Board rejected an
applicant’s attempt to show weakness of a term in a mark
through citation to a large number of GOOGLE® “hits”
because the “hits” lacked sufficient context); In re King
Koil Licensing Co. Inc., 79 USPQ2d 1048 (TTAB 2006); In re
Remacle, 66 USPQ2d 1222, 1223 n.2 (TTAB 2002); In re Fitch
IBCA Inc., 64 USPQ2d 1058 (TTAB 2002). 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.
Whether NKJV is merely descriptive?
A term is merely descriptive if it immediately conveys
knowledge of a significant quality, characteristic,
function, feature or purpose of the products it identifies.
10
Serial No. 76681269
In re Gyulay, 820 F.2d 1216, 3 USPQ2d 1009, 1009 (Fed. Cir.
1987). Whether a particular term is merely descriptive is
determined in relation to the goods for which registration
is sought and the context in which the term is used, not in
the abstract or on the basis of guesswork. In re Abcor
Development Corp., 588 F.2d 811, 200 USPQ 215, 218 (CCPA
1978); In re Remacle, 66 USPQ2d 1222, 1224 (TTAB 2002). In
other words, the question is not whether someone presented
only with the mark could guess the products listed in the
description of goods. Rather, the question is whether
someone who knows what the products are will understand the
mark to convey information about them. In re Tower Tech,
Inc., 64 USPQ2d 1314, 1316-1317 (TTAB 2002); In re Patent &
Trademark Services Inc., 49 USPQ2d 1537, 1539 (TTAB 1998);
In re Home Builders Association of Greenville, 18 USPQ2d
1313, 1317 (TTAB 1990); In re American Greetings Corp.,
226 USPQ 365, 366 (TTAB 1985). In this case, the issue is
whether the term NKJV directly conveys information about
bibles to consumers.
“If one must exercise mature thought or follow a
multi-stage reasoning process in order to determine what
characteristics the term indentifies, the term is
suggestive rather than merely descriptive.” In re Tennis
11
Serial No. 76681269
in the Round, Inc., 199 USPQ 496, 497 (TTAB 1978); see
also, In re Shutts, 217 USPQ 363, 364-365 (TTAB 1983);
In re Universal Water Systems, Inc., 209 USPQ 165, 166
(TTAB 1980).
A word, term, or letters that are a recognized
abbreviation for the goods in the application is merely
descriptive. Foremost Dairies, Inc. v. The Borden Company,
156 USPQ 153, 154 (TTAB 1967); Calgon Corporation v. Hooker
Chemical Corporation, 151 USPQ 359, 360 (TTAB 1966).
However, not all abbreviations are necessarily merely
descriptive.
While each case must be decided on the
basis of the particular facts involved,
it would seem that, as a general rule,
initials cannot be considered
descriptive unless they have become so
generally understood as representing
descriptive words as to be accepted as
substantially synonymous therewith.
Modern Optics, Inc. v. Univis Lens Co., 234 F.2d 504,
110 USPQ 293, 295 (CCPA 1956); see also Southwire Co. v.
Kaiser Aluminum & Chemical Corp., 196 USPQ 566, 573 (TTAB
1977).
Accordingly, for NKJV to be merely descriptive of
applicant’s bibles, we have to find the following:
1. NKJV is an abbreviation for “New King James
Version”;
12
Serial No. 76681269
2. “New King James Version” is merely descriptive of
bibles; and
3. A relevant consumer viewing NKJV in connection
with bibles would recognize it as an abbreviation
of the term “New King James Version.”
In re Harco Corp., 220 USPQ 1075, 1076 (TTAB 1984).
A. Whether NKJV is an abbreviation for “New King James
Version”?
Entries from the AcronymFinder.com and the
FreeDictionary.com websites identify NKJV as meaning “New
King James Version.” Furthermore, many of the references
submitted by the examining attorney identify different
versions of the bible by acronyms or initials (e.g., New
King James Version (NKJV)). Finally, applicant is the
owner of Registration No. 2501485 for the mark NKJV NEW
KING JAMES VERSION which may lead a consumer viewing such
mark as believing the letters NKJV are an abbreviation for
“New King James Version.” Accordingly, we find that NKJV
when used in connection with bibles is an abbreviation for
the New King James Version.
B. Whether “New King James Version” used in connection
with bibles is merely descriptive?
We start by finding that the “King James Version” is
merely descriptive for a well-known version of the Bible.
See The Random House Dictionary of the English Language
(Unabridged), p. 1057 (2nd ed. 1987) (“King James Version …
13
Serial No. 76681269
See Authorized Version”) and p. 139 (“Authorized Version …
an English version of the Bible prepared in England under
King James I and published in 1611. Also called King James
Version”). It has been referred to as “the greatest of all
English translations of the Bible.”13 One commentator
opined that “[f]or centuries the King James Version was the
undisputed version of choice among English-speaking
Christians. … No one can dispute that the dominant English
translation of the Bible is the King James Version (KJV),
or as it is sometimes called, the Authorized Version.”14
The Abbreviations Dictionary, p. 579 (10th ed. 2001)
identifies “KJ” as “King James (version of the Bible).”
(Emphasis in the original).15
The term “New King James Version” is merely
descriptive because it immediately conveys to consumers
that the product identified by the mark is a “new” or
modified version of the well-known King James Bible. In
this regard, we note that the evidence of record shows that
“New King James Version” is a recognized term for a version
of the bible. For example, AcronymFinder.com and the
13
The Columbia Encyclopedia, “Bible” (6th ed. 2001-2007) attached
to the April 30, 2008 Office Action.
14
Ronald Cammenga, “KJV vs. NIV” published in the
GraceOnlineLibrary.org website attached to the October 16, 2008
Office Action.
15
April 30, 2008 Office Action.
14
Serial No. 76681269
FreeDictionary.com websites identifying NKJV as meaning
“New King James Version,” entries from the “Bible Versions”
column in the Chick Publications website (chick.com),
written by David W. Daniels, started with the
question/statement “I know the New King James is said to be
a ‘revision of the King James,’” and Brent Kercheville in
“My Top Bible Translations” in the
ChristianMonthlyStandard.com website identifies the New
King James Version (NKJV) as one of his top Bible
translations.
C. Whether relevant consumers viewing NKJV in connection
with bibles would recognize it as an abbreviation of
the term “New King James Version”?
The evidence of record supports a finding that
consumers viewing the term NKJV used in connection with
bibles would recognize that term as an abbreviation for
“New King James Version.” As indicated in our discussion
regarding whether NKJV is an abbreviation for the term “New
King James Bible,” entries from the AcronymFinder.com and
the FreeDictionary.com websites identify NKJV as meaning
“New King James Version” and many of the references
submitted by the examining attorney identify different
versions of the bible by acronyms or initials (e.g., New
King James Version (NKJV)).
15
Serial No. 76681269
In view of the foregoing, we find that the term NKJV
is merely descriptive when used in connection with bibles.
We have considered applicant’s argument that NKJV is not
merely descriptive because the NKJV Bible “is a product
solely distributed by Applicant,”16 but do not find it
persuasive. 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. See In re Hunter Fan Co., 78 USPQ2d 1474,
1476 (TTAB 2006) (“a word need not be in common use in an
industry to be descriptive, and the mere fact that an
applicant is the first to use a descriptive term in
connection with its goods, does not imbue the term with
source-identifying significance”); In re Alpha Analytics
Investment Group LLC, 62 USPQ2d 1852, 1856 (TTAB 2002).
Applicant also referenced three previously registered
third-party marks comprising initials for bibles,
Registration No. 2915872 for the mark NCV and Registration
Nos. 2788296 and 1642753 for the mark NIV, as the basis for
arguing that the descriptiveness refusal is not consistent
with existing USPTO practice to register initials as
trademarks for bibles.17 Applicant only made reference to
16
Applicant’s Brief, p. 5.
17
Applicant’s Brief, p. 6.
16
Serial No. 76681269
these registrations in its December 11, 2008 response and
later in its brief; applicant did not submit copies of the
registrations. This is not the proper way to make such
registrations of record. See In re Volvo Cars of North
America Inc., 46 USPQ2d 1455, 1456 n.2 (TTAB 1998).
However, because the examining attorney did not advise
applicant after receipt of the December 11, 2008 response
that the mere listing of registrations was insufficient,
when applicant still had an opportunity to cure the defect,
we will consider the specific data provided by applicant.
In re 1st USA Realty Professionals, Inc., 84 USPQ2d 1581,
1583 (TTAB 2007).18
Third-party registrations are not conclusive on the
question of descriptiveness. Each case must stand on its
own merits, and a mark that is merely descriptive should
not be registered on the Principal Register simply because
18
We recognize the Federal Circuit exercised its discretion to
take judicial notice of third-party registrations in an ex parte
appeal. In re Chippendales USA, Inc., 622 F.3d 1346, 96 USPQ2d
1681, 1688 (Fed. Cir. 2010). However, the Board’s well-
established practice is not to take judicial notice of third-
party registrations, and we do not take judicial notice of third-
party registrations here. Thus, to make a third-party
registration of record, a copy of the registration, either a copy
of the paper USPTO record, or a copy taken from the electronic
records of the Office, should be submitted during
prosecution/examination of the application. In re Jump Designs
LLC, 80 USPQ2d 1370, 1372-73 (TTAB 2006); In re Volvo Cars of
North America Inc., 46 USPQ2d at 1456 n.2; In re Duofold Inc.,
184 USPQ 638, 640 (TTAB 1974).
17
Serial No. 76681269
other marks that share those characteristics appear on the
register. In re Scholastic Testing Service, Inc.,
196 USPQ 517, 519 (TTAB 1977) (“we are not so much
concerned with what has been registered, but rather what
should or should not be registered”). The question of
whether a mark is merely descriptive must be determined
based on the evidence of record at the time registration is
sought. See In re Nett Designs Inc., 236 F.3d 1339,
57 USPQ2d 1564, 1566 (Fed. Cir. 2001); In re Sun
Microsystems Inc., 59 USPQ2d 1084, 1087 (TTAB 2001).
Thus, although we have considered the third-party
registration to the extent indicated above, they do not
rebut our finding that applicant’s mark is merely
descriptive.
Whether NKJV Has Acquired Distinctiveness?
Applicant submitted the following evidence that its
mark has acquired distinctiveness:
1. The declaration of applicant’s Vice President and
General Counsel attesting to applicant’s substantially
exclusive and continuous use of the mark NKJV for bibles
since 1979;
2. The declaration of applicant’s Vice President and
General Counsel attesting to the following facts:
18
Serial No. 76681269
a. Since 1986, applicant has generated almost
$500 million dollars in sales from its NKJV
bibles;
b. Since 1986, applicant has sold over 62
million copies of its NKJV bible to
approximately 25 million customers; and
c. Since 1998, applicant has spent over $4
million dollars advertising its NKJV bibles;
3. Seven written statements from book retailers
stating that they recognize NKJV as identifying the
products of applicant;19 and
4. Twenty-four written statements from “end
customers” stating that they recognize NKJV as identifying
the products of applicant.
In addition, as noted above, applicant claimed
ownership of two registrations comprising in part the
letters NKJV registered under Section 2(f) for bibles.
While applicant did not argue, and we are not finding, that
ownership of its prior registrations are prima facie
evidence of acquired distinctiveness pursuant to Trademark
Rule 2.41(b), the fact remains that applicant is the owner
19
Statements from retailers, without regard to the perceptions of
the ultimate consumers, have very little persuasive value
because, while retailers know the source of the products they are
buying, that knowledge is not transferable to end customers. In
re Semel, 189 USPQ 285, 288 (TTAB 1975); compare In re ic! Berlin
GmbH, 85 USPQ2d 2021, 2024 (TTAB 2008) (with respect to acquired
distinctiveness for an earpiece for eyeglass frames, the Board
gave some weight to declarations by opticians who stated that
their customers “ask for applicant’s eyewear by the earpiece
design”).
19
Serial No. 76681269
of the marks NKJV and design and NJKV NEW KING JAMES
VERSION, in typed drawing form, for bibles registered under
the provisions of Section 2(f). That the examining
attorney did not address the probative value of applicant’s
prior registrations is puzzling especially because it was
the examining attorney who brought the registrations to the
applicant’s attention and required applicant to claim
ownership of them.
In view of the evidence of acquired distinctiveness
submitted by applicant (i.e., substantially exclusive and
continuous use over a long period of time, substantial
sales and advertising expenditures) as well as applicant’s
two previously registered marks, to hold that the initials
NKJV has not acquired distinctiveness when the same term is
the subject of two incontestable registrations under the
provisions of Section 2(f) appears illogical on its face.
Thus, under the facts before us, we find that the evidence
of record is sufficient to support the finding that the
mark NKJV mark used in connection with bibles has acquired
distinctiveness.
Decision: The refusal under Section 2(e)(1) of the
Trademark Act of 1946 on the ground that the mark is merely
descriptive is affirmed; the refusal that the mark sought
to be registered has not acquired distinctiveness pursuant
20
Serial No. 76681269
to Section 2(f) of the Trademark Act is reversed. The
application will be published for opposition in due course.
21