21st Century Communications SCP

Trademark Trial and Appeal Board

Jun 11, 2012

No. 77650780 (T.T.A.B. Jun. 11, 2012)

THIS OPINION IS NOT A
PRECEDENT OF
THE T.T.A.B.

Mailed: June 11, 2012

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re 21st Century Communications SCP
________

Serial No. 77650780
_______

Mitchell H. Stabbe of Dow Lohnes PLLC for 21st Century
Communications SCP.

Darryl M. Spruill, Trademark Examining Attorney, Law Office
112 (Angela Wilson, Managing Attorney).
_______

Before Bucher, Cataldo and Wellington,
Administrative Trademark Judges.

Opinion by Cataldo, Administrative Trademark Judge:

21st Century Communications SCP filed an application to
register in standard characters on the Principal Register
the proposed mark WHO’S WHO ONLINE for services
subsequently amended to read as follows: “providing an
online directory information service in the nature of
biographical and professional data about individuals of
accomplishment” in International Class 35.1

1 Serial No. 77650780 was filed on January 15, 2009, alleging
first use anywhere and in commerce as of September 19, 1995.
Ser. No. 77650780
2
Procedural History
The trademark examining attorney refused registration
under Section 2(e)(1) of the Trademark Act, 15 U.S.C.
§ 1052(e)(1), on the ground that applicant’s mark is highly
descriptive of applicant’s services. In response,
applicant asserted a claim of acquired distinctiveness
under Section 2(f), 15 U.S.C. § 1052(f), and complied with
the examining attorney’s requirement for a disclaimer of
ONLINE and an amended recitation of services.2 The
examining attorney continued the refusal to register under
Section 2(e)(1) and found applicant’s showing that its
proposed mark had acquired distinctiveness under Section
2(f) was insufficient to overcome the refusal to register.
Applicant then amended its application to seek registration
on the Supplemental Register. The examining attorney
refused registration under Section 23 of the Trademark Act,
15 U.S.C. §1091, on the ground that applicant’s mark is
generic and thus incapable of identifying applicant’s
services and distinguishing them from the services of
others. When the refusal was made final, applicant
appealed. Applicant and the examining attorney filed
briefs on the issue under appeal.

2 In support if its Section 2(f) claim, applicant submitted a
declaration of one of its officers attesting that its proposed
Ser. No. 77650780
3
Arguments and Evidence
Applicant contends that the examining attorney has
submitted insufficient evidence that WHO’S WHO ONLINE is a
generic name for its services. Applicant further contends
that the individual terms comprising WHO’S WHO ONLINE are
descriptive of its services and that, as a result, “the
WHO’S WHO ONLINE mark is not generic because the individual
terms making up the mark, WHO’S WHO and ONLINE, are not
generic.”3 Finally, applicant argues that it obtained and
inadvertently allowed to be cancelled a prior registration
for WHO’S WHO ONLINE on the Supplemental Register for
substantially identical services, and that “refusal to
allow Applicant’s application in the instant case on the
ground of genericness would lead to completely inconsistent
and contradictory results.”4
In support of its position, applicant made of record
the welcome page from its Internet website, excerpted
below:
Who’s Who Online(SM) is a searchable site on the
World Wide Web which contains professional and
biographical data about individuals of
accomplishment who are part of the worldwide
Internet community. Profiles are provided by the
individuals themselves, who own the copyrights to
their own pages. …

mark has acquired distinctiveness based upon use in commerce for
at least five years immediately prior thereto.
3 Applicant’s brief, p. 7.
4 Id. at 13.
Ser. No. 77650780
4

Back in 1995, sites like ours had to gather our
own data about visitors to our site in order to
approach prospective advertisers with
demographics about our visitors. Now that all
major advertising agencies have awakened to e-
mail/the Internet and are on-line, Who’s Who
Online(SM) has ceased gathering independent data.
….

Applicant further submitted printed copies of
approximately 30 third-party registrations issued on the
Supplemental Register for ONLINE-formative marks for
various goods and services as well as 9 such registrations
for WHO’S WHO-formative marks. The following examples are
illustrative:
Registration No. 3322031 for NAUTICAL CHARTS
ONLINE (NAUTICAL CHARTS disclaimed) for
“providing a website featuring marine
navigational maps;”

Registration No. 2893965 for HEALTH CARE BENEFITS
ONLINE for “providing a website featuring
information on customers' health care benefits
accounts, namely, claims status, eligibility for
coverage, policy deductibles and limits, and
participating health care providers;”

Registration No. 2647413 for BENEFITS ONLINE for
“financial services, namely, providing employee
benefits account information via a computer
network;”

Registration No. 2722771 for WHO’S WHO IN FINE
DINING for “promoting the goods and services of
restaurants through the distribution of special
advertising sections in which the restaurants are
rated and acknowledged as fine eating
establishments;”

Ser. No. 77650780
5
Registration No. 1681665 for WHO’S WHO IN
CONGRESS for “pocket guide containing up-to-date
profiles of members of Congress including
biographical data, addresses and phone numbers,
committee assignments, key staff members,
election results and interest group ratings;” and

Registration No. 1687391 for WHO’S WHO IN SPORTS
for “biographical directories.”

In support of the refusal to register, the examining
attorney made of record dictionary definitions of WHO’S WHO
and ONLINE. According to these definitions, WHO’S WHO is
defined as follows: “a compilation of brief biographical
sketches of prominent persons in a particular field ” or “a listing or grouping of
notable persons or things.”5 ONLINE is defined as follows:
“the state of being connected to the Internet; used as an
adjective, it describes a variety of activities that users
do on the Internet, for example, online chat, online
shopping, online searching, online communities, and on and
on.”6
The examining attorney further made of record articles
and advertisements retrieved from Internet web pages
displaying third-party use of various forms of WHO’S WHO
ONLINE in connection with their websites. The following

5 Merriam-Webster OnLine Dictionary, merriam-webster.com.
6 netlingo.com.

Ser. No. 77650780
6
representative samples from such web pages are
illustrative:

Who’s Who Online Directory
The Who’s Who Online Directory is a networking
service for the members of the IGTI
[International Gas Turbine Institute] Technical
Committees, as well as participants in other IGTI
leadership groups, such as the GTUS Advisory
Group and the Distributed Generation Task Force.
This interactive membership database replaces the
annual printed Who’s Who directory. …
gti.asme.org;

The Global Directory of Who’s Who: Interactive
Website Tour
Intro: The Global Directory of Who’s Who is an
annual hard covered publication and online
registry that publishes biographies of
accomplished professional men and women. Our
selection director chooses candidates based on
their current position with information obtained
from executive research and professional
listings. A true global network designed for
helping members grow their business, build
relationships, and expand their professional
horizons.
theglobalwhoswho.com;

Cambridge Who’s Who
Welcome to the Cambridge Who’s Who online
membership application. Cambridge Who’s Who
among Executives, Professionals and Entrepreneurs
is the fastest-growing publisher of executive,
professional and entrepreneur biographies in the
world today. Our accomplished members and
extensive online database make Cambridge Who’s
Who a premier resource for networking. …
The online registry provides a state-of-the-art
networking forum where executives, professionals
and entrepreneurs are able to share information,
knowledge and services to stay one step ahead in
their careers and business.
Ser. No. 77650780
7
cambridge whoswho.com;

Continental Who’s Who
CWW has become one of the most trusted publishers
around the globe. We spotlight thousands of
professionals each year by their specific
industry. The men and women published represent
every important field of endeavor. Included are
executives and officials in business, science,
education, philanthropy, religion, government,
the fourth estate, finance, law, engineering, and
many other fields.
The Continental Who’s Who Registry is available
in three formats: Online, Hardcover and CD-ROM.
The CWW Online forum is an exclusive network of
world-class executives and professionals in which
they can connect, educate, share information and
establish new business relations.
contwhoswho.com.

Finally, the examining attorney submitted 8 third-
party registrations issued on the Supplemental Register for
WHO’S WHO-formative marks for various goods and services in
which the term WHO’S WHO is disclaimed.
Analysis
A generic term is incapable of registration on the
Supplemental Register because it does not distinguish the
goods and/or services of one entity from others. A mark is
a generic name if it refers to the class, genus or category
of goods and/or services on or in connection with which it
is used. See In re Dial-A-Mattress Operating Corp., 240
F.3d 1341, 57 USPQ2d 1807 (Fed. Cir. 2001), citing H.
Marvin Ginn Corp. v. International Association of Fire
Ser. No. 77650780
8
Chiefs, Inc., 782 F.2d 987, 228 USPQ 528 (Fed. Cir. 1986).
The test for determining whether a mark is generic is its
primary significance to the relevant public. See Section
14(3) of the Act. See also In re American Fertility
Society, 188 F.3d 1341, 51 USPQ2d 1832 (Fed. Cir. 1999);
Magic Wand Inc. v. RDB Inc., 940 F.2d 638, 19 USPQ2d 1551
(Fed. Cir. 1991); and H. Marvin Ginn Corp. v. International
Association of Fire Chiefs, Inc., supra. The examining
attorney has the burden of establishing by clear evidence
that a mark is generic and thus unregistrable. See In re
Merrill Lynch, Pierce, Fenner and Smith, Inc., 828 F.2d
1567, 4 USPQ2d 1141 (Fed. Cir. 1987). Evidence of the
relevant public’s understanding of a term may be obtained
from any competent source, including testimony, surveys,
dictionaries, trade journals, newspapers, and other
publications. See In re Northland Aluminum Products, Inc.,
777 F.2d 1556, 227 USPQ 961 (Fed. Cir. 1985).
In In re American Fertility Society, supra, our
primary reviewing court held that if the USPTO can prove
“(1) the public understands the individual terms to be
generic for a genus of goods and species; and (2) the
public understands the joining of the individual terms into
one compound word to lend no additional meaning to the
term, then the PTO has proven that the general public would
Ser. No. 77650780
9
understand the compound term to refer primarily to the
genus of goods or services described by the individual
terms.” (Id. at 1837.)
The court further clarified the test in In re Dial-A-
Mattress Operating Corp., supra, 1-888-M-A-T-R-E-S-S for
“telephone shop-at-home retail services in the field of
mattresses,” (Id. at 1810):
Where a term is a “compound word” (such as
“Screenwipe”), the Director may satisfy his
burden of proving it generic by producing
evidence that each of the constituent words is
generic, and that “the separate words joined to
form a compound have a meaning identical to the
meaning common usage would ascribe to those words
as a compound.” In re Gould Paper Corp., 834
F.2d 1017, 1018, 5 USPQ2d 1110, 1110(Fed. Cir.
1987). However, where the proposed mark is a
phrase (such as “Society for Reproductive
Medicine”), the board “cannot simply cite
definitions and generic uses of the constituent
terms of a mark”; it must conduct an inquiry into
“the meaning of the disputed phrase as a whole.”
In re The Am. Fertility Soc'y, 188 F.3d at 1347,
51 USPQ2d at 1836. The In re Gould test is
applicable only to “compound terms formed by the
union of words” where the public understands the
individual terms to be generic for a genus of
goods or services, and the joining of the
individual terms into one compound word lends “no
additional meaning to the term.”

Id. at 1348-49, 51 USPQ2d at 1837.

We begin by finding that the genus of services at
issue in this case is adequately defined by applicant's
identification thereof, namely, “providing an online
directory information service in the nature of biographical
Ser. No. 77650780
10
and professional data about individuals of accomplishment.”
1 Magic Wand Inc. v. RDB Inc., 940 F.2d 638, 19 USPQ2d
1551, 1552 (Fed. Cir. 1991) (“[A] proper genericness
inquiry focuses on the description of services set forth in
the [application or] certificate of registration”).
Turning to the second inquiry, the public's
understanding of the term, the relevant public consists of
the ordinary consumer interested in viewing, posting or
subscribing to online directory information services in the
nature of biographical and professional data about
individuals of accomplishment. As noted above, the
evidentiary burden of establishing that a term is generic
rests with the USPTO and the showing must be based on clear
evidence. Merrill Lynch, 4 USPQ2d at 1143. Based on this
record, we find that there is clear evidence to support a
finding that the relevant public, when they consider WHO’S
WHO ONLINE in conjunction with the class of involved
services, would readily understand the term to identify a
type of directory information service providing online
information regarding biographical and professional data
about individuals of accomplishment. The evidence of
record clearly establishes that the term WHO’S WHO is the
name of a type of listing of biographical and professional
data about individuals of note or accomplishment.
Ser. No. 77650780
11
Furthermore, the record clearly establishes that the term
ONLINE is the name of a type of information that is
available on the Internet. Thus, and contrary to
applicant’s contention, the record in this case establishes
that WHO’S WHO and ONLINE are generic for the recited
services. Accordingly, we must consider the effect of
combining these terms.
We find the addition of ONLINE to WHO’S WHO in this
case to have no significance and the record clearly
establishes that the proposed mark is generic. The record
shows that WHO’S WHO is a unitary generic term. The record
also establishes that the term ONLINE is simply a
designation for a type of information available on the
Internet, and lacking source-identifying capability.
Indeed, the recitation of services in the involved
application clearly indicates that the services are
“providing an online directory information service … .”
Therefore, WHO’S WHO ONLINE is the combination of two
generic terms joined to create a compound. Eddie Z's
Blinds, 74 USPQ2d at 1041-42. Thus, Gould-type evidence
showing the generic nature of the two terms is sufficient
to establish that the separate terms retain their generic
significance when joined to form a compound that has “a
meaning identical to the meaning common usage would ascribe
Ser. No. 77650780
12
to those words as a compound.” Gould, 5 USPQ2d at 1111-12.
See also In re Wm. B. Coleman Co., 93 USPQ2d 2019 (TTAB
2010).
The circumstances of this case are similar to those in
1800Mattress.com where the Federal Circuit affirmed the
Board's finding that mattress.com is generic, because the
record demonstrated others’ need to use the term. In re
1800Mattress.com IP, LLC, 586 F.3d 1359, 92 USPQ2d 1682
(Fed. Cir. 2009). Here, a competitive need to use “who’s
who online” is demonstrated by the evidence showing that
“who’s who” is being used by others as the generic name of
such services, and the designation “online” must be free
for all to use in combination with the generic name of
services provided over the Internet, i.e., “online.”
Therefore, the generic designation for services provided
over the Internet cannot transform the name of the services
for which registration is sought into a trademark. See Wm.
B. Coleman, 93 USPQ2d at 2026.
Applicant’s prior, cancelled, registration of the
designation WHO’S WHO ONLINE on the Supplemental Register
for assertedly highly similar services does not compel
reversal of the examining attorney herein. We note that we
have no information of record regarding applicant’s prior
registration, nor are we familiar with the prosecution
Ser. No. 77650780
13
history or evidentiary record thereof. While it is
unfortunate that applicant’s prior registration was not
maintained, our precedent is clear; a cancelled or expired
registration has no probative value other than to show that
it once issued. Sunnen Prods. Co. v. Sunex Int'l Inc., 1
USPQ2d 1744, 1747 (TTAB 1987). Importantly, the
presumptions which benefit a subsisting registration on the
Principal Register, see Trademark Act § 7(b), die with the
registration. Anderson, Clayton & Co. v. Krier, 478 F.2d
1246, 178 USPQ 46, 47 (CCPA 1973) (“Whatever benefits a
registration conferred upon appellee were lost by him when
he negligently allowed his registration to become
canceled.”); and In re Hunter Publ’g Co., 204 USPQ 957, 963
(TTAB 1979) (cancellation “makes the question of
registrability ‘a new ball game’”). We acknowledge that,
had applicant maintained its prior registration, it would
have a registration similar to the one it now seeks.
However, that did not happen, and the Office must apply the
same standard to the examination of applicant’s new
application as it applies to any other application.
Applicant is not entitled to favorable treatment because it
inadvertently allowed its prior registration to be
cancelled.
Ser. No. 77650780
14
Finally, the third-party registrations submitted by
applicant are of very limited probative value in our
genericness determination herein. It is well-settled that
neither this tribunal nor our primary reviewing court is
bound by prior determinations by the USPTO and each case
must be decided on its own merits. See In Re Nett Designs
Inc., 236 F.3d 1339, 57 USPQ2d 1564, 1566 (Fed Cir. 2011).
Simply put, the decision to allow the third-party
registrations of record to register on the Supplemental
Register does not justify registration of the instant
application.
In view of the above, the examining attorney has met
his burden to establish that WHO’S WHO ONLINE is generic
and incapable of registration for “providing an online
directory information service in the nature of biographical
and professional data about individuals of accomplishment.”
Decision: The refusal to register is affirmed.