AAA Customer Services, LLC

Trademark Trial and Appeal Board

Mar 6, 2003

No. 75748353 (T.T.A.B. Mar. 6, 2003)

Paper No. 12
Mailed:
March 6, 2003
Bucher

UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re AAA Customer Services, LLC
________
Serial No. 75/748,353
_______
Faye L. Tomlinson of Christensen O’Connor Johnson Kindness
PLLC for AAA Customer Services, LLC.
Tracy Cross, Trademark Examining Attorney, Law Office 103
(Michael Hamilton, Managing Attorney).
_______
Before Simms, Bucher and Rogers, Administrative Trademark
Judges.
Opinion by Bucher, Administrative Trademark Judge:
AAA Customer Services, LLC filed a trademark
application to register on the Principal Register the
proposed mark EBA for “real estate agencies” in
International Class 36.1 Following a final refusal to
register on the ground that the proposed mark is merely
descriptive in connection with the recited services,
1 Application Serial No. 75/748,353, filed July 12, 1999,
based on use of the mark in commerce, alleging first use and use
in commerce as of June 20, 1999.
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT
OF THE TTAB
Serial No. 75/748,353
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applicant amended its application to seek registration on
the Supplemental Register.
The Trademark Examining Attorney issued a refusal to
register, under Section 23 of the Trademark Act, 15 U.S.C.
1091, on the ground that applicant’s proposed mark is
incapable of identifying and distinguishing its services,
i.e., that EBA is a generic name for the recited services.
Applicant has appealed. Both applicant and the
Trademark Examining Attorney have filed briefs, but
applicant did not request an oral hearing. We affirm the
refusal to register.
With respect to genericness, the Office has the burden
of proving genericness by “clear evidence” thereof. See In
re Merrill, Lynch, Pierce, Fenner & Smith, Inc., 828 F.2d
1567, 4 USPQ2d 1141, 1143 (Fed. Cir. 1987); and In re Gould
Paper Corp., 834 F.2d 1017, 5 USPQ2d 1110, 1111 (Fed. Cir.
1987). The critical issue in genericness cases is whether
members of the relevant public primarily use or understand
the term sought to be registered to refer to the category
or class of goods or services in question. See In re
Leatherman Tool Group Inc., 32 USPQ2d 1443, 1449 (TTAB
1994); and In re Women’s Publishing Co. Inc., 23 USPQ2d
1876, 1877 (TTAB 1992). Our principal reviewing court has
recently reaffirmed, in In re American Fertility Society,
Serial No. 75/748,353
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188 F.3d 1341, 51 USPQ2d 1832, 1836 (Fed. Cir. 1999), the
two-step inquiry set out in Marvin Ginn to determine
whether a mark is generic: First, what is the category or
class of goods at issue? Second, is the term sought to be
registered understood by the relevant public primarily to
refer to that category or class of goods? H. Marvin Ginn
Corporation v. International Association of Fire Chiefs,
Inc., 782 F.2d 987, 228 USPQ 528, 530 (Fed. Cir. 1986).
The Trademark Examining Attorney contends that the
category or class of services involved herein is real
estate agencies providing exclusive buyer’s agents.
(Trademark Examining Attorney’s appeal brief, p. 3).
The Examining Attorney contends, further, that the
initialism “EBA” is increasingly used to identify a real
estate agent who works exclusively for the homebuyer rather
than the seller, and that the designation EBA is the
generic name for a category or genus of services which fit
perfectly with applicant’s real estate agency services as
recited and promoted.
In support of her position, the Trademark Examining
Attorney submitted lists of initialisms from several
websites, including the following:
EBA – Exclusive Buyer’s Agent
<< http://www.acronymfinder.com/af-query.asp?String=exact&Acronym=eba >>
Serial No. 75/748,353
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Additionally, the Trademark Examining Attorney
submitted a number of excerpts from articles in the
LEXIS/NEXIS database demonstrating use of the terms:
The Exclusive Buyer Agent (EBA) works for an
office that does not take listings of any kind and
represents only buyers. “Here’s How To Pick A
Buyer’s Real Estate Agent,” by Dana Simon, The
Tulsa World, May 17, 1997.
Q: There aren’t many exclusive buyer’s brokers,
are there? …
A: No, there aren’t many – we call them EBAs –
exclusive buyer’s agents… “A maverick, and mighty
proud of it,” Broward Daily Business Review,
January 31, 1997.
Exclusive buyer agents represent the home buyer in
transactions… ‘An EBA’s job is to get the buyer
the best price on the best terms, and provide the
true facts as to value, market, neighborhood
conditions and obvious physical defects,’ Early
said. “JUST LISTED: A seller’s market,”
Milwaukee Journal Sentinel, January 11, 1998.
Moreover, based upon Internet searches conducted in
August 2000 and again in September 2001, the Trademark
Examining Attorney has submitted for the record numerous
third-party uses of the term EBA. These screen prints are
drawn primarily from the websites of real estate agents
working exclusively for homebuyers. The following are
representative examples of excerpts taken from these sites:
The Acronyms NAEBA (National Association of
Exclusive Buyer Agents) and EBA (Exclusive Buyer
Agents) are quickly becoming staples in the real
estate community, and recognizable by astute
buyers everywhere. ,
accessed on August 6, 2000.
Serial No. 75/748,353
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The Exclusive Buyer Agent (EBA) works for an
office that does not take listings of any kind and
represents only buyers.
,
accessed on August 6, 2000.
A section of our web site explains this
revolutionary concept of EBAs and why it’s in your
best interest to have an Exclusive Buyer’s Agent
in today’s real estate transactions.
< http://buyersinternational.com/form.htm>,
accessed on August 6, 2000.
The discussion below explains some of the ideas
and history of the Exclusive Buyer’s Agent
movement in real estate.
•Μ EBAs: Consumer Protection …
… the national and state associations of Realtors
have worked diligently to muddy the waters for
consumers, but even the Oklahoma Supreme Court
affirms that EBAs save buyers money!
, accessed on August 6, 2000.
NEED AN EBA?
Need an Exclusive Buyer’s Agent outside of Austin?
Enter you (sic) information and we will have an
agent contact you within 24 hours.
,
accessed on August 6, 2000.
Exclusive Buyer Agents (EBA) only work in
companies that never represent sellers, and are
focused at (sic) finding their buyer-clients the
best right home, at the best possible price.

accessed on September 28, 2001.
American Directory of Exclusive Buyer Agents
and Exclusive Buyer Brokers
When you start thinking “buy home” and start
looking for new homes or residential real estate
listings, check out a relatively new breed of
homebuyer advocate called an Exclusive Buyer Agent
Serial No. 75/748,353
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(EBA), also known as an Exclusive Buyer Broker.
EBAs never list real estate for sale on mls
because they are in the business of providing
dedicated loyalty and confidentiality to people
like you who want to buy a home. It makes no
difference whether you are experienced or a first
time home buyer, EBAs will tell you where the best
real estate sales can be found, and they will help
you buy a home at the best possible price. Pick a
state and choose your city. Enjoy free hot tips,
numerous home buying articles, and extensive local
information about schools, recreation, loans, the
local market, how to get good deals, the best
neighborhoods, as well as exclusive buyer agency.
Contact an EBA in the city of your choice to
discuss why you should have someone representing
you for a change. Learn why purchase negotiations
are done behind closed doors. Find out what
happens if a property has hidden undisclosed
problems. For one of the largest investments of
your life, why wouldn’t you want your own buyer
broker on your side? From California on the west
coast to Massachusetts on the east coast to
Florida in the south and most other states, you
will find a friendly EBA ready to be of service.

accessed on September 28, 2001.
… EBAs can do more for buyers than any other kind
of agent … EBAs give their clients a competitive
edge ordinary agents typically can't match … EBAs
"live" their ethical commitment. That is what
separates them. EBAs make the career choice to
care about their clients’ rights, and won’t
Serial No. 75/748,353
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subject their clients to the possibility of “Dual
Agency” nor “Designated Agency,” nor
“Transactional Agency.”
,
accessed on September 28, 2001.
Real Estate Designations:
EBA - Exclusive Buyers Agent

accessed on September 28, 2001.
‘What we are going to concentrate on is doing
fewer things and doing them better and getting
away from telling people how to run their
business,’ says Early. ‘A national organization
should do a better job of presenting the concept
of what an EBA is.
, accessed on September 28, 2001.
In spite of this substantial evidence, applicant
argues that the Trademark Examining Attorney has not
sustained her burden of proof. Applicant contends that
“[a]pplicant’s services cover a much broader range of
services including the management, advertisement,
acquisition, and sale of real property,” further conceding
that while the Trademark Examining Attorney’s evidence “may
support a finding that the term EBA is descriptive of some
of applicant’s services, the definitions do not support a
genericness determination.” (applicant’s brief, p. 5).
The record shows that the “exclusive buyer agent” (or
“exclusive buyer’s agent”) is a relatively new concept in
the real estate business – emerging forcefully in the mid-
1990’s. Given the newness of this practice in the
Serial No. 75/748,353
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industry, the term “exclusive buyer agent” is a relatively
new term. In light of its newness, it is not surprising
that the three-word expression is often defined the first
time it appears within a webpage. Nonetheless, it is clear
from the record that “exclusive buyer agent” is now a
generic designation for a fairly well established bundle of
services being offered by some agents in the real estate
industry. Stated differently, this three-word term is
incapable of becoming a source indicator for real estate
agency services.
Turning then to consider the EBA initialism, we note
from the record that the real estate industry is awash in
three letter initialisms presented in all capital letters
(e.g., MLS, CMO, FHA, ARM, APR, CRV, CMA, GPM, etc.). The
first time it appears in a newspaper article or webpage,
the EBA initialism frequently follows “exclusive buyer
agent.” It appears in a sentence as an appositive, or is
included in parenthesis and/or quotations marks. Some
excerpts include explicit notations that EBA is shorthand
for “exclusive buyer agent.” [“… we call them EBAs –
exclusive buyer’s agents…” Broward Daily Business Review,
supra]. As an abbreviated designation, the EBA initialism
is even newer in the field of real estate than is the
concept and terminology of “exclusive buyer agent.”
Serial No. 75/748,353
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However, the online abbreviation, acronym and initialism
entries, with adequate corroboration from the NEXIS and
Internet entries, demonstrate to our satisfaction that
within the real estate industry, the term EBA is now “so
generally understood as representing descriptive words as
to be accepted as substantially synonymous”2 with the term
“exclusive buyer agent.” Hence, it is reasonable to
conclude that a prospective real estate buyer is likely to
understand the term, EBA, as naming the identified
services.
As noted above, these designations (“exclusive buyer
agent” and EBA) have emerged rather rapidly. The fact that
this form of agency is just coming into its own is
sufficient basis for the explanations often contained in
these excerpts – not as applicant argues, because “members
of the relevant public would not immediately understand
such use of the term.” (applicant’s brief, p. 6).
Applicant also points out dozens of other terms that
appear in the Trademark Examining Attorney’s Nexis/Lexis
and Internet excerpts to describe real estate services
focused on buyers (applicant’s brief, pp. 6 - 7). But of
2 Modern Optics, Inc., v. Univis Lens Co., 234 F.2d 504, 110
USPQ 293 (CCPA 1956)
Serial No. 75/748,353
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course, there may be more than one “name” for a category of
services, as is the case herein.
As noted by Professor McCarthy:
There is usually no one, single and exclusive generic
name for a product. Any product may have many generic
designations. Any one of those is incapable of
trademark significance:
All of the generic names for a product belong in the
public domain … .
In one case the proponent of trademark status for the word
“Mart” argued that the word is quaint and not generally
used. But the court replied that the test is not whether
a term is more frequently used colloquially than its
synonyms (such as “store” or “market”), but whether it
still retains its generic meaning. “Mart” was held to
have no other meaning among the consuming public than as a
synonym for “store” or “market” and hence was generic.
[Footnote omitted] Similarly another court said that the
fact that there are other generic names than “Super Glue,”
such as “Instant Glue” or “Ten Second Glue,” does not
preclude generic status: “[T]he existence of synonyms for
a term does not mean the term is not generic. There may
be more than one term which the consuming public
understands as designating a category of goods.” [footnote
omitted]. Thus, while prerecorded audio tape cassettes of
books may be generically called “audio books,” “talking
books,” “book cassettes,” “cassette books,” or “taped
books,” the designation “recorded books” was held to be a
generic name by the Trademark Board, noting that a product
can have more than one generic name. [footnote omitted]”
In another example, the Fourth Circuit found that “ale
house” was a generic name and one of several generic names
for places that serve beer, with or without food.
“[Plaintiff] has no protectable interest in the words ‘ale
house.’ They are generic words for a facility that serves
beer and ale, with or without food, just as are other
similar terms such as ‘bar,’ ‘lounge,’ ‘pub,’ ‘saloon,’ or
‘tavern.’ All serve alcohol alone or both food and
alcohol.” [footnote omitted]
While the Lanham Act uses the singular article “the,”
referring to “the generic name,” the author does not
believe that this is the result of any considered judgment
by Congress and should not be read as changing the rule of
the case law that there can be more than one generic name
of a thing.[footnote omitted]
Serial No. 75/748,353
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2 J. Thomas McCarthy, McCarthy on Trademarks and Unfair
Competition §12:9 (4th ed. July 2002).
Applicant argues at length in its brief that acronyms
or initialisms for commonly understood terms have been
registered on the Principal Register. However, each case
must be determined on its own merits. See In re Nett
Designs Inc., 236 F.3d 1339, 57 USPQ2d 1564, 1566 (Fed. Cir.
2001) ["Even if some prior registrations had some
characteristics similar to [applicant's] application, the
PTO’s allowance of such prior registrations does not bind
the Board or this court"]; In re Broyhill Furniture
Industries Inc., 60 USPQ2d 1511, 1514 (TTAB 2001); and In re
Pennzoil Products Co., 20 USQP2d 1753, 1758 (TTAB 1991).
Moreover, the records of these registered initialism
marks are not before us. For example, applicant argues
that the registered mark EBA means “Excess Breath Alcohol”
when applied to breath alcohol measuring devices,3 and
“Everything but Anchovies” when applied to pizza.4 However,
these alleged meanings are not drawn from the face of these
registrations (which themselves are not of record), and we
have no reason to believe that these two initialisms are
3 Reg. No. 1,723,342 issued to Alcohol Countermeasure Systems
Corp. on October 13, 1992.
4 Reg. No. 2,130,658 issued to Felicci’s Mama Mia, Inc. on
January 20, 1998.
Serial No. 75/748,353
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used interchangeably with the full expressions in their
respective fields.
Finally, how the United States Patent and Trademark
Office has treated other EBA initialisms in such disparate
areas as breath alcohol measuring devices and pizza
toppings is totally irrelevant to the issue of what the EBA
initialism represents within the field of real estate.
Hence, we find applicant’s arguments on this point to be
unpersuasive.
In conclusion, we find that the initialism
dictionaries, the LEXIS/NEXIS evidence as well as the
excerpts of Internet webpages support a finding that
purchasers and prospective purchasers understand the term
EBA as referring to a specific category of real estate
agency services. Hence, we find that the initialism EBA is
itself generic for the category of, as the Trademark
Examining Attorney states, “real estate services
provid[ing] exclusive buyers agents,” and is therefore
incapable of registration on the Supplemental Register for
“real estate agencies” because such a recital would include
agencies providing exclusive buyer’s agents.
Decision: The refusal under Section 23 of the
Trademark Act is affirmed.