Amazon Technologies, Inc.v.Geoffrey R. Daigle

Trademark Trial and Appeal Board

May 28, 2013

No. 92054425 (T.T.A.B. May. 28, 2013)

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB

Mailed:
May 28, 2013

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

Amazon Technologies, Inc.
v.
Geoffrey R. Daigle
_____
Cancellation No. 92054425
_____

Linda K. McLeod of Kelly IP, LLP for Amazon Technologies, Inc.

Stacia N. Lay of Hendricks & Lewis PLLC for Geoffrey R. Daigle.
_____

Before Kuhlke, Adlin and Masiello, Administrative Trademark Judges.

Opinion by Masiello, Administrative Trademark Judge:

Amazon Technologies, Inc. has petitioned to cancel Registration No. 2531776
for the mark WINDOW SHOPPING (in standard characters) for services in
International Class 42, identified as follows:

Cancellation No. 92054425

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Information services, namely, providing information on a
wide variety of topics, namely news, weather, arts,
counseling services, automobiles, childcare, consumer
products, sports, travel, and entertainment, namely,
movies, videos, and music via a global computer network.1
As grounds for cancellation, petitioner alleges that the term “window
shopping” is the generic name for the respondent’s identified services and is
therefore incapable of functioning as a mark. Trademark Act § 14(3), 15 U.S.C.
§ 1064(3). Petitioner also alleges, under Trademark Act § 45, 15 U.S.C. § 1127,
that respondent has abandoned any rights he may have had in the term “window
shopping” by failing to enforce his rights against widespread third-party use of the
term, so that the term has lost its significance as an indication of origin to the
extent that it ever had such significance. Respondent has denied the salient
allegations of the petition for cancellation. The case has been fully briefed.
I. The Record.
The parties have submitted the case for decision under a stipulation for
accelerated case resolution, pursuant to which the parties submitted, with their
briefs, testimony in the form of declarations with accompanying documentary
exhibits. The record includes the pleadings and, by operation of Trademark Rule
2.122, 37 C.F.R. § 2.122, the registration file for respondent’s mark. The record also
includes the following declarations and evidence:
A. Petitioner’s Evidence.
1. Declaration of Stephanie H. Bald, petitioner’s counsel, with attached
exhibits 1 through 301 (“Bald I”).

1 Registration No. 2531776 issued on January 22, 2002; renewed.
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2. Supplemental declaration of Stephanie H. Bald, with attached exhibits
1 through 24 (“Bald II”).

3. Declaration of Ronald R. Butters, Ph.D., petitioner’s expert in the field
of linguistic science, with attached exhibits A through C. (“Butters I.”)
Exhibit C consists of Dr. Butters’ Expert Report, with Exhibits 1
through 4 (“Butters Report”).

4. Supplemental declaration of Ronald R. Butters, Ph.D. (“Butters II”).

5. Declaration of Hal Poret, petitioner’s expert in the field of market
research, with attached exhibits A through C. Exhibit C consists of
Mr. Poret’s Expert Report, with Appendices A through C (“Poret
Survey”).

6. Supplemental declaration of Hal Poret, with attached Exhibit A (“Poret
II”).

B. Respondent’s Evidence.
1. Declaration of respondent Geoffrey R. Daigle, with attached Exhibit A
(“Daigle”).

2. Declaration of Stacia N. Lay, respondent’s counsel, with attached
exhibits 1 through 17 (“Lay”).

II. Standing.
To establish its standing, petitioner must prove that it has a real interest in
the outcome of this proceeding and a reasonable basis for its belief that it would be
damaged by the continued registration of respondent’s mark. Lipton Indus., Inc. v.
Ralston Purina Co., 670 F.2d 1024, 213 USPQ 185 (CCPA 1982). Petitioner is
engaged in electronic commerce and operates internet web sites through which
consumers may shop for and purchase a wide range of goods, including music,
movies, TV shows, video games, audio and print books, apparel, and electronics.
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Petitioner has made use of the mark shown below for a service that allows
consumers to shop online.2

Petitioner owns U.S. service mark application Serial No. 77652261 for the mark for
the mark shown above, which has been refused registration under Trademark Act
§ 2(d), 15 U.S.C. § 1052(d), on grounds of likelihood of confusion with respondent’s
involved registered mark.3 It is also established that respondent has objected, by
means of a cease-and-desist letter, to petitioner’s use of the designation AMAZON
WINDOW SHOP.4 These facts are sufficient to demonstrate that petitioner has a
real interest in this proceeding and therefore has standing. Lipton, 213 USPQ at
189; Ipco Corp. v. Blessings Corp., 5 USPQ2d 1974, 1976-77 (TTAB 1988).
Moreover, respondent has conceded in his brief that petitioner has standing to bring
this proceeding.5
III. Genericness.
Section 14 of the Trademark Act provides:
A petition to cancel a registration of a mark… may… be
filed…
(3) At any time if the registered mark becomes the generic
name for the goods or services, or a portion thereof, for
which it is registered. … If the registered mark becomes

2 Petitioner’s brief at 10; Bald I ¶ 24, Exhibit 32.
3 Bald I ¶27 and Exhibits 33 and 35.
4 Bald I, Exhibit 21 (respondent’s response to petitioner’s interrogatory No. 20).
5 Respondent’s brief at 16.
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the generic name for less than all of the goods or services
for which it is registered, a petition to cancel the
registration for only those goods or services may be filed.
A registered mark shall not be deemed to be the generic
name of goods or services solely because such mark is also
used as a name of or to identify a unique product or
service. The primary significance of the registered mark
to the relevant public rather than purchaser motivation
shall be the test for determining whether the registered
mark has become the generic name of goods or services on
or in connection with which it has been used.
15 U.S.C. § 1064(3).
A mark is a generic name if it refers to the class or category of goods and/or
services on or in connection with which it is used. 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 Chiefs, Inc., 782 F.2d 987, 228 USPQ 528
(Fed. Cir. 1986) (“Marvin Ginn”). The test for determining whether a mark is
generic is its primary significance to the relevant public. Trademark Act § 14(3); 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
Marvin Ginn, supra. Making this determination “involves a two-step inquiry: First,
what is the genus of goods or services at issue? Second, is the term sought to be
registered … understood by the relevant public primarily to refer to that genus of
goods or services?” Marvin Ginn, 228 USPQ at 530. Our primary reviewing court
has stated that a party charging genericness must prove its claim by a
preponderance of the evidence. Magic Wand, 19 USPQ2d at 1554; Stocker v.
General Conference Corp. of Seventh-day Adventists, 39 USPQ2d 1385, 1392 (TTAB
1996).
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As noted above, our first task under Marvin Ginn is to determine, based on
the evidence of record, the genus of respondent's services. “[A] proper genericness
inquiry focuses on the description of services set forth in the certificate of
registration.” Magic Wand Inc., 19 USPQ2d at 1552. However, in certain
circumstances it may be appropriate to consider other evidence to inform the
Board’s understanding of the nature of the identified services. In re Reed Elsevier
Properties Inc., 482 F.3d 1376, 82 USPQ2d 1378, 1380 (Fed. Cir. 2007) (approving
the Board’s review of the subject website); In re Steelbuilding.com, 415 F.3d 1293,
1298, 75 USPQ2d 1420 (Fed. Cir. 2005) (examining the subject website in order to
understand the meaning of terms for which coverage was sought and thereby define
the genus of covered services). In the case before us, it has been established that
the services identified in the registration “include the services currently offered” on
the website located at (“respondent’s
website”).6
The evidence shows that respondent’s website “contains links that visitors
can click on to take them to third-party websites to view products, services and
information offered or provided by third-parties”;7 that on such third-party
websites, users may “browse and/or purchase products, services and information
offered or provided by third parties”;8 that respondent “does not currently offer any

6 Bald I, Exhibit 24, response to petitioner’s request for admission No. 9. See also Lay ¶ 10
and Exhibit 9 (printouts from respondent’s website).
7 Bald I, Exhibit 24, response to petitioner’s request for admission No. 13.
8 Id., response to petitioner’s request for admission No. 14.
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of his own products on the website”;9 that third-party products are not offered “on”
the website,10 but rather on the linked third-party websites; and that “purchases
are not consummated ‘on’ [respondent’s] website… but rather ‘on’ the third-party
website offering the particular good(s), service(s) or information.”11 Respondent has
described his market as “the market of online referral services to retailers, services
and information sources….”12 Respondent obtains payments from “affiliate referral
programs” for featuring links to certain third-party websites on his website.13
Petitioner argues that the genus of services at issue is “window shopping
services.”14 As the central inquiry before us is the meaning of the expression
“window shopping,” petitioner’s suggestion asks us to leap immediately to the
ultimate conclusion that petitioner would like us to draw. Respondent argues that
there is nothing inadequate or inaccurate about the recitation of services set forth
on his registration certificate, and that the Board need not deviate from the
description of services in the registration.15 Respondent argues that “visitors to the
WINDOW SHOPPING website cannot make purchases directly from the site” and,
as a result, “‘information services’ is an eminently appropriate description of the

9 Id., response to petitioner’s request for admission No. 10.
10 Id., response to petitioner’s request for admission No. 11.
11 Id., response to petitioner’s request for admission No. 12.
12 Bald I, Exhibit 21 (respondent’s response to petitioner’s interrogatory No. 9).
13 Respondent’s brief at 12.
14 Petitioner’s brief at 27-34.
15 Respondent’s brief at 24.
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services because they are necessarily informational only.”16 Nonetheless,
respondent has offered the following “simplified” statement of the genus of his
services:
Online information services consisting of a website that
provides links to third-party websites offering products,
services, and information in connection with a wide
variety of subject matter areas.17
This proposal is supported by the evidence of record, is consonant with the
description of services on the registration certificate, and clarifies that description
to some extent. We find that it is a suitable description of the genus of respondent’s
services for purposes of our analysis.
In order to determine whether the designation WINDOW SHOPPING is
understood by the relevant purchasing public primarily to refer to the identified
genus of services, we must define the “relevant purchasing public.” When asked to
identify the classes and types of consumers for his services, respondent stated,
“Registrant’s services offered under the WINDOW SHOPPING mark are not geared
to any particular classes or types of consumers as they include a wide range of
affiliate shopping and information services.”18 Petitioner argues that the relevant
public consists of “the ordinary consumers interested in viewing, browsing, and/or
purchasing products, services or information online….”19 In light of the evidence,
we find that the relevant public consists of the very broad group of all persons who

16 Id. at 20.
17 Id.
18 Bald I, Exhibit 21, respondent’s response to petitioner’s interrogatory No. 8.
19 Petitioner’s brief at 34.
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make use of the internet for purposes of obtaining information, including
commercial information relating to goods and services.
With this in mind, we now consider whether the primary significance of the
designation WINDOW SHOPPING is understood by the relevant purchasing public
to refer to websites that provide links to third-party websites offering products,
services, and information. Evidence of the relevant public’s understanding of a
term may be obtained from any competent source, including consumer surveys,
dictionary definitions, newspapers and other publications. In re Reed Elsevier, 82
USPQ2d at 1380. “[E]vidence of competitors’ use of particular words as the name of
their goods or services is, of course, persuasive evidence that those words would be
perceived by purchasers as a generic designation for the goods and services.”
Continental Airlines, Inc. v. United Air Lines, Inc., 53 USPQ2d 1385, 1395 (TTAB
1999).
Petitioner has submitted, among other evidence, the expert report of Ronald
R. Butters, Ph.D., a Professor Emeritus of Duke University’s departments of
English and Cultural Anthropology. He attests to his expertise in the field of
linguistics.20 His report addresses “the extent to which speakers of current
American English use the verb window-shop generically.” His analysis included
consideration of all grammatical variants of window-shop (e.g., window-shopping,
window-shops, window-shopper), and both hyphenated and unhyphenated forms.21
The report’s methodology purportedly included consideration of descriptions of the

20 Butters I ¶¶ 2-8 and Exhibit A.
21 Butters Report ¶ 2.
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word found in professionally respected dictionaries of American English; and
examination of the primary data of linguistic use, i.e., ordinary English-language
usage as it appears in representative samples from books, newspapers, magazines,
cinema, television, and the internet. The report states that some dictionaries
include a limited definition of window-shop:
to look at articles in windows instead of actually buying.
AMERICAN COLLEGE DICTIONARY (1957);
To look at merchandise in store windows or showcases
without making purchases.
THE AMERICAN HERITAGE DICTIONARY OF THE ENGLISH LANGUAGE (4th ed. 2000);
Look at the goods displayed in shop windows, especially
without intending to buy anything.
THE NEW OXFORD AMERICAN DICTIONARY (2010).
However, the most detailed definition of window-shop disclosed in the Butters
Report is found in THE RANDOM HOUSE DICTIONARY OF THE ENGLISH LANGUAGE,
SECOND EDITION UNABRIDGED (1987):
1. to look at articles in the windows of stores without
making any purchases. 2. To examine or evaluate
merchandise for possible purchases, use, etc. [example
omitted]…. 3. To look at (merchandise) in the windows of
stores without making any purchases [example omitted].
The report’s discussion of the primary data of linguistic use traces the use of
the expression window-shop as far back as 1884 and then, focusing on use after
1995, puts forth numerous examples of linguistic use that support the broader
second definition from the RANDOM HOUSE DICTIONARY, i.e., examining or
evaluating merchandise for possible purchase, not only in the context of actual store
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windows, but in all contexts. On the basis of his review, Professor Butters
formulated his own comprehensive definition of window-shop for contemporary
American English:
to consider services or merchandise offered for public
examination through such media as showrooms, store
windows, or on the internet, regardless of whether the
shopper has any intent of making immediate purchases.22
More specifically, Professor Butters concludes that “Speakers of contemporary
American English use the term window-shop generically for online browsing and
shopping, and have done so for years.”23 This conclusion is supported by hundreds
of examples of usage from newspapers, magazines, and the internet, such as the
following:
I just did some window shopping on Dell.com Electronics
and Accessories.
Discussion found at , October 10, 2004.
This weekend I was doing some window shopping on
Amazon (adding things to my wishlist) and I came upon
Loveless Vol 8 manga….
Discussion found at , December 3, 2009.
You see, I’m a shoe addict, and the first step is admitting
it. “Hello, my name is Jenn, and I spend way too much
time ‘window shopping’ on Zappos.com.”
Discussion found at , August 26, 2010.
It is also supported by discussions in the press, such as the following:

22 Butters Report ¶3(b).
23 Id. at ¶ 3(c).
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According to the survey, more than two-thirds (68.6
percent) of consumers polled shop online. Online
shopping is split between those who “window shop” only
(50.6 percent) and those who do research and make
purchases (49.4 percent).
Popular online window-shopping activities include
researching and comparing features of different brands
(54.5 percent), comparing different retailers to find the
best price (52.3 percent) and finding the closest store
location to make a purchase (33.3 percent).
“Study: Online shopping to increase this holiday,” National Jeweler.com, October 3,
2007.
Respondent criticizes Professor Butters’ proposed definition as
“manufactured” and “made up” and urges us to disregard it “because it is irrelevant
to the question of whether the public understands WINDOW SHOPPING primarily
to be the name of the genus of the services identified in Mr. Daigle’s registration.”24
However, Professor Butters’ expertise qualifies him to analyze the common meaning
of the term at issue, and his definition is supported by primary data which consists
of usage by the public. We do agree with respondent’s objection25 to Professor
Butters’ conclusion that the expression WINDOW SHOP “is used in its generic
sense in the domain name www.windowshoppinginternational.com, in the site
name, ‘window shopping,’ and on the text of the home page of the … website.”
(Butters Report ¶ 29.) Nothing in the record indicates that Professor Butters has
the requisite expertise in trademark law to opine on the ultimate issue of this case.
Accordingly, we have given no consideration to this conclusion of Professor Butters.

24 Respondent’s brief at 31-32.
25 Id. at 32-33.
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Respondent also criticizes the primary materials underlying Professor
Butters’ definition and opinion (as well as the documentary evidence submitted
under cover of Bald I and Bald II, which is to some extent duplicative thereof)
because they “merely demonstrate use of ‘window shopping’ (or variations thereof)
to describe conduct, not use as the common name of any goods or services and
certainly not the services identified in Mr. Daigle’s registration”;26 and “[a]t most,
these materials show that people use ‘window shopping’ to describe something they
do….”27 Giving due regard to this observation, such evidence nonetheless strongly
indicates that window-shopping is generic with respect to respondent’s services.
The Board has often held that a term that names the “central focus” or “key aspect”
of a service is generic for the service itself, and the Board’s principal reviewing court
has approved this approach. In re Hotels.com LP, 573 F.3d 1300, 91 USPQ2d 1532
(Fed. Cir. 2009) (approving Board’s finding that hotels identified the “central focus”
of online lodging information and reservation services, rendering the mark
HOTELS.COM generic); In re Web Communications, 49 USPQ2d 1478 (TTAB 1998)
(WEB COMMUNICATIONS generic for publication and communication via the
World Wide Web, and also for consulting services directed to assisting customers in
setting up their own websites for such publication and communication); In re
Harcourt Brace Jovanovich, Inc., 222 USPQ 820 (TTAB 1984) (LAW & BUSINESS
generic for services of arranging and conducting seminars in the field of business
law); In re A La Vieille Russie, Inc., 60 USPQ2d 1895 (TTAB 2001) (RUSSIANART,

26 Id. at 26.
27 Id. at 29.
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being generic for a particular type of art was also generic for dealership services
directed to that field); In re Tires, Tires, Tires Inc., 94 USPQ2d 1153, 1157 (TTAB
2009) (Where “tires” was the generic name of the goods sold in retail stores, being a
“key aspect” of such services, it was found to be generic for the retail sales services);
In re Candy Bouquet International, Inc., 73 USPQ2d 1883 (TTAB 2004) (because
CANDY BOUQUET is generic for gift packages of candy, it also is generic for
applicant's retail, mail and computer ordering services therefor); In re Log Cabin
Homes Ltd., 52 USPQ2d 1206 (TTAB 1999) (LOG CABIN HOMES, being generic for
a type of building, was also generic for architectural design services directed to that
type of building and for retail outlets featuring kits for construction of that type
building).
We have noted respondent’s argument that we should not consider the use of
variants of window-shopping in domain names or URLs as examples of generic use
of the term.28 We agree and have given no weight to such usages. As domain
names and URLs are, in essence, addresses, words appearing in them may lack the
meanings they would have if they were used in ordinary speech. We also agree with
respondent’s contention that uses of the composite mark AMAZON WINDOW
SHOP should not be regarded as examples of generic use of window shop,29 as
petitioner has purported to use this designation as a service mark. Nobelle.com
LLC v. Qwest Communications International Inc., 66 USPQ2d 1300, 1306 (TTAB
2003).

28 Id., fn 11.
29 Id. at 25, fn 10.
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The examples of linguistic usage contained in the Butters Report and Bald I
and II show that window-shopping is a generic expression for a customer activity
consisting of online browsing. We must consider whether that activity is a key
aspect or central focus of respondent’s online information services. As discussed
above, respondent’s website is not a retail site on which respondent offers for sale
any goods of his own; rather, respondent’s consumers browse his website for links to
third-party commercial websites on which they may consider and purchase the
products and services of others.30 On the present record it is apparent that the only
inducement offered to consumers by respondent’s informational website is the fact
that they will find there links to websites, including commercial websites of others,
which the consumers may have an interest in visiting.31 In other words, respondent
provides a website that facilitates the activity of window-shopping by its users, who
browse both respondent’s website and the third-party websites to which it links.
The evidence shows that similar online services have been described by others as
window-shopping services, for example:
whatsbuzzing is an online window shopping service that
helps you tap into the shopping buzz around shopping
sites and brands that you are interested in. the service is
called whatsbuzzing window shopper. before you go
shopping, you often want to see what’s on sale at your
favorite stores, check out what’s the latest buzz around
brands and even want to know what other shoppers like

30 Bald I, Exhibit 24, responses to petitioner’s requests for admission Nos. 10, 13 and 14.
31 We need not discuss the fact that respondent’s website also provides a service that runs
not to consumers but rather upstream to the commercial entities to which the website links.
This service is a type of advertising service; it is not identified on respondent’s registration
certificate and accordingly is not relevant to our analysis.
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you find interesting. you can do all this at one site –
whatsbuzzing.com.
Techie Buzz, , May 15, 2006 (Butters II, Figure 2).
This Just In: New York Mag Launches Shop-A-Matic
Window Shopping Service
One of the best ways to find one-of-a-kind and super-
stylish homewares is to browse the boutiques of New
York. But most of us are at a geographic disadvantage,
not to mention too busy to window-shop full time. That’s
the inspiration behind Shop-A-Matic, a new window-
shopping “service” from New York Magazine.
Think of it as an online catalog where someone does the
cool hunting for you but you have to hit the pavement to
purchase most of the products (although some are
available online).
Casasugar.com, August 22, 2007 (Butters II, Figure 4).
Online store of the week

Call it the online window shopper.

AbsoluteShopper.com, to launch Aug 24, is designed to
help find the right gift, offering creative suggestions in
numerous categories and linking the shopper to the online
retail site.
…
The founder of AbsoluteShopper.com, Tina LaValliere of
Deerfield, Ill., founded the site after becoming frustrated
with option overload on the Internet.

She created AbsoluteShopper.com to reduce time spent
hopping from site to site.

“Industry Not,” The Cincinnati Enquirer, August 11, 1999 (Bald I, Exhibit 75).
WindowShopping.com is a window shopping mall offering
Internet store fronts and a fully functional classified web
ad service to help small businesses
Item in results of Alta Vista Search of “window shopping” (Bald I, Exhibit 267).
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Need some help Window Shopping, eh? Window shopping
allows the user to randomly view sites registered within
Success Marketplace. We have included many…
Item in results of Alta Vista Search of “window shopping” (Bald I, Exhibit 268).
Letwindowshop.com Featured Members reach millions of
users who are looking to make smarter decisions about
where to spend their time and money. … We are a
window shopping network. (Shopping For Fun and
Knowledge) where the public comes to see who’s doing
what and where they are located as well as looking for
sales and specials posted only here on
Letswindowshop.com.
Our mission is simple… Offer a unique way of exploring
businesses as though you were walking through stores
that you may or may not know exist.
Letswindowshop.com (Bald I, Exhibit 281).
The evidence discussed above supports a finding that the activity of window-
shopping is the central focus of respondent’s online information service and,
accordingly, that the designation WINDOW SHOPPING is generic for the services
identified on respondent’s registration certificate.
We have noted respondent’s argument that there are many other generic
designations for online services and that these alternative names indicate that
there is no competitive need among others to use respondent’s mark to identify their
services. Respondent cites the terms “online stores,” “virtual online mall,” “online
retail site,” “digital storefronts,” “e-tailers,” “e-shops,” e-commerce site,” and
“eCommerce” as available options.32 We note, however, that none of these options
accurately describes the services set forth on respondent’s registration, inasmuch as

32 Respondent’s brief at 40.
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these terms describe services that provide facilities for actual retail purchases. In
any event, it is recognized that there may be more than one generic name for a
product or service. Continental Airlines, 53 USPQ2d at 1394; In re Recorded Books,
Inc., 42 USPQ2d 1275, 1281 (TTAB 1997); In re Sun Oil Co., 426 F.2d 401, 165
USPQ 718, 719 (Rich, J. concurring) (CCPA 1970). We have also noted respondent’s
argument that his mark may be an “apt name” or a “good description” of its service
without being the generic name of the service.33 Nonetheless, since the only service
offered to consumers by respondent’s website is a display of other websites that
facilitates visiting the websites of others, the evidence indicates that users would
refer to the site as a “window-shopping service” or a “window-shopping website.”
As a second evidentiary foundation for its genericness claim, petitioner
retained ORC International, a market research firm, to conduct a market survey,
the results of which are set forth in Poret I, Exhibit C (“Expert Report of Hal
Poret”). The survey subjects were 300 persons who either had used an information
website in the last three months or were likely to do so in the ensuing three months.
They took the survey on a desktop or laptop computer. The survey was of the so-
called “Teflon” format, wherein the subjects are given instruction as to the
difference between a brand name and a common name, are then subjected to
“gatekeeping questions” to test the subjects’ understanding of the instructions (with
elimination of those who fail to correctly answer the questions), and are finally
asked to categorize each of a series of designations as either a brand name or a

33 Id. at 28-29.
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common name (with the option to say “I don’t know”). In petitioner’s survey, the
designation WINDOW SHOPPING was included in the survey series with six other
designations. In the context of petitioner’s survey, 93% of respondents categorized
WINDOW SHOPPING as a common name; 4% categorized it as a brand name; and
3% indicated that they did not know.34 In his report, Mr. Poret concluded, “it is my
opinion that WINDOW SHOPPING is a generic term for the types of services for
which it is registered.”35
Respondent criticizes the instructions given to the survey subjects and argues
that they “do not account for the somewhat unique circumstances of this case which
involves a designation that does have a recognized generic application (just not the
one [petitioner] champions in this proceeding) but which has been used in a new
context. Put differently, Amazon’s survey does not demonstrate that participants
understood that a designation which has a recognized generic meaning could
nonetheless function as a brand name or mark in a different context, even if the
brand name has some descriptive or informational suggestions about the services
offered under the brand name. And by defining ‘common name’ as including those
that describe what the website is for, the survey improperly fails to take into
account that a mark can still inform, describe, and/or suggest without being the
generic name of the relevant services.”36 Respondent also argues that the survey
“was heavily weighted to gauge public recognition for a mark not genericness,”

34 Poret I, Exhibit C, p. 8.
35 Id. at 13.
36 Respondent’s brief at 35.
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inasmuch as the brand names given as instructional examples and the other brand
names included in the survey alongside the designation WINDOW SHOPPING
“were either extremely well known marks and/or arbitrary marks, both of which
would be readily recognized as brands.”37
We share some of respondent’s concerns regarding the form of the survey. In
particular, we note that subjects were instructed as follows as to the nature of
common names:
On the other hand, common names are words used to
identify or describe a type of website – in other words,
what the website is for. A common name can be used
by more than one company or organization to identify or
describe their website.
Poret I, Exhibit C, Appendix B (bold emphasis supplied; other emphasis in original).
To say that a term identifying “what [a] website is for” is the common name
of the website may be too broad an instruction. The name for a purpose of a website
may not, in every case, be a generic name for the website. These instructions may
induce subjects to consider words that describe or suggest any potential use of a
website to be a “common name” for the website. While we appreciate that these
instructions might be inspired by the concept of “key aspect” or “central focus”
discussed above, we are concerned that they may open too wide a door to potential
misunderstanding by the subjects.
We also agree with respondent’s observation that the examples of brand
names given in the instructions, the gate-keeper questions, and the survey were

37 Id.
Cancellation No. 92054425

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unnecessarily weighted toward fanciful marks, as opposed to marks composed of
ordinary words. The brand names presented were WALMART, ITUNES,
YOUTUBE, BING, NEXTAG, SHOPZILLA, and TWITTER. Of these marks, only
TWITTER is an ordinary word, but it is a well known mark. In this context, there
was a danger that subjects would believe that any ordinary word or any phrase
composed of ordinary words is a common name, rather than a brand name. For
these reasons, we find the petitioner’s survey to be of limited probative value and
we have not relied on it in making our determination.
We have carefully considered all of the evidence and arguments submitted by
the parties on the issue of genericness, including those that we have not specifically
discussed. We conclude that petitioner has demonstrated, by a preponderance of
the evidence, that WINDOW SHOPPING is the generic name of an activity that is
the central focus of the online services identified in respondent’s registration. We
find that petitioner has met its burden of demonstrating that WINDOW
SHOPPING has become the generic name of respondent’s services, within the
meaning of Section 14(3).
In view of our determination on the issue of genericness, we do not reach the
separate abandonment claim.
Decision: The petition for cancellation on the ground that the registered
mark has become the generic name of the services for which it is registered is
GRANTED, and the respondent’s registration will be cancelled in due course.