American Institute of Certified Public Accountants

Trademark Trial and Appeal Board

Jan 16, 2003

No. 75626097 (T.T.A.B. Jan. 16, 2003)

Hearing: Paper No. 18
September 18, 2002 GFR
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re American Institute of Certified Public Accountants
________
Serial No. 75/626,097
_______
William M. Ried and Michael K. Cantwell of Willkie, Farr
and Gallagher for American Institute of Certified Public
Accountants.
Jennifer M. Martin, Trademark Examining Attorney, Law
Office 116 (Meryl Hershkowitz, Managing Attorney).
_______
Before Quinn, Chapman and Rogers, Administrative Trademark
Judges.
Opinion by Rogers, Administrative Trademark Judge:
Applicant has applied to register, on the Principal
Register, UNIFORM CPA EXAMINATION [the mark] in
International Class 16 for goods identified as “printed
matter, namely, practice accounting examinations;
accounting exams; accounting exam information booklets; and
prior accounting examination questions and answers.” The
application includes a claim of first use of the mark, and
THIS DISPOSITION IS
CITABLE AS PRECEDENT
OF THE TTAB
Ser No. 75/626,097
2
first use of the mark in commerce, as of May 1948. Also,
during prosecution, the application was amended to include
a claim that the mark has acquired distinctiveness; and
registration is, therefore, sought under Section 2(f) of
the Lanham Act, 15 U.S.C. §1052(f).
In the examining attorney’s initial Office action,
registration of the mark was refused on the theory that it
is a descriptive designation for applicant’s goods and,
further, “appears to be generic as applied to the goods.”
Applicant argued that the mark is not generic, and amended
to seek registration under Section 2(f). The examining
attorney withdrew the refusal to register the entire mark,
but asserted that CPA EXAMINATION is generic for
applicant’s goods and would have to be disclaimed, pursuant
to Section 6 of the Trademark Act, 15 U.S.C. § 1056. When
this requirement was made final, applicant filed a notice
of appeal to the Board and requested reconsideration, which
led to Board suspension of the appeal. After the request
for reconsideration was denied by the examining attorney,
the appeal was resumed. The appeal is fully briefed and
applicant’s counsel and the examining attorney presented
oral arguments. We affirm the requirement that applicant
disclaim the exclusive right to use CPA EXAMINATION, apart
from the mark as a whole.
Ser No. 75/626,097
3
The record that has been created is sizable and the
arguments that have been presented in the briefs and at the
oral hearing are lengthy. We consider first, the record,
including what it reveals about applicant and its use of
UNIFORM CPA EXAMINATION.
Applicant’s Goods and Mark
To support its amendment to proceed under Section
2(f), applicant submitted the declaration of Richard I.
Miller, applicant’s secretary and general counsel. In this
declaration, Miller asserts that applicant has made
“substantially exclusive and continuous use” of UNIFORM CPA
EXAMINATION “in interstate commerce for at least five years
immediately preceding the date of filing of” the
declaration.
In addition, to support its request for
reconsideration of the disclaimer requirement, applicant
submitted the declaration of Craig N. Mills, its executive
director of examinations. Mills states that applicant’s
exams are “used by the Boards of Accountancy of all fifty
states, the District of Columbia, Guam, Puerto Rico and the
U.S. Virgin Islands… to assess the qualifications of
individuals seeking certification as CPAs.” He explains
that the Boards of Accountancy, established by states and
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4
legislatures, “have been given exclusive authority over the
certification of CPAs” and that one may not become a CPA
without satisfying the requirements of a state or
territorial board.
In regard to the relationship of applicant and the
state and territorial boards, Mills asserts, “upon
information and belief,” that, “since 1917, the AICPA has
prepared and graded the examination used by the State
Boards as the primary means of measuring the technical
competence of candidates to become CPAs”; that “since at
least as early as 1946, the AICPA has distributed this
examination to the State Boards under the trademark UNIFORM
CPA EXAMINATION”; and that “since 1952, the UNIFORM CPA
EXAMINATION has been the only examination an individual
could take to obtain certification as a CPA in the United
States of America.”
Additional information regarding applicant can be
gleaned from findings of fact in the reported decision of
American Institute of Certified Public Accountants v.
American Institute of Certified Public Accountants, Inc.,
et al, 183 F.Supp. 926, 125 USPQ 487 (D.C.P.R. 1960). In
this case, plaintiff [applicant] obtained an injunction
against defendant’s use of plaintiff’s name and variations
thereof. The decision, issued eight years after applicant
Ser No. 75/626,097
5
reportedly became the sole source of examinations
individuals in the various states could take to become
CPAs, describes some of applicant’s history. The District
Court found that “plaintiff [applicant] prepares a two and
one-half day examination in accounting, auditing and
commercial law, and offers it to the states and territories
as a basis for their certified public accountant
examination” and that such had been done “for many years”;
and that, to become a member of applicant’s organization
“one must be a certified public accountant and must also
have passed an examination satisfactory to [applicant]. If
the examination which the prospective member took as a
basis for obtaining his certificate as a certified public
accountant from a governmental authority is considered by
[applicant] to be inadequate, or … took no such
examination, [applicant] gives the applicant [for
membership] a special examination.” Also, the District
Court found that applicant had produced “a publication
entitled ‘Uniform CPA Examination Questions--1954-56,’” in
April 1957 and applicant’s name appeared thereon as the
publisher.
The record before us also includes copies of some of
applicant’s web pages that discuss its examination. In
these, applicant frequently refers to “the Examination”
Ser No. 75/626,097
6
[utilizing an upper case “E”] when referring to the test it
prepares, but also refers to “the examination site”
[utilizing a lower case “e”]. Applicant also posts the
following confidentiality statement, which uses
“examination(s)” [again, utilizing a lower case “e”] except
in the references to “Uniform CPA Examination” and in the
listing of a link to a web page for “Examinations Team
Publications”:
Nondisclosed Uniform CPA Examination and Candidate
Confidentiality Statement
The Uniform CPA Examination is nondisclosed, which means
that the questions remain secure after the examination has
been administered. However, the AICPA publishes questions
that have been used on the examination, but will not be
used on future examinations, in several publications (see
Examinations Team Publications).1
Candidates and others must not disclose the questions after
the examination has been administered. Candidates are
required to read the following statement of confidentiality
on each Uniform CPA Examination Booklet and to sign and
date the front of the Booklet, signifying that they agree
to comply with the policy, before they are allowed to open
the Booklet.
I hereby attest that I will not divulge the
nature or content of any question or answer to
any individual or entity, and I will report to
the board of accountancy any solicitations and
disclosures of which I become aware. I will not
remove, or attempt to remove, any Uniform CPA
Examination materials, notes, or other
unauthorized materials from the examination room.
1 This underscoring on applicant’s web page is assumed to
indicate a link to another web page.
Ser No. 75/626,097
7
I understand that failure to comply with this
attestation may result in invalidation of my
grades, disqualification from future
examinations, and possible civil and criminal
penalties.
Excerpted Stories from the NEXIS Database in the Record
There are of record many reprints of excerpts taken
from the NEXIS database of newspaper, periodical and wire
service reports, submitted by both applicant and the
examining attorney. The initial NEXIS submissions from
both the examining attorney and applicant were retrieved
via searches for the phrase “Uniform CPA Examination,”
because, at that point in prosecution, the question was
registrability of the entire phrase, not whether CPA
EXAMINATION should be disclaimed. Nonetheless, the
excerpts are helpful in resolving the disclaimer question.
Many of the excerpts submitted by the examining
attorney with her initial Office action show “CPA” and
“Certified Public Accountant(s)” used interchangeably in
phrases referring to applicant’s exam. Other excerpts show
use of “exam” or “examination” [with a lower case “e”] in
the manner of a generic term, even when some of these
excerpts may be read as referring to applicant’s exam.
Some excerpts refer to the “uniform” exam as that of a
particular state, rather than as an exam of applicant’s
Ser No. 75/626,097
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creation. And still other excerpts show use of “CPA,”
“CPAs” and “certified public accountant” generically, such
as the following:
… Laura McNutt of Telford has passed the Pennsylvania
Uniform Certified Public Accountant Examination. … -- The
Morning Call (Allentown), July 19, 1999.
* Accounting Award – Lisa Sellers … received the Iowa
Society of Certified Public Accountants Silver Award for
earning the second highest score in the state on the
Uniform Certified Public Accountants Examination. -- The
Des Moines Register, June 30, 1999.
The Tennessee Society of CPAs presented the John S. Glenn
Award, the most prestigious award of the Educational &
Memorial Foundation of the TSCPA, to …. -- The Tennessean,
June 27, 1999.
… Fish has served as a NASBA [National Association of State
Boards of Accountancy] regional director since 1998. The
Great Lakes Region includes member accountancy boards in
Illinois, Indiana, Michigan, Ohio, Pennsylvania and
Wisconsin. NASBA serves as a forum for the nation’s state
boards of accountancy, which administer the Uniform CPA
examination, license certified public accountants and
regulate the practice of public accountancy in the United
States. -- The Pantagraph (Bloomington, Il.), June 13,
1999.
The AICPA is the national professional organization of CPAs
with more than 320,000 members committed to the highest
standards of quality, independence and ethics in their
practice. It sets auditing standards, upholds the
profession’s code of conduct, provides continuing
professional education, administers peer review programs
and upgrades the Uniform CPA Examination. -- The
Pantagraph (Bloomington, Il.), May 2, 1999.
Joelle T. Taylor has completed the state Uniform CPA
examination. -- Sunday Star-News (Wilmington, NC), March
21, 1999.
Ser No. 75/626,097
9
HEADLINE: Residents pass La. CPA exam
BODY: NEW ORLEANS – One hundred and twenty-three
candidates have passed the examination required for
certification as public accountants, according to the State
Board of Certified Public Accountants of Louisiana.
The candidates passed the Uniform Certified Public
Accountants Examination, which was given in November.
Candidates who pass [sic] the exam will be issued a
Louisiana Certified Public Accountant certificate.
CORRECTION-DATE: March 11, 1999
CORRECTION: A story in Wednesday’s Advocate that listed
candidates who passed the certified public accountants’
examination omitted that Mark Stephen Worthen of Baton
Rouge passed the exam with the highest score. -- The
Advocate (Baton Rouge, LA.), March 10, 1999.
13 Area Residents Pass CPA Exams, Join Group
Thirteen Chattanooga-area residents have successfully
completed the November 1998 Uniform Certified Public
Accountant examination, according to the Tennessee State
Board of Accountancy. -- Chattanooga Times / Chattanooga
Free Press, March 10, 1999.
The CPA designation is awarded by state accountancy
boards…. -- The Virginian-Pilot (Norfolk, VA), January 23,
1999.
Elaine Parker King of Durham, a graduate of Meredith
College, has passed the uniform certified public accountant
examination for North Carolina. She was one of 336
successful candidates who passed all four parts of the
exam.
Successful exam candidates must also complete work
experience requirements before being awarded the Certified
Public Accountant certificate and CPA title by the state
Board of CPA Examiners. -- The Herald-Sun (Durham, N.C.),
October 27, 1998.
* CPA Exam – David Freeman has completed the Uniform
Certified Public Accountant Examination and now is employed
by Arthur Andersen in Minneapolis. -- The Des Moines
Register, September 30, 1998.
Michelle Flegel of Fife was among 52 area residents who
passed the Washington State Board of Accountancy’s Uniform
Certified Public Accountant Examination. -- The News
Tribune (Tacoma, WA), September 18, 1998.
Ser No. 75/626,097
10
The State Board for Accountancy at the Virginia Department
of Professional and Occupational Regulation has released
the names of candidates who have passed the uniform CPA
examination. -- Roanoke Times & World News, August 30,
1998.
NEXIS excerpts submitted by applicant in response to
the first Office action are argued by applicant to show
“even the perception of the public at large, [including
those not involved in the accounting industry] is that the
UNIFORM CPA EXAMINATION mark is not a generic designation,
but rather is a trademark of applicant.” In this
connection, applicant submitted selected excerpts that all
associate the “uniform” exam with applicant. In fact, some
of these excerpts, including some appearing on wire
services rather than in newspapers or periodicals2, appear
to be news releases produced by applicant. Each of the
excerpts references applicant by name and almost all
utilize the complete phrase “Uniform CPA Examination”
[utilizing upper-case letters]. Nonetheless, even among
these selected, and presumably most favorable, excerpts,
one utilizes “Uniform CPA examination” [lower case “e”] (DM
News, July 7, 1993); one apparent news release from
applicant on the PR Newswire service (April 30, 1996)
2 NEXIS excerpts from wire services are generally accorded
limited probative value, since it cannot be assumed that they
Ser No. 75/626,097
11
utilizes both “Uniform CPA Examination” and “the November
CPA examination”; another apparent news release from
applicant on the PR Newswire service (December 5, 1995)
utilizes “Uniform CPA examination” [lower case “e”]; and
still another AICPA news release, on the Business Wire
service (June 27, 1988), utilizes “uniform CPA
examination.”
The remaining NEXIS evidence consists of excerpts
submitted by the examining attorney with the second Office
action, i.e., the first action wherein the examining
attorney required a disclaimer of CPA EXAMINATION. These
excerpts were retrieved via a search for articles with the
phrase “CPA examination” but not “uniform”:
HEADLINE: 41 Pass State Exam to Become CPAs
BODY: The Nebraska State Board of Public Accountancy
said 41 people passed the certified public accountant
examination given in May. -- Omaha World-Herald,
August 21, 2000.
J. Wade Parrish of The NCT Group CPAs, has passed the
CPA examination. -- The Ledger (Lakeland, FL), August
20, 2000.
HEADLINE: 47 candidates pass CPA exam
BODY: A total of 47 candidates passed the Certified
Public Accountant Examination conducted May 1-2,
according to the West Virginia Board of Accountancy.
-- Charleston Daily Mail, August 14, 2000.
have been seen in a newspaper or periodical. In re Patent and
Trademark Services Inc., 49 USPQ2d 1537, 1538 fn 2 (TTAB 1998).
Ser No. 75/626,097
12
Bartlett, Pringle & Wolf, LLP, announced that Michael
Weaver and Shannon Ashby successfully completed the
CPA examination. …
The exam is designed to assess the knowledge and
skills that entry-level CPAs need when they enter
public accounting practice. -- Ventura County Star
(Ventura County, Ca.), August 12, 2000.
The accounting profession and academia have
collaborated to enhance accounting education primarily
by expanding the educational requirements (typically
150 credit hours) necessary to sit for the CPA
examination. … Historically, this phenomenon has
resulted from an overemphasis by both accounting
educators and practitioners on the ability of students
to immediately pass the CPA examination (a technical
assessment) upon graduation. -- The Ohio CPA Journal,
July 1, 2000.
Nine graduates passed the CPA examination at Augustana
to become Certified Public Accountant [sic]. James
King of Villa Park was among those who recently passed
the CPA examination in Illinois. -- Chicago Daily
Herald, May 14, 2000.
Cindy Anderson passed the CPA examination given by the
N.C. State Board of Certified Public Account
Examiners. -- Sunday Star-News (Wilmington, NC),
April 2, 2000.
[DeVry] acquired Denver Technical College (1,700
students) and the Chicago-based Conviser Duffy CPA
Review, which it folded into its Becker CPA Review
subsidiary, the nation’s leading course of study for
candidates for the certified public accountant (CPA)
examination. -- Crain’s Chicago Business, December 6,
1999.
Both Becker and Conviser Duffy are multi-location
courses that prepare students for the certified public
accountant examination. -- Chicago Daily Herald, July
7, 1999.
Marenakos … passed her certified public accountant
examination last year. -- The Post and Courier
(Charleston, SC), June 28, 1999.
Ser No. 75/626,097
13
Dictionary Listings, Internet Web Pages and “Third-Party”
Registrations in the Record
Apart from the NEXIS evidence, the record includes a
dictionary definition showing that “CPA” and “C.P.A.” are
abbreviations for “certified public accountant,” and a
dictionary definition showing that “examination” means,
among other things, “a set of questions or exercises
testing knowledge or skill.” Also, both applicant and the
examining attorney have made of record various web pages
from entities other than applicant.
The examining attorney has made of record a web
page from “Wiley CPA Exam On-Line,” with the Internet
address “http://brimstone.wiley.com/cpaweb/”. This
page promotes the Wiley goods and services with the
following statement: “Wiley invites you to experience
the newest CPA exam preparation resource. … Real-time
interactive CPA exam preparation tests covering all of
the sections you’ll encounter on the AICPA exam.”
Another Wiley web page the examining attorney has
submitted is the “site map” page for the “Wiley CPA
Examination Review,” which includes a link to the
“Wiley Virtual CPA Exam Review” [www.wiley.com/-
products/subject/accounting/cpa/sitemap]. Another web
page, from “Bisk CPA Review,” promotes “CPA Exam
Ser No. 75/626,097
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preparation materials” and asserts that “Bisk has
helped over 125,000 candidates pass the CPA Exam.”
[www.cpaexam.- com/Scripts/UserHome/About/About].
Finally, the examining attorney has submitted a
reprint from the “CPA Exam Review.Com” web site, which
promotes itself as a “one stop-shop for discount CPA
Exam Review materials from quality providers” and
posts “links to CPA exam resources” and “the latest
CPA exam news.”
Applicant has made of record reprints of other
web pages from nine websites which applicant says show
“that the term CPA EXAMINATION is used only in
connection with Applicant’s goods, the UNIFORM CPA
EXAMINATION test” (underscoring by applicant). The
search results page from applicant’s search shows the
following as the “search for” statement: “‘cpa
examination’-uniform+aicpa.” Understandably, the
search returned web sites that, for the most part,
include references to applicant; some, however, do
not. Moreover, these sites all include references to
“CPA exam” or “CPA examination” in a manner that would
be perceived as generic usage, at least in the absence
of references to applicant also appearing on these
Ser No. 75/626,097
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pages.3 We discuss each of these web pages, and quote
pertinent parts, below:
The “Lambers of Arizona” web page, which touts the
“Lambers Home Study CPA Review” as “an integrated
approach to exam preparation,” states:
“There is no substitute for knowledge, and we teach
our students to think, not just memorize. This is
especially important now that the AICPA no longer
releases CPA examination questions.” [underscoring on
web page, www.azlambers.com/cpa]
The “Electronic Accountant” web page includes a news
item that reads:
“[Headline:] AICPA Names Johnson Director of CPA Exam
[Body:] New York (May 30, 2000) -- The American
Institute of CPAs has named Gregory Johnson as its
director of the CPA examination. In his new role,
Johnson is responsible for ensuring that the CPA
examination is well positioned with state boards of
accountancy, state CPA societies and the National
Association of State Boards of Accountancy.”
[www.electronicaccountant.com/news]
“The Financial Management Network” web page in
“Today’s News & Features” posted the following news
item:
“[HEADLINE:] Here it Comes – Ready or Not!! The
Computerized CPA exam is projected for 2003
[BODY:] The AICPA is feverishly working to complete
the goal of converting the CPA exam from the
traditional pencil and paper format to a computerized
exam. The target date for a computerized exam is
2003. If you will be taking the CPA exam after 2003,
your study methods should take on a new look. … The
new Wiley Virtual CPA Examination Review
(www.wileyvirtual.com) is the type of product to use.
… Don’t let the real CPA exam teach you. Use the
Wiley…” [www.fmnonline.com/publishing/article]
3 We discuss, infra, applicant’s argument that because of the
references to applicant on these web pages, and in other items in
the record, references to “CPA exam” or “CPA examination” would
be perceived solely as references to applicant’s UNIFORM CPA
EXAMINATION and not as generic terms.
Ser No. 75/626,097
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The West Virginia Board of Accountancy web page is
titled “CPA Examination Information” and states:
“Applicants must meet all eligibility requirements at
the time of making application to sit for the CPA
examination.” [www.state.wv.us/wvboa/examinfo]
The Kentucky State Board of Accountancy web page
titled “Uniform CPA Exam” states: “Candidates for the
CPA examination must be: … The American Institute of
Certified Public Accountants (AICPA) prepares the
uniform CPA examination used by the Kentucky State
Board and accountancy boards of all other states….
The CPA examination is given twice each year….
Initial applications for admission to the CPA
examination….” [www.state.ky.us/agencies/boa/Exam]
A web page apparently from the College of Business
Administration of The University of Louisiana at
Monroe is titled “Certified Public Accountant
Examination Application Requirements In Louisiana” and
states “The Certified Public Accountant (CPA)
Examination is given in May and November of each
year.” [http://cba.ulm.edu/roshtop/CPA.exam]
The web page from the Accountancy Board of Ohio is
titled “CPA Examination Candidate Information” and
includes the following: “Note: All of the CPA
examination rules have been changed, effective January
1, 2000. For information about obtaining the CPA
certificate after you pass the CPA examination, please
check…. You may also use our CPA Examination Course
Evaluation Checklist….” The web page lists “Future
CPA Examination Dates” and “Future CPA Examination
Sites.” The page goes on to state: “Our agent for CPA
examinations administration is CPA Examination
Services. … You may request May, 2000 CPA examination
materials directly from the CPA Examination Services
Web site, or you may download CPA examination
materials from that site.” The web page goes on to
list an address for CPA Examination Services, and
includes various links, including “May 2000 CPA
Examination Pass List,” “Information concerning CPA
examination grade release,” and “CPA examination
candidate brochure (AICPA).”
[www.state.oh.us/acc/cpaexam]
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A web page whose source is unclear features an item
titled “A Computer-Based Version Of The CPA Exam Being
Developed” written “By Craig Browning.” This states:
“The Uniform CPA Examination may be a fully
operational computer-based examination as early as
2003. James Blum, examinations director for the
American Institute of Certified Public Accountants
(AICPA), presented an overview of the process involved
in this change to the CPA exam at a recent luncheon at
CLEAR’s annual conference in Denver, Colorado.”
Later, the article refers to both “implementation of a
computer-based CPA exam” and a “timeline for
administering a computer-based Uniform CPA
Examination.” [www.clearhq.org/cpaexam1]
The last of these web pages selected by applicant
appears to be from a personnel placement firm known as
“KTC” which operates in the tax field. The web page
describes the background of the firm’s president and
states that he “received his bachelor’s degree in
accounting from Baruch College (CUNY) in 1981 and
passed the CPA examination shortly afterwards.” The
article also reports that the firm’s president is
active in the AICPA. [www.taxcareers.com/president]
The examining attorney has submitted printouts from
the Office’s computerized database of registrations showing
that there are two registrations for WILEY CPA EXAMINATION
REVIEW, each with a disclaimer of CPA EXAMINATION REVIEW;
that there are two registrations for CPA TRAK, one of which
includes a design element, and both of which include
disclaimers of “CPA”; and that there is a registration for
a composite word and design mark featuring the words
“MCINTOSH COLLEGE” and “CPA TRAK,” and which includes
disclaimers of “COLLEGE” and “CPA.” The examining attorney
also notes that in four of these five registrations, “CPA
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exam” or “CPA examination” is part of the wording of the
identifications of goods or services. In addition, the
examining attorney has submitted printouts of eight other
registrations, for marks that do not include the terms CPA
or EXAMINATION, but which do refer to “CPA exam” or “CPA
examination” in their identifications. All of the
aforementioned 13 registrations are for marks used for
goods or services in the nature of educational services or
course books and publications for preparing candidates for
CPA testing.
The examining attorney has submitted reprints of
information regarding registrations that include
disclaimers of the word “exam” or “examination,” but we do
not find these particularly useful in deciding the question
whether applicant should be required to disclaim “CPA
EXAMINATION.” Applicant has submitted information
regarding registrations for marks for other standardized
tests or examinations as well as reprints of web pages
concerning these tests or examinations and entities that
provide courses or materials for preparing for these
examinations. We also do not find these materials
particularly useful. See In re Nett Designs Inc., 236 F.3d
1399, 57 USPQ2d 1564, 1566 (Fed. Cir. 2001) (“Needless to
say, this court encourages the PTO to achieve a uniform
Ser No. 75/626,097
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standard for assessing registrability of marks.
Nonetheless, the Board… must assess each mark on the record
of public perception submitted with the application.”)
Summary of Arguments
Acknowledging the Marvin Ginn4 test for genericness,
the examining attorney argues that the class of goods or
services at issue in this case is examinations used to
determine one’s qualification to become a CPA. Though she
did not explicitly state as much in her brief, the
examining attorney stated at the oral hearing that she
considered the relevant class of consumers to be CPA
candidates.
The examining attorney argues that the record
establishes that “CPA” and “examination” both are generic
terms when used in connection with applicant’s goods. She
also argues that the composite “CPA EXAMINATION” portion of
applicant’s mark UNIFORM CPA EXAMINATION is just as generic
as each of the two terms are individually:
CPA is an abbreviation for “Certified Public
Accountant.” Examination is defined as “a set of
questions or exercises testing knowledge or
skill.” A CPA examination is a set of questions
or exercises testing one’s knowledge or skill to
become a certified public account[ant]. The
4 H. Marvin Ginn Corp. v. International Ass’n of Fire Chiefs,
Inc., 782 F.2d 987, 228 USPQ 528 (Fed. Cir. 1986).
Ser No. 75/626,097
20
combination of the two generic terms CPA and
EXAMINATION does not create a separate, non-
generic compound word with any meaning other than
that of its constituent words. … There is no
other meaning for the term CPA EXAMINATION other
then [sic] a set of questions or exercises
testing knowledge or skill to become a CPA.
[Brief, p.4; footnotes omitted]
At the oral hearing, the examining attorney requested
that we take judicial notice of dictionary definitions of
“compound word” and “phrase.” This request was made in
conjunction with the examining attorney’s argument, based
on In re Gould Paper Corp., 835 F.2d 1017, 5 USPQ2d 1110
(Fed. Cir. 1987), that we should find CPA EXAMINATION to be
a compound word, in the same manner that SCREENWIPE was
found to be a compound word in Gould, and not a phrase.
Compare, in regard to treatment of phrases, In re American
Fertility Society, 188 F.3d 1341, 51 USPQ2d 1832 (Fed. Cir.
1999). It is the examining attorney’s position that one
can find a compound word when two words are used together,
even if they have a space between them.
Apart from her reliance on dictionary definitions and
evidence that shows “CPA” and “examination” to be,
individually, generic, and her argument that coupling the
terms only creates a generic compound word, the examining
attorney also argues that the relevant public understands
“CPA EXAMINATION” itself to primarily refer to the class of
Ser No. 75/626,097
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goods comprising the test for determining one’s ability to
become a CPA.
Finally, the examining attorney argues that applicant
cannot avoid a finding of genericness merely because it has
become the only supplier of a test used by all the states
as one aspect of determining an individual’s fitness to
become a CPA. No matter the length of use, she argues,
applicant cannot acquire exclusive rights to use the
generic term “CPA EXAMINATION” apart from the mark UNIFORM
CPA EXAMINATION.
Applicant argues that the examining attorney has too
narrowly defined the genus of goods at issue, so that it is
“a genus containing but a single species.” Applicant urges
that we consider the genus to be “professional examinations
used to determine an applicant’s qualifications to enter a
profession.” Applicant agrees with the examining attorney
that CPA candidates are among the relevant public, but
asserts that we should also consider the various state
boards of accountancy to be within the relevant public.
Alluding to its status as the sole provider of the
test used by the various states and territories to
determine the technical competence of CPA candidates,
applicant argues that the “uncontroverted evidence” of such
use “explains why the relevant public recognizes the ‘CPA
Ser No. 75/626,097
22
EXAMINATION’ portion of Applicant’s mark, no less than the
entire trademark, UNIFORM CPA EXAMINATION, to refer to
applicant’s goods and not to some hypothetical general
class of goods.” [Brief, p. 13] In fact, applicant argues
that because it is the sole preparer of the licensing test
for certified public accountants, “all evidence of record
necessarily points to Applicant as the source of the ‘CPA
EXAMINATION’ even when Applicant is not specifically
identified.” [Brief, p. 15] Further, applicant argues
that “the use of the definite article ‘the’ in connection
with ‘CPA Examination’ in every news article introduced
into evidence … is implicit acknowledgment of each author’s
understanding that there is only one test given to measure
the competence of individuals seeking the certified
professional accountant designation.” [Brief, p. 16;
emphasis by applicant] Thus, applicant concludes, not only
do CPA candidates and state accountancy boards understand
that the test comes from a single source, but such
understanding clearly extends beyond this relevant public
to others. The knowledge that the CPA test emanates from a
single source, even if that source is unknown, establishes
that CPA EXAMINATION functions as a trademark, applicant
argues. [Brief, p. 16]
Ser No. 75/626,097
23
Citing In re Ferrero S.p.A., 24 USPQ2d 1155 (TTAB
1992), applicant argues that, given its long use of its
mark, if there were others using “CPA examination” in a
generic manner, then surely the examining attorney ought to
have been able to find evidence of such use. In addition,
the fact that applicant produces a unique product cannot be
used as a basis for finding that its name for that product
is generic, applicant argues, citing Section 14(3) of the
Lanham Act, 15 U.S.C. §1065(3) and R. Guastavino Co. v.
Comerma, 180 F. 920 (C.C.S.D.N.Y. 1910).
Applicant also argues that it is inappropriate for the
examining attorney to require entry of a disclaimer of a
portion of a mark for which registration is sought under
Section 2(f) of the Lanham Act. Challenging the examining
attorney’s view of what makes a “compound word,” applicant
argues that the space between “CPA” and “EXAMINATION” is
significant; that “CPA EXAMINATION” is not a compound word;
and that, therefore, the instant case is not governed by
Gould, supra, but rather, by American Fertility, supra.
Finally, alluding to certain items in the record,
applicant argues that the examining attorney’s disclaimer
requirement cannot be based on the use of “CPA exam” or
“CPA examination” by entities that produce CPA test
preparation materials or courses, for two reasons. First,
Ser No. 75/626,097
24
those entities assertedly know there is only one
examination to determine the technical competence of any
person wishing to become a CPA. Second, if such use could
establish that “CPA examination” is generic, then numerous
registrations of marks for other standardized tests also
would be vulnerable to cancellation as generic, because
there is material of record that shows test prep courses
and companies utilizing the registered marks for these
other standardized tests in the marketing of such prep
courses and materials.5
Decision
Applicant’s entire mark, UNIFORM CPA EXAMINATION,
initially was refused as descriptive and possibly generic.
When applicant amended the application to seek registration
under Section 2(f), it implicitly admitted that the
composite lacks inherent distinctiveness. See In re Cabot
Corp., 15 USPQ2d 1224 (TTAB 1990). However, by making the
amendment, applicant is not viewed as having admitted that
the composite is generic.
The examining attorney, apparently retreating from her
initial conclusion that the composite might be generic,
5 Examples applicant cites to are Kaplan Inc. or The Princeton
Review prep courses for tests such as the GRADUATE RECORD
EXAMINATIONS® (GRE) and LSAT® (Law School Admission Test).
Ser No. 75/626,097
25
accepted the amendment to seek registration under Section
2(f) and withdrew the Section 2(e)(1) mere descriptiveness
refusal. Nonetheless, the examining attorney determined
that “CPA EXAMINATION” is generic when used in connection
with applicant’s goods. Thus, the examining attorney
required a disclaimer of “CPA EXAMINATION.” See Lanham Act
Section 6(a), 15 U.S.C. § 1056(a). Applicant has argued
that, because it seeks registration under Section 2(f), it
cannot be required to disclaim any portion of its mark.
The argument has merit only in cases where a disclaimer
requirement is based on the asserted descriptiveness of a
term. Section 2(f) does not aid applicant when the
examining attorney’s assertion is that the term to be
disclaimed is generic. Cf. In re K-T Zoe Furniture Inc.,
16 F.3d 390, 29 USPQ2d 1787 (Fed. Cir. 1994), wherein the
applicant argued that, once the Office accepted an
amendment to proceed under Section 2(f), the showing of
secondary meaning covered all the words in applicant’s
mark, as well as the stylized display thereof. The Board
disagreed and affirmed the examining attorney’s requirement
for a disclaimer; and the Court affirmed. Id. See also,
In re Creative Goldsmiths of Washington, Inc., 229 USPQ
766, 767-68 (TTAB 1986), which includes a lengthy
discussion of this issue.
Ser No. 75/626,097
26
The determination whether a term is generic “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,
supra, 228 USPQ at 530. Evidence of the 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
Merrill Lynch, Pierce, Fenner and Smith Inc., 828 F.2d
1567, 4 USPQ2d 1141, 1143 (Fed. Cir. 1987), and In re
Northland Aluminum Products, Inc., 777 F.2d 1556, 227 USPQ
961, 963 (Fed. Cir. 1985).
As Professor McCarthy has observed in regard to the
first part of the inquiry, expanding or contracting the
definition of the genus can substantially affect the final
determination of whether a term is generic. 2 J. Thomas
McCarthy, McCarthy on Trademarks and Unfair Competition §
12:23 (4th ed. 2001). The observation seems not to have
gone unnoticed by either applicant or the examining
attorney, who argue for different definitions of the
involved class of goods. However, the respective
suggestions ignore the identification of goods in
applicant’s application, which specifies applicant’s goods
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27
as “practice accounting examinations; accounting exams;
accounting exam information booklets; and prior accounting
examination questions and answers.”
In Marvin Ginn, the Court noted that the involved mark
was registered for a “magazine directed to the field of
firefighting”; noted that the record revealed the existence
of other publications directed to that field; and concluded
that the “class of magazines at issue is, therefore, those
directed to the field of firefighting.” Marvin Ginn,
supra, 228 USPQ at 532. In American Fertility, the Court
stated that it would determine whether the Patent and
Trademark Office had carried its burden of proving that
SOCIETY FOR REPRODUCTIVE MEDICINE “is generic as applied to
the Society’s services, namely, promoting the interests of
the reproductive medicine profession.” American Fertility,
supra, 51 USPQ2d at 1836. It did not determine whether
SOCIETY FOR REPRODUCTIVE MEDICINE had been proven generic
for societies promoting the interests of other professions.
Guided by these decisions, we discern no legal support for
the examining attorney’s argument that we should define the
class of applicant’s goods more narrowly than its
identification. On the other hand, we likewise do not see
any basis for adopting applicant’s definition of the class
and considering the question whether CPA EXAMINATION is
Ser No. 75/626,097
28
generic for exams, practice exams, etc., in professions
other than accounting.
We find the class of goods to be adequately described
by applicant’s chosen identification and, contrary to
applicant’s argument, we do not find this to define a genus
without any species. Rather, applicant’s identification
contemplates exams, practice exams, exam information
booklets, and collections of prior exam questions and
answers of various types and for various aspects of the
accounting field. This would include, for example, exams,
practice exams, and exam information booklets for college
and professional-level accounting and for CPA and non-CPA
purposes.
With regard to defining the relevant public whose
perception of CPA EXAMINATION is critical to our analysis,
we agree with applicant that this includes would-be CPAs
and state boards that certify CPAs and administer exams as
part of the certification process.6 However, we also
include in the relevant public CPAs themselves, who may use
CPA EXAMINATION in listing professional qualifications, and
the various entities revealed by the record to be marketing
6 If applicant were seeking to register a certification mark or
collective membership mark, then the relevant public might be
more broadly defined and include consumers who might rely on a
certification mark or membership mark in the selection of a CPA.
Ser No. 75/626,097
29
or distributing booklets, prep course materials, practice
tests, and the like, or involved in the administration
and/or grading of examinations of would-be CPAs.
Before considering what the record reveals about
whether members of the relevant public perceive CPA
EXAMINATION to refer to the involved class of goods, we
briefly consider the difference of opinion, as between
applicant and the examining attorney, with regard to the
applicability of In re Gould Paper Corp., 835 F.2d 1017, 5
USPQ2d 1110 (Fed. Cir. 1987). The examining attorney
requested, at oral argument, that we take judicial notice
of definitions of “compound word” and “phrase,” for the
purpose of establishing that two words can be considered a
compound even when they are not joined as one and,
therefore, the evidentiary standard established in Gould
for determining the genericness of a compound word can be
applied in the instant case. The examining attorney did
not provide copies of the definitions from which she read;
however, by referencing dictionaries, we have found
definitions of the word “compound” that includes examples
of words that are considered compound. Although most of
the examples are joined or collapsed into one word, there
are examples that include a space or a hyphen between the
Ser No. 75/626,097
30
parts.7 Applicant, in contrast, asserted at the oral
argument that the presence or absence of a space between
two words makes a difference and that Gould does not apply
except in the case of two words actually joined into a
single compound word.8
This is not the first case in which parties to an
inter partes proceeding, or an applicant and an examining
attorney in an ex parte proceeding, have argued over how to
harmonize Gould and American Fertility. We, however, need
not address these arguments. The effect of the latter
decision’s limitation on Gould is to preclude the Patent
and Trademark Office from finding a multi-word phrase to be
generic, when the only available evidence is that the
components are, individually, generic. In the case at
hand, assessed under American Fertility, we have voluminous
evidence of use of “CPA exam” and “CPA examination,”
7 See, e.g., “compound 1a: a word consisting of components that
are words (as rowboat, fireman, high school, devil-may-care,
airtight…) 466 Webster’s Third New International Dictionary
(1993), and “compound …4. (of a word) a. consisting of two or
more parts that are also bases, as housetop, many-sided, playact,
or upon.” 420 The Random House Dictionary of the English
Language (2nd ed. 1987).
8 In essence, during his argument, counsel agreed that
CPAEXAMINATION would be generic under Gould but argued that CPA
EXAMINATION would not. When two words have each been shown to be
generic for goods or services, there is at least the chance that,
upon joinder, they would somehow take on additional meaning or an
altered connotation and, perhaps, not be generic as a compound.
We do not see how generic words separated by a space can be non-
generic when the words joined would be generic.
Ser No. 75/626,097
31
including, too, examples with the CPA initialism spelled
out. The question we must resolve is the significance of
this evidence.9
Applicant argues that the authors of articles
retrieved from the NEXIS database all recognize that there
is but one CPA EXAMINATION because they generally use “the”
as a preface; and, applicant adds, it is irrelevant if, for
authors not focusing on the accounting field, the single
source is anonymous. Applicant also argues that the state
Boards of Accountancy that utilize applicant’s exam and the
entities which offer, among other things, competing
9 During prosecution of the application, and after the amendment
to proceed under Section 2(f), applicant offered to disclaim CPA,
if the examining attorney would then approve the mark for
publication. During the oral argument, the Board asked
applicant’s counsel whether it would be more appropriate, if only
one word were to be disclaimed, to disclaim “examination,” in
view of the goods being identified as exams, practice exams, etc.
Counsel explained that the original offer to disclaim CPA was
made because he believed that there was a judicial decision
holding that CPA was generic, but counsel then offered to
disclaim “examination” rather than CPA, if the Board would
thereby be inclined to approve the mark for publication.
Frankly, were we to analyze this case under Gould, there is
sufficient evidence to establish that both “CPA” and
“EXAMINATION” are generic when used in conjunction with an
examination used to test the knowledge of CPA candidates. Thus,
under Gould, we would find “CPA EXAMINATION” generic, and would
not find a disclaimer of only “CPA” or only of “EXAMINATION”
appropriate. Such evidence includes, inter alia, dictionary
definitions of both “CPA” and “examination,” the widespread use
of CPA by both state boards of accountancy and by firms that
prepare CPA candidates for testing, and applicant’s own use of
“examination” as a generic term, for its exam, in its candidate
confidentiality statement that every individual sitting for the
exam must read and sign.
Ser No. 75/626,097
32
practice exams, all know applicant is the sole source of
the exam that is used in all states to test CPA candidates.
We acknowledge that these two constituent groups from
the relevant public – state boards and competitors of
applicant in the field of offering exam preparation
materials and practice examinations – appear to recognize
that the UNIFORM CPA EXAMINATION is a product of the AICPA.
Nonetheless, that recognition has not stopped many entities
within these groups from utilizing “CPA exam” and “CPA
examination” on their web pages and in their materials in a
manner that would be perceived as generic by individuals
from another group in the relevant public – candidates
preparing to take the exam offered by one of the state
boards, who, perhaps, prepare with materials from one of
the purveyors of prep courses and practice examinations.
This duality may have historical roots, at least for
the state boards. By applicant’s own account of its
historical involvement in the accounting field, and
reasonable inferences to be drawn therefrom, state boards
have been certifying public accountants for more than four
score years10, and applicant offered an examination that
10 This is the length of time applicant has been involved in the
field. It is reasonable to assume that there was a period of
time predating applicant’s involvement in the field when at least
some states were certifying public accountants. Thus, we would
not be surprised to learn that the governance function of the
Ser No. 75/626,097
33
they could use for this purpose as early as 1917. Yet
applicant did not adopt UNIFORM CPA EXAMINATION as a
designation for its test until 1946. When questioned at
oral argument, counsel was unable to tell us what applicant
called its exam for the nearly 30-year span from 1917 until
1946. Further, it was not until 1952 that all the states
were utilizing applicant’s exam to test their CPA
candidates. The conclusion we draw from applicant’s
recitation of this history is that at least some individual
state boards were examining CPA candidates, i.e.,
administering CPA examinations for nearly 30 years before
applicant adopted its claimed mark. Moreover, even after
applicant adopted the UNIFORM CPA EXAMINATION designation,
another six years passed during which some states continued
to administer their own CPA examinations, not applicant’s
test.
Notwithstanding applicant’s adoption of the
designation UNIFORM CPA EXAMINATION, and notwithstanding
counsel’s argument that the record shows the CPA
EXAMINATION portion thereof is just as readily identified
states over the certification of public accountants likely has
gone on for a century or more. However, the record does not
reveal the history of the various state boards, only the history
of applicant’s involvement. Thus, we do not presume
certification by state boards prior to the time applicant began
offering its test for their use, i.e., approximately 85 years
ago.
Ser No. 75/626,097
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with applicant as is the entire phrase, the record is clear
that state boards of accountancy still refer to the CPA
examinations they administer in a generic fashion. In this
regard, we note, in particular, that, among the reprints
from web sites that applicant made of record during
prosecution are pages from the state boards of West
Virginia, Kentucky and Ohio, each of which utilizes “CPA
exam” or “CPA examination” in generic fashion.
Other evidence of this type of generic use by members
of the relevant public, or which would be likely to be read
by members of the relevant public, includes the July 1,
2000 NEXIS excerpt from the Ohio CPA Journal; the web sites
from entities that market test prep materials and practice
exams, e.g., Wiley, Bisk, Lambers and “CPA Exam
Review.com,” the “taxcareers.com” web site of the KTC
accounting personnel placement firm, and the “Electronic
Accountant,” “Financial Management Network,” and the
“clearhq.org” web site. Some of these web sites not only
utilize “CPA exam” or “CPA examination” generically on
their pages, but also use a form of “CPA exam” in their web
page addresses. Moreover, while we have not considered
purchasers of CPA accounting services to be among the
relevant public for our inquiry, that does not mean that
the many NEXIS article excerpts from general interest
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publications, as opposed to specialized journals or
business publications, would not be seen by would-be CPAs,
who are among the relevant public. CPAs and CPA candidates
would be just as likely as other members of the public to
see, and have their perception of “CPA EXAMINATION”
influenced by, the numerous generic uses of “CPA exam” and
“CPA examination”11 in publications of general circulation.
Thus, even if we accept applicant’s argument that these
particular members of the relevant public would know that
there is one source for the UNIFORM CPA EXAMINATION, they
would, nonetheless, likely perceive “CPA examination” as a
generic term.
In regard to applicant’s argument that CPA and CPA-
candidate members of the relevant public would likely know
that there is one source for the UNIFORM CPA EXAMINATION
(even if they do not know it is applicant), the record
suggests that this may not be universally true. For
example, the web page from the Accountancy Board of Ohio
states that its “agent for CPA examinations administration
is CPA Examination Services. … You may request May, 2000
CPA examination materials directly from the CPA Examination
11 In this regard, we also include excerpts wherein the initialism
is set forth as “cpa” rather than “CPA,” and excerpts wherein the
individual terms comprising the initialism are spelled out.
Ser No. 75/626,097
36
Services Web site, or you may download CPA examination
materials from that site.”12 We note, also, two stories
from The Pantagraph of Bloomington, Illinois appearing in
May and June 1999. The May article states that the AICPA
“upgrades the Uniform CPA Examination,” while the June
article states that “NASBA serves as a forum for the
nation’s state boards of accountancy, which administer the
Uniform CPA examination, license certified public
accountants and regulate the practice of public accountancy
in the United States.” These stories may lead readers to
believe that the AICPA serves only a collateral or advisory
role in improving a test created and administered by the
state boards and/or NASBA.13 Finally, we note various NEXIS
excerpts, each of which refers to the examination
administered by a particular state as that state’s exam.
These include references to “the Pennsylvania Uniform
Certified Public Accountant Examination,” “the state
Uniform CPA examination,” “the uniform certified public
accountant examination for North Carolina,” “the Washington
State Board of Accountancy’s Uniform Certified Public
12 There is nothing in the record to establish that CPA
Examination Services is part of, or affiliated with, applicant.
13 While neither applicant nor the examining attorney submitted
information about NASBA for the record, counsel for applicant, at
the oral hearing, acknowledged that NASBA might be considered a
competitor of applicant.
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37
Accountant Examination,” “the CPA examination in Illinois,”
“the CPA examination given by the N.C. State Board of
Certified Public Account Examiners,” and the headline
“Residents pass La. CPA exam.” These articles may suggest
the exam given in each state is the same, i.e., uniform,
but may not necessarily suggest that there is a single
source for the test, rather than a collaborative effort by
the states themselves.
All of this evidence persuades us that the relevant
public primarily perceives “CPA exam,” “CPA examination,”
and variations in which the initials are set forth in lower
case letters or with its component terms spelled out, as
generic, even if a sizable subset of that public draws an
association between the AICPA and the UNIFORM CPA
EXAMINATION. We find that “CPA EXAMINATION” is generic
and, therefore, affirm the examining attorney’s requirement
for a disclaimer. We are not persuaded of a contrary
conclusion by applicant’s argument that if part of the
basis for our finding is the generic use of “CPA
examination” by entities that market CPA test prep courses
and practice examinations, then we will have rendered
vulnerable to cancellation registrations for other marks
for standardized tests. In accordance with the Nett
Designs decision, supra, we reject this argument as
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38
inapposite to the question before us, specifically, whether
applicant must submit a disclaimer of the “CPA EXAMINATION”
portion of its mark. As Nett Designs makes clear, each
case must be considered on its own record. Neither the
circumstances under which the Office has registered other
marks for other standardized tests, nor the circumstances
under which third parties make use of those marks to
advertise their test prep courses and materials, is
relevant to the question we must decide. Nett Designs,
supra.
While applicant has made other arguments we have not
specifically addressed in this decision, we have considered
them all. We directly addressed only those that are
relevant to the facts and circumstances presented by the
record and, therefore, required comment. See General Foods
Corp. v. Studiengesellschaft Kohle mbH, 972 F.2d 1272, 23
USPQ2d 1839, 1847 (Fed. Cir. 1992).
Decision: The requirement under Section 6 of the
Trademark Act, 15 U.S.C. § 1056, for a disclaimer of “CPA
EXAMINATION” apart from the mark as a whole, is affirmed.
The refusal of registration in the absence of a
disclaimer will be set aside and the mark published for
opposition if applicant, no later than 30 days from the
Ser No. 75/626,097
39
mailing date hereof, submits an appropriate disclaimer.
See Trademark Rule 2.142(g).