Bliss Publications, LLC

Trademark Trial and Appeal Board

Jul 23, 2012

No. 77779284 (T.T.A.B. Jul. 23, 2012)

Mailed: July 23, 2012

UNITED STATES PATENT AND TRADEMARK OFFICE
___________

Trademark Trial and Appeal Board
___________

In re Bliss Publications, LLC
___________

Serial No. 77779284
___________

Daniel J. Holmander of Barlow, Josephs & Holmes Ltd. for
applicant.

Doritt Carroll, Trademark Examining Attorney, Law Office
116 (Michael W. Baird, Managing Attorney).
____________

Before Kuhlke, Ritchie, and Shaw, Administrative Trademark
Judges.

Opinion by Shaw, Administrative Trademark Judge:

Bliss Publications, LLC has appealed from the final
refusal to register BABY GUIDE, in standard characters, for
“Printed guides for new or expectant parents featuring a
directory of third-party retailers and entities offering
products or services related to pregnancy and parenting”
and “Hosting an online website for new or expectant parents
featuring a directory of third-party retailers and entities
THIS OPINION
IS NOT A PRECEDENT OF
THE TTAB
Serial No. 77779284

2
offering products or services related to pregnancy and
parenting.”1
Registration was initially refused pursuant to
Section 2(e)(1) of the Trademark Act of 1946, 15 U.S.C.
§ 1052(e)(1), on the ground that the mark is merely
descriptive of applicant's services. In response, applicant
amended its application to include a claim of acquired
distinctiveness under Section 2(f) based on substantially
exclusive and continuous use in commerce for at least 5
years. Applicant also submitted a disclaimer of the term
“guide.” The examining attorney then issued a new refusal
on the ground that the mark is generic for applicant's
services. Applicant responded arguing against the refusal
and withdrawing the disclaimer of “guide.” The examining
attorney issued a final refusal to register the mark on the
ground that the mark is generic for applicant's services
under Section 2(e)(1). Applicant appealed and the case is
fully briefed.
The only issue on appeal is whether the mark is
generic. Descriptiveness is not an issue in this case,
where applicant has already acknowledged, by seeking

1 Application Serial No. 77779284, filed July 13, 2009 under
Section 1(a) of the Trademark Act, alleging a date of first
use of the mark in commerce and anywhere as of December 18,
2002.
Serial No. 77779284

3
registration under Section 2(f), that its mark is not
inherently distinctive. Nor is the sufficiency of
applicant’s Section 2(f) showing an issue in this case.
The Examining Attorney failed to address the sufficiency of
the 2(f) evidence in this case, effectively conceding that,
assuming the mark is not generic, applicant's claim of at
least 5 years substantially exclusive and continuous use is
sufficient to establish that the mark has acquired
distinctiveness. To the extent that the examining attorney
attempted to refuse registration on this basis for the
first time in her appeal brief, the refusal is untimely and
cannot be considered.2
Preliminary Evidentiary Issue
Before turning to the substantive grounds for refusal,
we note that applicant submitted several exhibits with its
briefs. These exhibits consist of evidence regarding
priority of use, including printouts from Network
Solutions, the internet domain name registrar, as well as
third party registrations and applications for marks
including the terms “baby” and/or “guide.” Most of these
exhibits were not previously submitted during prosecution

2 As stated in TMEP section 1209.02(b), “[i]f the examining
attorney fails to separately address the sufficiency of the
§ 2(f) evidence, this may be treated as a concession that the
evidence would be sufficient to establish distinctiveness if the
mark is ultimately found not to be generic.”
Serial No. 77779284

4
of the involved applications. The Examining Attorney did
not object to the evidence and she discussed the third-
party registrations and applications in her brief. She did
not discuss the evidence regarding priority of use.
Trademark Rule 2.142(d) addresses the submission of
evidence submitted after an appeal is filed: “The record in
the application should be complete prior to the filing of
an appeal. The Trademark Trial and Appeal Board will
ordinarily not consider additional evidence filed with the
Board by the appellant or by the Examining Attorney after
the appeal is filed.” Evidence submitted after appeal,
without a granted request to suspend and remand for
additional evidence, see TBMP § 1207.02 (3d ed. 2011), may
be considered by the Board, despite its untimeliness, if
the nonoffering party (1) does not object to the new
evidence, and (2) discusses the new evidence or otherwise
affirmatively treats it as being of record. TBMP
§ 1207.03. The Examining Attorney did not object to the
late-filed evidence and discussed the third-party
registrations and applications or otherwise treated them as
being of record. Accordingly, the third-party
registrations and applications submitted with the
applicant’s brief have been considered. The evidence
Serial No. 77779284

5
regarding priority of use, however, was not discussed by
the examining attorney and we have not considered it.3
Genericness Refusal
Whether a particular term is generic, and therefore
cannot be a trademark or service mark, is a question of
fact. In re Hotels.com LP, 573 F.3d 1300, 91 USPQ2d 1532,
1533 (Fed. Cir. 2009). When a proposed mark is refused
registration as generic, the examining attorney has the
burden of proving genericness by “clear evidence” thereof.
Id. See also 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 is to determine whether the record
shows that 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.
H. Marvin Ginn Corp. v. Int’l Ass’n of Fire Chiefs, Inc.,
782 F.2d 987, 228 USPQ 528, 530 (Fed. Cir. 1986); and In re
Women's Publishing Co. Inc., 23 USPQ2d 1876, 1877 (TTAB
1992). Making this determination “involves a two-step
inquiry: First, what is the genus of goods or services at

3 We further note, priority of use is not relevant in the context
of an ex parte proceeding.
Serial No. 77779284

6
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. 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 Merrill Lynch, 4 USPQ2d at 1143, and In
re Northland Aluminum Prods, Inc., 777 F.2d 1556, 227 USPQ
961, 963 (Fed. Cir. 1985).
1. Definition of the Genus of the Goods and Services
We begin by determining the appropriate genus of the
goods and services at issue in this case. The genus
proposed by the examining attorney, i.e., a “baby guide,”
is overbroad because it does not include any information
regarding the subject of the guides and website as recited
in the application. The genus proposed by applicant,
“printed guides and websites for new or expectant parents
featuring products or services related to pregnancy and
parenting,” is better but omits the language indicating
that the guides and website provide “a directory of third-
party retailers and entities” of the identified products
and services.
Serial No. 77779284

7
Rather, we find that the genus is appropriately
defined by the description of goods and services recited in
the application, as follows:
Printed guides for new or expectant parents featuring
a directory of third-party retailers and entities
offering products or services related to pregnancy and
parenting, and

Hosting an online website for new or expectant parents
featuring a directory of third-party retailers and
entities offering products or services related to
pregnancy and parenting.

Magic Wand Inc. v. RDB Inc., 940 F.2d 638, 19 USPQ2d 1551,
1552 (Fed. Cir. 1991) (“[A] proper genericness inquiry
focuses on the description of [goods or] services set forth
the in the [application or] certificate of registration.”).
The record supports the appropriateness of this genus.
Applicant’s website specimen includes the wording “WELCOME
TO THE NEW BABY GUIDE WEBSITE, A COMPLIMENT [sic] TO THE
BABY GUIDE MAGAZINE, YOUR GUIDE FOR EVERYTHING BABY IN
SOUTHERN NEW ENGLAND.” The website also includes links to
a “RESOURCE DIRECTORY” and a “SHOP” page, as well as links
to recommended retailers selling items intended to interest
new parents. Similarly, the specimen for the printed
guides includes a reference to a “coupon section”
presumably offering discount coupons for baby items.
Accordingly, we find that the description of goods and
Serial No. 77779284

8
services recited in the application is the appropriate
genus.
2. Primary Significance to the Relevant Public
Next, we must determine whether the primary
significance of applicant's BABY GUIDE mark is understood
by the relevant public primarily to refer to that genus of
goods and services. Marvin Ginn, 228 USPQ at 530. The
“relevant public” for goods sold in the marketplace is
limited to actual or potential purchasers of the goods and
services. Magic Wand, 19 USPQ2d at 1552-53.
Neither the examining attorney nor applicant has
defined the relevant public. Based on the evidence in the
record, as well as the identification of goods and
services, the relevant public consists of new or expectant
parents seeking products or services related to pregnancy
and parenting.
We now turn to the evidence of record to determine the
relevant public's understanding of “BABY GUIDE” as used
with the applied-for services.
The examining attorney submitted the following
dictionary definitions of “baby” and “guide” from the
Merriam-Webster online dictionary:
Baby: 1 a (1): an extremely young child; especially:
infant; and

Serial No. 77779284

9
Guide: 1 a: one that leads or directs another's way,
b: a person who exhibits and explains points of
interest, c: something that provides a person
with guiding information (emphasis added).

Examining Attorney’s Office action of May 5, 2010.
Based on the dictionary definitions which establish
that a “guide” is “something that provides a person with
guiding information” and a “baby” is “an extremely young
child” or an “infant,” BABY GUIDE merely refers to
something that provides a person with guiding information
about babies. Gould, 5 USPQ2d at 1112 (dictionary
definitions support genericness refusal); In re Wm B.
Coleman Co., 93 USPQ2d 2019, 2025 (TTAB 2010) (space
between generic terms does not disqualify proposed mark
from Gould analysis).
The examining attorney also submitted evidence from a
number of third–party web sites showing use of the term
“baby guide” in connection with online and printed guides.
Below is a representative sampling:
• greenbabyguide.com (a web site entitled The Green
Baby Guide providing information and links for new
parents including “down to earth ways to save time,
money, and the planet”);
• The Eco-nomical Baby Guide (a companion book to the
Green Baby Guide web site);
• utahbabyguide.com (featuring the Utah Baby Guide, a
regional digital “free magazine for new and
expecting parents”);
Serial No. 77779284

10
• littlebabyguide.com (a web site with baby
information and recommendations on baby accessories
via articles such as a “baby car seat guide” and a
“baby diaper guide”);
• ibabyguide.com (a web site featuring a page entitled
“Baby Guide” with a “comprehensive baby shopping
guide to help you make a buying decision on baby
needs and infant products”);
• organicbabyguide.net (a web site offering
“Everything Organic For You and Your Baby” including
links to purchase organic baby products such as
clothing and cribs);
• thethriftycouple.com (a web site featuring ways for
consumers to save money and including a page
entitled “Baby Guide” featuring ways to save money
while raising children);
• parenthood.com (an “online parenting resource”
including a page entitled “Baby Guide – Spotlight
Resources” featuring a listing of baby furniture
retailers);
• littlebabebigcity.com (featuring a link to the “New
York City Baby Guide” and the “Seattle Baby Guide”
which both provide information on local baby stores,
pediatricians, kid-friendly restaurants, and “all
things hip and baby in your hood”);
• northernvirginiamag.com (a regional online magazine
including a “baby guide” web page featuring a
directory of “child-friendly eateries”);
• gvparent.com (a regional online magazine featuring
the “Rochester Baby Guide 2010” for “new or
expecting parents, grandparents, family members or
friends” and providing links to baby product
retailers and “a wealth of information from national
and local experts”);
• tulasakids.com (a web page announcing a “2010 Baby
Guide” claiming to be “all things pregnancy and baby
related”);
• creativechild.com (a web site “helping parents
nurture their child’s creativity” including a “Baby
Guide” featuring an extensive listing of baby
product retailers);
Serial No. 77779284

11
• perfectbabyguide.com (a web site with links to
information on baby health, baby food, baby safety,
baby products); and
• nashvilleparent.com (featuring a page entitled “The
Baby Guide” providing information on babies,
including “Hot New Products”).
The examining attorney argues that these examples
demonstrate that “the wording ‘baby guide’ is used to
identify printed or online publications that contain lists
or directories of goods and services for babies” and
further, that “the public has had significant exposure to
the wording ‘baby guide’ and would understand ‘baby guide’
as the name for the applicant’s type of goods and services,
and not as a trademark for them.” Examining Attorney’s Br.
at 4-5.
In addition to the dictionary definitions, this
internet evidence amply demonstrates that the term “baby
guide” is commonly used, not only by consumers but also by
competitors, to refer to printed or electronic publications
or directories containing information for new and expectant
parents about babies and products for babies. Some of the
web sites such as the ibabyguide.com web site or the
creativechild.com web site simply provide a web page
entitled “baby guide” with baby information and a directory
of retailers offering baby products. Other web sites such
as the “Utah Baby Guide,” perfectbabyguide.com, or the
Serial No. 77779284

12
“Green Baby Guide” offer more specialized baby guides by
focusing on geographic regions or particular lifestyles but
these uses nevertheless demonstrate that “baby guide”
refers to the same genus of goods and services provided by
applicant. In short, most, if not all of these “baby
guides” provide precisely the same type of articles about
babies and directories of baby products for expectant
parents as applicant via its printed guides and web site.
Applicant primarily argues that all of these uses by
third parties were “long after the Applicant began the
usage of the mark BABY GUIDE in the marketplace in 2002.”
Applicant’s Br. at 12. This argument is unavailing.
First, in this case, the dictionary definitions alone are
sufficient to find the term generic. Gould, 5 USPQ2d at
1112. However, even assuming, arguendo, that the mark was
at one time entitled to registration, it is well settled
that registrability must be determined at the time
registration is sought and a term that was once suggestive
may later become merely descriptive or even generic. See
In re Thunderbird Prods. Corp., 406 F.2d 1389, 160 USPQ
730, 732 (CCPA 1969). Thus, the issue before us is whether
the consuming public now regards “BABY GUIDE” as merely
referring to the genus of goods and services encompassed by
applicant’s identification. We find that it does.
Serial No. 77779284

13
Applicant next argues that “BABY GUIDE” is a double
entendre because “while the terms separately identify a
baby and a guide, when [] considered in connection with
these goods, the term does not suggest products which may
only be used by a baby.” Applicant’s Br. at 18. We
disagree. The evidence of record is both clear and
substantial and demonstrates that the term BABY GUIDE has a
commonly understood meaning to the relevant public as
referring to guides for expectant parents including
information on purchasing baby products. There is simply
no support in the record for a different meaning or double
entendre.
Applicant also argues that a number of third-party
marks including the terms BABY and/or GUIDE have registered
or been approved for publication and, therefore, “it
follows that the mark BABY GUIDE should also be
registered.” Applicant’s Br. at 19.
As an initial matter, third-party registrations are
not conclusive on the issue of registrability. Each case
must stand on its own merits, and a mark that is merely
descriptive or generic must not be registered on the
Principal Register simply because other marks with common
terms appear on the register. See In re Nett Designs Inc.,
236 F.3d 1339, 57 USPQ2d 1564, 1566 (Fed. Cir. 2001)(“Even
Serial No. 77779284

14
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.”).
Moreover, each of the marks cited by applicant can be
distinguished from applicant’s mark in some critical way.
For example, the mark APARTMENT GUIDE is registered for
significantly different services as compared to applicant’s
goods and services. Similarly, the other marks have no
evidentiary value as they are either cancelled
registrations, pending applications, or disclaim the term
“baby guide” in its entirety. See Action Temp. Servs. Inc.
v. Labor Force Inc., 870 F.2d 1563, 10 USPQ2d 1307, 1309
(Fed. Cir. 1989) (“[A] cancelled registration does not
provide constructive notice of anything”); and Interpayment
Servs. Ltd. v. Docters & Thiede, 66 USPQ2d 1463 (TTAB
2003)(applications show only that they have been filed).
We have considered the remainder of applicant’s
arguments but find them unpersuasive. Based upon
consideration of all the evidence of record, we conclude
that BABY GUIDE is generic for the identified goods and
services.
Decision: The refusal of registration is affirmed.