Caddy Girls USA, Inc.

Trademark Trial and Appeal Board

Dec 7, 2001

No. 75619824 (T.T.A.B. Dec. 7, 2001)

12/07/01

Paper No. 16
TEH

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Caddy Girls USA, Inc.
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Serial No. 75/619,824
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Eric D. Paulsrud for Caddy Girls USA, Inc. for Caddy Girls USA,
Inc.

Tracy L. Fletcher, Trademark Examining Attorney, Law Office 115
(Tomas Vlcek, Managing Attorney).
_______

Before Cissel, Wendel and Holtzman, Administrative Trademark
Judges.

Opinion by Holtzman, Administrative Trademark Judge:

An application has been filed by Caddy Girls USA, Inc. to
register CADDY GIRLS for "golf caddie services in the nature of
accompanying players on a round of golf and providing information
and club selection and transportation assistance."1 The
application is based on a claim of first use and first use in
commerce on September 20, 1994.

1 Serial No. 75/619,824, filed January 12, 1999.

THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Ser No. 75/619,824
2
The Trademark Examining Attorney refused registration under
Section 2(e)(1) of the Trademark Act on the ground that
applicant's mark is merely descriptive of its services and, in
view of the highly descriptive nature of applicant's mark,
applicant's evidence is insufficient to show acquired
distinctiveness of the mark under Section 2(f) of the Act.
In support of her position, the Examining Attorney pointed to
the descriptive use of CADDY GIRLS on applicant's specimens and
made of record dictionary definitions of the words "caddy" and
"girl," a NEXIS excerpt from a British publication containing a
reference to "caddy girls," a page from the third-party website of
Caddy Services of Arizona referring to "Arizona Caddy Girls," and
a number of NEXIS excerpts showing use of such terms as "girl
caddies" or "female caddies." The following are representative of
these stories (emphasis added):
The most famous female caddie in golf has switched bags for
the second time in a year. The Washington Post (April 8,
2000).

The greatest concentration of female caddies can be found on
the Buy.com Tour, where players on tight budgets can save
money by enlisting wives and girlfriends to shoulder their
bags. USA Today (April 5, 2000).

'We found some great early pictures, the newsreel stills of
the girl caddies, old photos of the Tap Room....' The San
Francisco Examiner (December 5, 1999).

Most of those named started their work lives with low-paying
first jobs,.... One was the first girl caddy at the Findlay
Country Club. Business First-Columbus (September 17, 1999).
Ser No. 75/619,824
3
The 40 teen-age boys and girls who caddy under the burning
July and August sun at St. Albans Country Club in Franklin
County, for instance, will earn between $ 20 and $ 25 from
each golfer they help. St. Louis Post-Dispatch (May 23,
1999).

'To solve the caddy shortage, the Flossmoor Country Club of
Illinois employed girls and older men as caddies....'
Newsday (New York, NY) (March 29, 1998).

In response to the refusal to register the mark as merely
descriptive, and without any argument that the mark is inherently
distinctive, applicant amended the application to seek
registration under Section 2(f). Applicant based its claim of
acquired distinctiveness on a declaration by Mark S. Anderson,
applicant's CEO/CFO, that the mark has been in substantially
exclusive and continuous use in commerce for five years. In
addition, applicant pointed to its specimens of use which include
gift certificates, newspaper advertisements and an "informational
article that appeared in a newspaper." Applicant submitted a
further declaration of Mr. Anderson referring to a number of
advertisements offering a CADDY GIRLS "business opportunity,"
expenditures totaling $27,375 from March 1999 through October 2000
relating to those advertisements, and a report of "access
statistics" to show the impact of the advertising expenditures on
the number of visitors to applicant's web site. Applicant also
relied on the file history for a third-party registration of VALET
GIRLS for "vehicle parking and valet parking" arguing that said
Ser No. 75/619,824
4
registration is a "comparable application to the present
application." (Brief, p. 12).
When the refusal was made final, applicant appealed. Both
applicant and the Examining Attorney filed briefs. An oral
hearing was not requested.
The Examining Attorney argues that CADDY GIRLS is merely
descriptive of golf caddy services performed by girl caddies and
that in fact the record shows that CADDY GIRLS is highly
descriptive of applicant's services. The Examining Attorney
maintains that applicant's evidence is insufficient to show that
CADDY GIRLS has acquired distinctiveness contending that
applicant's use of the mark is not "substantially" exclusive and
that applicant's advertising expenditures are "minimal and
insufficient." The Examining Attorney further notes that
applicant's advertising expenditures do not relate to
advertisements for caddy services but rather for the offer of a
"business opportunity." As a result, the Examining Attorney
concludes that neither this evidence nor the evidence of increased
hits on applicant's website shows that the consuming public has
come to recognize the mark as an indication of source for the
identified services.
Applicant, on the other hand, contends that the Examining
Attorney's evidence is insufficient to establish that its use of
CADDY GIRLS is not substantially exclusive. Applicant argues that
Ser No. 75/619,824
5
the appearance of the term in a foreign newspaper and on a single
website does not undermine its claim of substantially exclusive
use. Applicant also explains that it has been monitoring the
website for infringing use but has found that the use on that site
appears to be inconsequential. Applicant notes that the phrase
CADDY GIRLS has no known dictionary meaning and that there is no
evidence that the phrase is used by competitors or by the public.
Applicant points out that none of the NEXIS stories contain the
phrase "caddy girls" (or variants such as "caddie girls") and
argues that the use of a different phrase, "girl caddies," in
those stories is not relevant. It is applicant's position that
its targeted advertising has been effective in creating a link in
the consumers' minds between the mark and the source of the
services. Finally, applicant argues that the registration of a
"comparable" mark VALET GIRL justifies registration of the present
mark.
There is no question that CADDY GIRLS is merely descriptive
of applicant's services. Applicant has conceded the descriptive
meaning of the designation2 and moreover, it is clear from the

2 The only issue on appeal is whether the evidence is sufficient to show
that the proposed mark has acquired distinctiveness under Section 2(f).
Unless the question of inherent distinctiveness is clearly reserved,
which in this case it was not, a claim of acquired distinctiveness under
Section 2(f) is tantamount to a concession that the mark is not
inherently distinctive. See Yamaha International Corp. v. Hoshino Gakki
Co. Ltd., 840 F.2d 1572, 6 USPQ2d 1001, 1005 (Fed. Cir. 1988) and
General Foods Corporation v. MGD Partners, 224 USPQ 479, 485 (TTAB
1984).
Ser No. 75/619,824
6
record, including the specimens, that purchasers would
immediately, and without the exercise of any imagination,
understand its meaning upon encountering the mark in connection
with applicant's caddy services.
Applicant has based its claim of acquired distinctiveness of
the mark on a declaration of five-years substantially exclusive
and continuous use as well as evidence of actual use of the mark.
To begin with, the evidence submitted by the Examining Attorney is
not sufficient to affect applicant's claim of substantially
exclusive use. See, e.g., L.D. Kichler Co. v. Davoil Inc. 192
F.3d 1349, 52 USPQ2d 1307 (Fed. Cir. 1999) (noting that the
district court erred in suggesting that any use by others is
sufficient to preclude an applicant's declaration of
"substantially exclusive" use). In addition, the appearance of a
term in a foreign publication, without evidence of substantial
circulation of the publication in the United States, is not
probative of consumer perception in this country. See In re BDH
Two Inc., 26 USPQ2d 1556 (TTAB 1993). Moreover, the appearance of
"Arizona Caddy Girls" on the third-party website is not
particularly meaningful. There is no use of that term on the
webpage in relation to any service or activity. In fact, the term
does not appear to be used at all by the owner of the website
except as merely a link (among other links) to unidentified third-
party websites.
Ser No. 75/619,824
7
On the other hand, we agree with the Examining Attorney that
applicant's evidence of actual use of the mark is of no persuasive
value. Acquired distinctiveness is an association in the
consumer's mind between the mark and the source of goods or
services. Thus, the evidence of acquired distinctiveness must not
only relate to the specific mark for which registration is sought
but the specific services set forth in the application. See In re
K-T Zoe Furniture Inc., 16 F.3d 398, 29 USPQ2d 1787 (Fed. Cir.
1994) citing In re Failure Analysis Associates, 1 USPQ2d 1144
(TTAB 1986). Applicant submitted no persuasive evidence of actual
use relating to its caddy services, the services for which
registration is sought. Although applicant has submitted
advertisements for caddy services as specimens, there is no
evidence as to the amount or extent of such advertising. The
record shows only that $27,375 was spent on advertisements, not
for caddy services, but for the offer of a "business opportunity"
under the CADDY GIRLS mark. Therefore, contrary to applicant's
claim, it cannot be said that applicant's advertising activity has
been successful in creating an awareness or recognition of CADDY
GIRLS for caddy services in the minds of relevant consumers or,
for that matter, that applicant's "web site metrics" reflect any
connection of the mark with caddy services in the minds of
consumers.
Ser No. 75/619,824
8
Therefore, the question is whether applicant's declaration of
five-years use, the only relevant evidence in the record, is
sufficient to establish prima facie that the mark has become
distinctive of the identified services.3 The burden is on
applicant to show acquired distinctiveness, and the more
descriptive the term, the heavier that burden. Yamaha
International Corp. v. Hoshino Gakki Co., 840 F.2d 1572, 6 USPQ2d
1001 (Fed. Cir. 1988). A declaration of substantially exclusive
and continuous use as a mark for five years is insufficient in and
of itself to support registrability under Section 2(f) where the
term sought to be registered is highly descriptive of the
identified goods or services. See In re Synergistics Research
Corporation, 218 USPQ 165 (TTAB 1983). The burden is on the
Examining Attorney to establish that the term is highly
descriptive of the services, and based on the evidence of record
we are not convinced that this term is.
The dictionary and NEXIS references submitted by the
Examining Attorney show that the individual words "girl" and
"caddy" as well as phrases such as "girl caddies" may be highly
descriptive for caddy services. However, the reverse order of the

3 What applicant refers to as an "informational article appearing in a
newspaper" is unidentified as to author, source or date and has not been
considered. The third-party registration for VALET GIRLS has no bearing
on this case for reasons fully explained by the Examining Attorney.

Ser No. 75/619,824
9
words "girl caddy" is somewhat unusual and results in a mark which
as a whole creates a slightly different impression than the highly
descriptive phrase "girl caddy." There is no evidence that anyone
else uses or needs to use the words CADDY GIRLS in that order to
describe similar services or that CADDY GIRLS would be perceived
by purchasers as nothing more than a highly descriptive term for
applicant's services.
Accordingly, we find that although applicant's mark is merely
descriptive of its services, the evidence is sufficient to
establish prima facie that the mark has become distinctive of
applicant's services under Section 2(f) of the Act.
Decision: The refusal to register is reversed.