Chain Store Guides, LLC

Trademark Trial and Appeal Board

Jan 23, 2019

No. 87193034 (T.T.A.B. Jan. 23, 2019)

This Opinion is Not a
Precedent of the TTAB

Mailed: January 23, 2019

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

In re Chain Store Guides, LLC
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Serial No. 87193034
_____

Deborah Nesset of Law Firm of Deborah Nesset,
for Chain Store Guides, LLC

Dustin T. Bednarz, Trademark Examining Attorney, Law Office 121,
Kevin Mittler, Managing Attorney.
_____

Before Wellington, Lynch, and Pologeorgis
Administrative Trademark Judges.

Opinion by Lynch, Administrative Trademark Judge:
I. Background and Issue on Appeal
Chain Store Guides, LLC (“Applicant”) seeks to register on the Supplemental
Register the mark DIRECTORY OF SUPERMARKET, GROCERY &
CONVENIENCE STORE CHAINS in standard characters for “Printed directories
featuring key contact and personnel information for supermarket, grocery store
Serial No. 87193034
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retailers and convenience store chains” in International Class 16.1 Applicant initially
applied for registration on the Principal Register, and the Examining Attorney
refused registration of the mark as merely descriptive under Section 2(e)(1), 15 U.S.C.
§ 1052(e)(1).2 Applicant responded by amending to seek registration of the mark on
the Supplemental Register.3 The Examining Attorney then refused registration of the
mark as generic under Sections 23(c) and 45, 15 U.S.C. §§ 1091(c) & 1027, and
therefore incapable of distinguishing the identified goods. Applicant responded by
maintaining that its mark “is not generic and is specific to the the [sic] subject
industries who need the lead information to market their business.”4 When the
Examining Attorney made the genericness refusal final, Applicant requested
reconsideration,5 but the Examining Attorney maintained the refusal. Applicant then
appealed, and the case has been briefed.6

1 Application Serial No. 87193034, filed October 4, 2016, based on an allegation of use in
commerce under Section 1(a) of the Trademark Act, 15 U.S.C. § 1051(a), stating May 19, 1992
as both the date of first use and the date of first use in commerce.
2 January 10, 2017 Office Action. The Office Action included another refusal that Applicant
subsequently overcame and a requirement that was satisfied, so they are not at issue in this
appeal.
3 April 4, 2017 Response to Office Action at 2.
4 October 24, 2017 Response to Office Action at 1.
5 Although Applicant’s Request for Reconsideration included an assertion that “the mark has
acquired secondary meaning” (April 23, 2018 Request for Reconsideration at 1), because such
a claim was irrelevant to the only refusal at issue – genericness – it did not present a new
issue requiring a new nonfinal action by the Examining Attorney and we do not consider it
an issue on appeal. Cf. TMEP § 714.05 (Oct. 2018) (“If an applicant submits an unacceptable
amendment in response to a refusal or requirement issued by the examining attorney, the
amendment generally does not raise a new issue that requires a nonfinal action”).
6 Based on the representations in the declaration by Applicant’s counsel, 6 TTABVUE, and
the lack of objection by the Examining Attorney, we exercise our discretion to consider
Applicant’s Brief despite its untimeliness. See Trademark Rule 2.142(b)(1), 37 C.F.R.
§ 2.142(b)(1).
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Applicant has conceded that its mark is at least merely descriptive of its identified
goods by seeking registration on the Supplemental Register. See In re Rosemount Inc.,
86 USPQ2d 1436, 1439 (TTAB 2008) (“because applicant seeks registration on
the Supplemental Register, applicant has conceded that the marks are merely
descriptive”); In re Eddie Z's Blinds and Drapery, Inc., 74 USPQ2d 1037, 1039 (TTAB
2005) (“applicant has, by its amendment, conceded that its proposed mark is merely
descriptive”). We therefore disregard Applicant’s argument in its Brief that its mark
is not merely descriptive. Applicant did not make its amendment to the Supplemental
Register in the alternative,7 and the Examining Attorney did not treat it as such.
Contrast In re Binion, 93 USPQ2d 1531, 1538 (TTAB 2009) (treating a Section 2(f)
claim as if made in the alternative where the examining attorney did not take the
claim as a concession and instead “treated the claim as an alternative one”). Thus,
we also do not consider Applicant’s arguments concerning acquired distinctiveness,
which would only be relevant if Applicant were seeking registration on the Principal
Register under Section 2(f), 15 U.S.C. § 1052(f).8

7 April 4, 2017 Response to Office Action (amendment to the Supplemental Register, not in
the alternative).
8 Regardless, even if we considered the arguments, as explained further below, the same
evidence that shows the mark is generic also shows that it is highly descriptive. Given that,
we would find that Applicant’s long use (since 1992), general statement of marketing
expenditure not limited to this mark, and the alleged general “recognition” by Chain Store
Age (again, not specifically tied to this mark) would not suffice to show acquired
distinctiveness of this highly descriptive mark. See April 23, 2018 Request for
Reconsideration. Applicant also listed but failed to attach several registrations. None of these
listed registrations, however, are for the same mark as the applied-for mark and, therefore,
are not probative in our analysis herein.
Serial No. 87193034
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II. Genericness
Applicant maintains that its mark is not generic. “A generic term ‘is the common
descriptive name of a class of goods or services.’ [citation omitted]. A generic mark,
being the ‘ultimate in descriptiveness,’ cannot acquire distinctiveness.” Royal Crown
Co. v. Coca-Cola Co., 892 F.3d 1358, 127 USPQ2d 1041, 1045 (Fed. Cir. 2018) (quoting
H. Marvin Ginn Corp. v. Int’l Ass’n of Fire Chiefs, Inc., 782 F.2d 987, 228 USPQ 528
(Fed. Cir. 1986)). Whether a proposed mark is generic rests on its primary
significance to the relevant public. In re Am. Fertility Soc’y, 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). 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; see also Royal Crown,
127 USPQ2d at 1046. A term also can be considered generic if the public “understands
the term to refer to a key aspect of that genus,” or part of the genus, “even if the public
does not understand the term to refer to the broad genus as a whole.” In re Cordua
Rests., Inc., 823 F.3d 594, 118 USPQ2d 1632, 1637-38 (Fed. Cir. 2016).
The Examining Attorney must establish by clear evidence that a mark is generic.
In re Hotels.com, L.P., 573 F.3d 1300, 91 USPQ2d 1532, 1533 (Fed. Cir. 2009); In re
Merrill Lynch, Pierce, Fenner, & Smith, Inc., 828 F.2d 1567, 4 USPQ2d 1141, 1143
(Fed. Cir. 1987). “Evidence of the public’s understanding of the term may be obtained
from any competent source, such as purchaser testimony, consumer surveys, listings
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in dictionaries, trade journals, newspapers and other publications.” In re Merrill
Lynch, Pierce, Fenner, & Smith, Inc., 4 USPQ2d at 1143; see also Cordua Rests., 118
USPQ2d at 1634. In some cases, dictionary definitions of the component terms in a
mark and an applicant’s own description of its goods may suffice to show genericness.
In re Gould Paper Corp., 834 F.2d 1017, 5 USPQ2d 1110, 1112 (Fed. Cir. 1987); see
also In re Am. Fertility Soc’y, 188 F.3d 1341, 51 USPQ2d 1832, 1836 (Fed. Cir. 1999).
Because the identification of goods in an application defines the scope of rights
that will be accorded the owner of any resulting registration under Section 7(b) of the
Trademark Act, 15 U.S.C. § 1057(b), generally “a proper genericness inquiry focuses
on the description of [goods] set forth in the [application or] certificate of registration.”
Cordua Rests., 118 USPQ2d at 1636 (quoting Magic Wand, 19 USPQ2d at 1552). In
this case the identification appropriately expresses the genus of goods at issue. Thus,
the ultimate inquiry is whether the relevant public understands DIRECTORY OF
SUPERMARKET, GROCERY & CONVENIENCE STORE CHAINS to refer to
printed directories featuring key contact and personnel information for supermarket,
grocery store retailers and convenience store chains.
Bearing in mind that we assess the mark in its entirety, on this record, we
nonetheless also find it “useful to consider the public’s understanding of the
individual words.” See Princeton Vanguard, LLC v. Frito-Lay North Am., Inc., 786
F.3d 960, 114 USPQ2d 1827, 1832-33 (Fed. Cir. 2015). Applicant’s own identification
identifies its goods as “directories,” which comports with a dictionary entry in the
record for “directory” defining it as “[a] book listing individuals or organizations
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alphabetically or thematically with details such as names, addresses, and telephone
numbers.”9 Applicant’s substitute specimen refers to its goods as a “print directory.”
See In re Reed Elsevier Props., 482 F.3d 1376, 82 USPQ2d 1378, 1380 (Fed. Cir. 2007)
(Appropriate to consider the applicant’s website to provide context for and inform the
understanding of the identification); In re Steelbuilding.com, 415 F.3d 1293, 75
USPQ2d 1420 (Fed. Cir. 2005) (examining the subject website in order to understand
the meaning of terms). Applicant’s own identification also states that its directories,
inter alia, provide information about “supermarkets,” “grocery store retailers,” and
“convenience store chains.” A dictionary entry in the record for “supermarket” defines
it as “[a] large self-service store selling foods and household goods.”10 An entry for
“grocery” defines it as “[a] grocer’s store or business.”11 An entry for “convenience
store” defines it as “[a] store with extended opening hours and in a convenient
location, stocking a limited range of household goods and groceries.”12 Finally, an
entry for “chain” includes the relevant definition, “[a] group of establishments, such
as hotels, stores, or restaurants, owned by the same company.”13
Other evidence in the record corroborates the definitions and Applicant’s own use
of the terms in the mark. The record shows that “directory” is used in the relevant
industry for various types of listings related to supermarkets, groceries and

9 January 10, 2017 Office Action at 7 (oxforddictionaries.com).
10 Id. at 10 (oxforddictionaries.com).
11 Id. at 13 (oxforddictionaries.com).
12 Id. at 16 (oxforddictionaries.com).
13 Id. at 19-20 (oxforddictionaries.com).
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convenience stores, including reference to convenience store chains and grocery store
chains. For example:
A screenshot of “Directory of Convenience Stores” promotes
its directory as well as other “Grocery, Gourmet &
Convenience Store Retailer Resources.”14
The website for RetailBuyers.net promotes its “Directory of
Convenience Stores,” described as “dynamic online
databases providing high-quality sales leads and industry
intelligence….”15
A webpage titled “Convenience Store Directory” promotes
a “Convenience/Grocery Store Directory” characterized as
including “[o]ver 1,600 Convenience Store Chains (Ex. 7-
11, Chevron, Circle K etc.)” and “Over 1,700 Grocery Store
Chains (Ex. Kroger, Publix, Safeway, Walmart etc.).”16
According to the information on the webpage, the directory
contains contact information for “the Grocery Chain List”
of retailers who “operate two or more stores, with an
importance on high sales volume and fast moving
products.”17 The webpage also notes that “[t]here are many
other convenience store lists, grocery store lists and
supermarket lists on the market, but nothing as
comprehensive as ours for the price.”18
The webpage for “Grocery Stores Directory” states that
“[t]his Grocery Stores directory includes grocery store or
supermarket pages….[and] [e]ach directory listing
specifies the County in which the grocery store or
supermarket is located as well as the database categories
that are relevant to the listing.”19
A screenshot from the EndFoodWaste.org website
promotes “The Ugly Fruit and Veg Supermarket

14 Id. at 29 (directory.c-stores.com).
15 Id. at 30 (retailbuyers.net).
16 Id. at 32 (cstoredirectory.com).
17 Id. at 33.
18 Id.
19 Id. at 34 (grocery-stores.regionaldirectory.us).
Serial No. 87193034
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Directory,” a directory of retailers who have agreed to sell
“cosmetically imperfect” produce.20
The website of Progressive Grocer offers links to “National Supermarket Chains” and
“Regional Supermarket Chains” as well as “Independent Grocers.”21 The record thus
reflects that “chains” in this context refers to supermarkets, grocery stores and
convenience stores with multiple locations under common ownership or control.
Applicant’s only evidentiary submission is a declaration by its managing member,
Earl Macomber, that includes representations such as:22
The subject mark, Directory of Supermarket, Grocery &
Convenience Store Chains, in use since 1946, is one of
many comprehensive directories produced by [Applicant]
that cover a myriad of industries.
The directories offered by [Applicant], under their
distinctive marks, including the subject mark
DIRECTORY OF SUPERMARKET, GROCERY &
CONVENIENCE STORE CHAINS, are unique to the
industry of business directories. The consumers for these
types of directories are small, discreet and highly
sophisticated.
[Customers include] manufacturers, suppliers, service
providers, brokers, real estate professionals, retailers,
analysts, consultants and other professionals….
Applicant spends over $350,000 … in marketing their
directories, including the directory with the subject mark.

20 Id. at 26 (endfoodwaste.org).
21 Id. at 23 (progressivegrocer.com).
22 October 24, 2017 Response to Office Action at 4-10 (Macomber Declaration). While we note
that the declaration includes an exhibit with purported client testimonials, we do not find
them probative, as these unsigned hearsay quotations do not even refer to or address the
consumer perception of DIRECTORY OF SUPERMARKET, GROCERY & CONVENIENCE
STORE CHAINS. Instead, they refer to Applicant in general (“Chain Store Guide” or “CSG”),
or on occasion refer to other marks, and discuss the quality and usefulness of Applicant’s
goods and services. Id. at 6-10 (Macomber Declaration, Exhibit A).
Serial No. 87193034
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[Applicant] and its directories have also been recognized by
Chain Store Age, the leading publication in [Applicant’s]
industry.
The declaration contains very little factual information bearing on the genericness
inquiry. Numerous statements in the declaration, such as that concerning industry
recognition and marketing expenditures, concern Applicant’s business in general and
its “many comprehensive directories,” rather than the mark at issue in this
proceeding, DIRECTORY OF SUPERMARKET, GROCERY & CONVENIENCE
STORE CHAINS. The more specific representation that the mark at issue has been
in use since 1946 is not germane to the genericness inquiry because “[o]f course, a
generic term cannot be appropriated exclusively as a trademark irrespective of the
length of use or level of promotional efforts.” See In re ActiveVideo Networks, Inc., 111
USPQ2d 1581, 1605 (TTAB 2014). Mr. Macomber’s representation about the nature
and type of consumers helps identify the relevant purchasing public, but does not
undercut genericness in this case. The evidentiary record even includes generic use
of the terms in Applicant’s mark within the relevant industry to which these
sophisticated purchasers are accustomed. There is no basis to find that even
relatively sophisticated purchasers would understand DIRECTORY OF
SUPERMARKET, GROCERY & CONVENIENCE STORE CHAINS as anything
other than a generic term for Applicant’s goods.
We find that Applicant’s mark is the common descriptive name of a class of
directories – those that list chains of supermarkets, grocery stores, and convenience
stores. Although it is possible for “the whole [of a mark to] be greater than the sum
of its parts,” Princeton Vanguard, 114 USPQ2d at 1831, we do not find that to be true
Serial No. 87193034
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of Applicant’s mark. Rather, “the entire formulation does not add any meaning to the
otherwise generic mark.” See Steelbuilding, 75 USPQ3d at 1421. Although the
evidence set forth above does not include third-party use of Applicant’s entire exact
mark, it includes numerous examples of some of the wording used together, such as
multiple uses of “Directory of Convenience Stores” and “Convenience Store
Directory,”23 and use of “Grocery Chain,”24 “Supermarket Chains,”25 “Grocery Stores
Directory,”26 and “Supermarket Directory.”27 The record contains no other evidence
of consumer perception suggesting that the mark as a whole is or could be capable of
being a source-indicator. Applicant’s mark is generic for directories of chain
supermarkets, groceries, and convenience stores because it names all or a part of the
genus of “printed directories featuring key contact and personnel information for
supermarket, grocery store retailers and convenience store chains.” See Cordua
Rests., 118 USPQ2d at 1637-38. See Reed Elsevier Props., 82 USPQ2d at 1379
(LAWYERS.COM generic for “[p]roviding access to an online interactive database
featuring information exchange in the fields of law, legal news, and legal services”).
Decision: The refusal to register Applicant’s proposed mark on the ground that
it is the generic designation of the identified goods is affirmed.

23 January 10, 2017 Office Action at 29 (directory.c-stores.com), 30 (retailbuyers.net), and Id.
at 32 (cstoredirectory.com).
24 Id. at 33 (cstoredirectory.com).
25 Id. at 23 (progressivegrocer.com).
26 Id. at 34 (grocery-stores.regionaldirectory.us).
27 Id. at 26 (endfoodwaste.org).