Chain Store Guides, LLC

Trademark Trial and Appeal Board

Jan 23, 2019

No. 87185069 (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. 87185069
_____

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 CHAIN RESTAURANT OPERATORS DIRECTORY in standard
characters for “Printed directories featuring key contact and personnel information
for restaurant chains and franchisees and in-depth information about restaurant
Serial No. 87185069
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chains and franchisees” in International Class 16.1 Applicant’s initial application was
for registration on the Principal Register under Section 2(f), 15 U.S.C. § 1052(f) based
on an allegation of at least five years of use of the mark. The Examining Attorney
refused registration under Section 2(e)(1), 15 U.S.C. § 1052(e)(1) and rejected the
Section 2(f) claim as insufficient given the “highly descriptive or generic” nature of
the mark.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. When the Examining
Attorney made the genericness refusal final, Applicant requested reconsideration,4
but the Examining Attorney maintained the refusal. Applicant appealed, and the case
has been briefed.5

1 Application Serial No. 87185069, filed September 27, 2016, based on an allegation of use of
in commerce under Section 1(a) of the Trademark Act, 15 U.S.C. § 1051(a), stating May 7,
1992 as the date of first use and first use in commerce.
2 January 10, 2017 Office Action at 3.
3 April 4, 2017 Response to Office Action at 2.
4 Although Applicant’s Request for Reconsideration included an assertion that “the mark has
acquired secondary meaning” (April 23, 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”).

5 The Board expects compliance with the rules and noncompliant submissions may be
rejected. Based on the representations in the declaration by Applicant’s counsel,
5 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). We do so despite noting that the Brief is single-spaced and thus also fails
to comply with Trademark Rule 2.126(a)(1), 37 C.F.R. § 2.126(a)(1).
Serial No. 87185069
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Applicant has conceded that its mark is at least descriptive 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.
Moreover, Applicant did not make its amendment to the Supplemental Register in
the alternative,6 and so we do not consider Applicant’s arguments concerning
acquired distinctiveness, which would only be relevant if Applicant still were seeking
registration on the Principal Register under Section 2(f), 15 U.S.C. § 1052(f).7
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

6 April 4, 2017 Response to Office Action (amendment to the Supplemental Register, not in
the alternative).
7 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, 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. Applicant also listed but failed to attach several registrations it claims to
own. 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.
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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
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.
Serial No. 87185069
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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 CHAIN
RESTAURANT OPERATORS DIRECTORY to refer to printed directories featuring
key contact and personnel information for restaurant chains and franchisees and in-
depth information about restaurant chains and franchisees.
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
alphabetically or thematically with details such as names, addresses, and telephone
numbers.”8 Applicant’s specimen also 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)

8 January 10, 2017 Office Action at 18 (oxforddictionaries.com).
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(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). Evidence in the record shows that “directory” is used in the
restaurant industry for various types of information listings. For example, a
screenshot from the 4-Restaurant Restaurant Web Directory describes it as “the
online restaurant directory providing links to” a variety of restaurant-related
information.9
Similarly, Applicant’s own identification also states that its directories, inter alia,
provide information about “restaurant chains.” A dictionary entry in the record for
“chain,” includes the relevant definition, “[a] group of establishments, such as hotels,
stores, or restaurants, owned by the same company.”10 And an entry for “restaurant”
defines it as “[a] place where people pay to sit and eat meals that are cooked and
served on the premises.”11 Other evidence in the record corroborates the definitions
and Applicant’s use, reflecting that “restaurant chains” and “chain restaurants” are
used interchangeably in the industry to refer to multiple-location restaurants under
common ownership or control. Examples include use of this term in connection with
restaurant-related databases:12

9 Id. at 37 (4-restaurant.com).
10 January 10, 2017 Office Action at 7-8 (oxforddictionaries.com).
11 Id. at 11 (oxforddictionaries.com).
12 Applicant referred to its directories as “databases” in its April 4, 2017 Response to Office
Action at 1.
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Screenshots from The Foodservice Database Company,
promote “Foodservice Operators Guide of Chain
Restaurants,” a “database [that] has over 5,600 companies
with headquarter locations….”13 The site also features a
“Hotel Restaurants database,” a “Pizza Chains database,”
a “Quick Service, Fast Casual Chain Restaurants
database,”14 and a “Fine Dining, Casual, Family Chain
Restaurants database.”15
Screenshots of RestaurantData.com webpages promote
RestaurantChains.net including a “Multi-Unit
Headquarters Database,”16 featuring articles entitled
“Demystified. Restaurant chains not closing in droves,
Independents are” and “Restaurant chains and
independent restaurant survival rates for 2015,”17 and
including a link to “Restaurant Chain Monitor.”18
In the context of restaurants, dictionary evidence indicates that an “operator” is
“[a] person or company that engages in or runs a business or enterprise.”19 The record
includes examples of industry use of “restaurant operator,” including in the context
of directories:
Screenshots from the Trustoria website promote its
“Illinois Restaurant Operators Directory” described as
including professional profiles of “nearly every Restaurant
Operator in Illinois.”20

13 November 27, 2017 Office Action at 7 (fsdboo.com).
14 Id. at 8 (fsdboo.com).
15 Id. at 9 (fsdboo.com).
16 Id. at 26 (restaurantdata.com).
17 Id. at 30 (restaurantdata.com).
18 Id. at 32 (restaurantdata.com).
19 Id. at 15 (oxforddictionaries.com).
20 January 10, 2017 Office Action at 33-36 (trustoria.com).
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Screenshots of webpages of the National Restaurant
Association, tout “Restaurant Operator Benefits.”21
Applicant’s only evidentiary submission is a declaration by its managing member,
Earl Macomber, that includes representations such as:22
the directory sold under this mark “is one of many
comprehensive directories produced by [Applicant] that
cover a myriad of industries,” which directories are “unique
to the industry of business directories,”
CHAIN RESTAURANT OPERATORS DIRECTORY has
been in use since 1992,
“[t]he consumers for these types of directories are small,
discreet and highly sophisticated” such as “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,”
and
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

21 Id. at 21 (restaurant.org).
22 October 31, 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 CHAIN RESTAURANT OPERATORS DIRECTORY. 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. 87185069
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its “many comprehensive directories,” rather than the mark at issue in this
proceeding, CHAIN RESTAURANT OPERATORS DIRECTORY. The more specific
representation that the mark at issue has been in use since 1992 is not relevant 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 CHAIN RESTAURANT OPERATORS DIRECTORY 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 operators of chain restaurants. 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 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 “Restaurant Operators
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Directory,”23 “Restaurant Operator,”24 “Foodservice Operators Guide of Chain
Restaurants,”25 and “restaurant directory.”26 The record contains no other evidence
of consumer perception suggesting that CHAIN RESTAURANT OPERATORS
DIRECTORY is or could be capable of being a source-indicator. Applicant’s mark is
generic for directories of chain restaurant operators because it names a part of the
broader genus of “printed directories featuring key contact and personnel information
for restaurant chains and franchisees and in-depth information about restaurant
chains and franchisees.” See Cordua Rests., 118 USPQ2d at 1637-38. The “key contact
and personnel information” includes the operators of chain restaurants. 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”). Thus, Applicant’s mark names part of the genus.
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 33-36 (trustoria.com).
24 Id. at 21 (restaurant.org).
25 November 27, 2017 Office Action at 9 (fsdboo.com).
26 Id. at 37 (4-restaurant.com).