CompUSA Manage-ment Co.

Trademark Trial and Appeal Board

Apr 30, 2002

No. 75110434 (T.T.A.B. Apr. 30, 2002)

4/30/02

Hearing: Paper No. 24
February 5, 2002 RFC

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re CompUSA Management Co.
________

Serial No. 75/110,434
_______

Herbert J. Hammond of Thompson & Knight for CompUSA
Management Co.

Dominic J. Ferraiuolo, Trademark Examining Attorney, Law
Office 102 (Thomas V. Shaw, Managing Attorney).
_______

Before Cissel, Wendel and Bucher, Administrative Trademark
Judges.

Opinion by Cissel, Administrative Trademark Judge:
Applicant has appealed from the final refusal to
register the mark “THE COMPUTER SUPERSTORE” on the
Principal Register for “retail store services in the field
of computers, computer products and computer accessories,”
in Class 42. The application was filed on May 28, 1996,
based on a claim of use of the mark in commerce since
September of 1989. The Examining Attorney refused
registration under Section 2(e)(1) of the Lanham Act, 15
THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Ser No. 75/110,434
2
U.S.C. Section 1052(e)(1), on the ground that the mark is
merely descriptive of the services recited in the
application. Applicant’s claim of distinctiveness under
Section 2(f) of the Act was rejected by the Examining
Attorney, who at this point held that the words sought to
be registered are generic in connection with these
services, and that as such, they are not capable of
identifying applicant’s services and distinguishing them
from similar services provided by others.
Applicant disputes that the words sought to be
registered are merely descriptive in connection with its
services, much less that they are generic, but applicant
has nonetheless submitted substantial evidence in support
of its claim that as a result of applicant’s extensive use
and promotion of “THE COMPUTER SUPERSTORE” as applicant’s
mark, it has become distinctive of applicant’s services.
The appeal was fully briefed, including supplemental
briefs and a reply brief, and both counsel for applicant
and the Examining Attorney presented arguments at the oral
hearing before the Board on the date indicated above.
The test for mere descriptiveness is not in dispute in
this appeal, nor is the test for genericness. A mark is
merely descriptive of services, and hence unregistrable on
the Principal Register without evidence of secondary
Ser No. 75/110,434
3
meaning, if it forthwith conveys information concerning a
significant feature, function, purpose or use of the
services. In re Gyulay, 820 F.2d 1216, 3 USPQ2d 1009 (Fed.
Cir. 1987). A term is generic, i.e., so descriptive that
no amount of de facto significance as a source indicator
can justify its registration on the Principal Register, if
the relevant public understands the term primarily to refer
to the class of goods or services with which it is used.
In re The American Fertility Society, 188 F.3d 1341, 51
USPQ2d 1832 (Fed. Cir. 1999); H. Marvin Ginn Corp. v.
International Association of Fire Chiefs, Inc., 782 F.2d
987, 228 USPQ 528 (Fed. Cir. 1986).
Responsive to the original refusal to register on the
ground of descriptiveness, applicant cited several third-
party registrations for marks which combine what appear to
be generic terms with the word “SUPERSTORE” for services
involving the sale of products encompassed within the
generic terms. Examples included “SECURITY SUPERSTORE” for
mail order catalog services featuring security systems and
equipment, and “BABY SUPERSTORE” for retail store services
in the field of baby products. Applicant argued that the
generic term to describe its services is “a computer
store,” but that “the computer superstore” is not a term
Ser No. 75/110,434
4
used by the relevant public to name the class or category
of services which applicant renders.
In support of his conclusion that the term applicant
seeks to register is the name of the class of services at
issue and that the relevant public understands this
designation primarily to refer to this class of services,
the Examining Attorney has made of record a substantial
amount of evidence. Attached to the second Office Action
were copies of a number of third-party registrations for
marks used in connection with retail store services in
various fields. In each instance, the word “SUPERSTORE” is
disclaimed, along with the generic term for the goods or
services in connection with which the mark is registered.
For example, in Reg. No. 2,172,306, wherein the services
are identified as retail store services in the field of
medical and health care products, the words “THE HEALTHCARE
SUPERSTORE” are disclaimed; and in Reg. No. 2,083,786,
wherein the services are identified as retail store
services in the field of office supplies and equipment, the
words “OFFICE” and “SUPERSTORE” are both disclaimed.
Also included were copies of a number of Patent and
Trademark Office records regarding applications wherein
generic terms for the goods or services specified in such
Ser No. 75/110,434
5
applications and the word “SUPERSTORE” have both been
disclaimed.
In addition, the Examining Attorney included many
excerpts retrieved from the Nexis automated database of
published articles. These articles show the word
“superstore” used generically in connection with large-
scale retail sales services in a variety of fields,
including, inter alia, shoes, automobiles, banking, books,
and, significantly, computers. Typical examples of the
later include the following: “Computer superstores, office
supply outlets and mass merchandisers attract armies of
customers--from small-business people to refugees from
large corporations looking for the latest in technology.
Time spent at the computer superstore can be informational
and recreational.” (The Houston Chronicle, July 6, 1997);
“CompUSA [applicant in the instant appeal] is doing very
well--they’re well ahead in store count and volumes--but I
don’t think there will be just one national computer
superstore player.” (Computer Retail Week, July 21, 1997);
“But before you run out to a computer superstore, check the
Internet.” (The Detroit News, July 21, 1997); “…year was
an excellent time for home furnishings chains, baby store
chains… and, believe it or not, even computer superstore
retailers—all industry segments that posted substantial
Ser No. 75/110,434
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year-over-year gains.” (Discount Store News, July 7,
1997); “For instance, while there are many small computer
outlets, the first computer superstore only opened in
Hungary as recently as November 1996, and mail-order and
telemarketing are practically nonexistent.” (Journal of
Commerce, July 2, 1997); “As the co-owner of a small retail
computer store chain, Bielas found himself steadily shoved
to the economic sidelines by computer superstores and
manufacturer mass-marketing.” (The San Diego Union-
Tribune, July 2, 1997); “The small-business person may
begin to feel that the dizzying array of products and
specifications is overwhelming, especially after browsing
the nearest computer superstore or reading computer
magazines.” (Arizona Business Cassette, June 19, 1997);
“You’re a witness to part of this convergence if you’ve
strolled into a computer superstore and noticed a TV show
playing on a monitor…” (The Philadelphia Inquirer, June 9,
1997); “They tend to wait until a technology proves to be a
useful investment and then buy from large retail outlets
and computer superstores.” (The Albany Times Union, June
4, 1997); “The FTC itself purchases consumable office
supplies from at least 105 different retailers, including
mail-order outlets, contract stationers, mass merchants,
office-supply superstores, computer superstores, electronic
Ser No. 75/110,434
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superstores, local independents, and drugstores…” (The
Tampa Tribune, June 3, 1997); “We’re seeing that in the big
office superstores as well as in the computer superstores.”
(Investors Business Daily, May 7, 1997); “Uncomfortable
with dropping off their machines at a computer superstore,
waiting for weeks for repairs and paying hefty prices, many
computer users are turning to friends and friends of
friends for tech assistance.” (The St. Paul Pioneer Press,
April 21 1997); and “In December 1995, Baretz, owner of
Valens Information Systems Inc., opened More Computers
Inc., a 15,000-square-foot computer superstore in this
Delaware County town.” (The Philadelphia Business Journal,
April 10, 1997).
Based on this evidence, the Examining Attorney
concluded that because “computer superstore” is generic for
retail services in the field of computers, the term
applicant seeks to register, “THE COMPUTER SUPERSTORE,” is
also generic, and hence is unregistrable on the Principal
Register. He cited In re The Computer Store, Inc., 211
USPQ 72 (TTAB 1981), for the proposition that the addition
of the article “the” to the generic term “computer
superstore” does not convey source-identifying capacity or
significance to the combined term “THE COMPUTER
SUPERSTORE.” In that case, the Trademark Trial and Appeal
Ser No. 75/110,434
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Board found the term “THE COMPUTER STORE” to be generic for
computer store services.
Applicant maintained that its mark has acquired
distinctiveness within the meaning of Section 2(f) of the
Lanham Act; that its mark has become famous in this country
as an identification of the source of applicant’s services;
that its mark is not generic because applicant’s use has
been continuous and exclusive; and that refusal of
registration of applicant’s mark would be inequitable and
inconsistent with prior Office practice, in view of
existing registrations for marks such as “THE CONTAINER
STORE,” “BABY SUPERSTORES,” and “CD SUPERSTORE.” Included
in support of applicant’s arguments were declarations and
exhibits which establish extensive use and promotion of the
term as a mark by applicant, as well as the third-party
registrations cited by applicant.
Responsive to applicant’s submissions, the Examining
Attorney maintained the refusal to register. He conducted
another search of the Nexis database of published articles,
identifying over 4500 stories wherein the term “computer
superstore” (in lower case letters) appears. The first
hundred of these excerpts were submitted. Ten appear to
relate to applicant’s computer superstores. The other 90
per cent of these stories do not appear to relate to
Ser No. 75/110,434
9
applicant, but rather use the wording “computer
superstore” and “computer superstores” as generic terms for
a specific type of retail store services, namely, providing
a wide range of computers, computer products and computer
accessories to retail shoppers. Although these excerpts
are in some instances duplicative, they do show the term
“computer superstore” used generically in reference to
large retail store services in the field of computers and
related products.
Also included with this Office Action were dictionary
definitions of “computer” and “superstore.” The latter is
defined simply as “a very large store offering a wide
variety of merchandise.”
With regard to the specific references in the excerpts
to applicant as the nation’s largest computer superstore,
the Examining Attorney argues that these stories also
support the refusal to register. He points out that while
applicant may be the largest computer superstore, the
evidence indicates that applicant is not the only computer
superstore. Several others, such as Microwarehouse and
Best Buy, are identified by name, and many of the excerpts
make it clear that there are a number of other “computer
superstores” with which applicant competes.
Ser No. 75/110,434
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The Examining Attorney argues that the Patent and
Trademark Office is not bound by the fact that nine
different state registrations and seven foreign-country
registrations have issued to applicant for the mark here at
issue, nor should we be bound by the fact that the third-
party registrations cited by applicant for marks which
combine “SUPERSTORE” with generic terms for the goods or
services there involved have been issued on the Principal
Register under the Lanham Act.
Based on careful consideration of the extensive record
before us in this appeal, the arguments presented in the
briefs and at the hearing, and the relevant statutory and
legal authorities on the issues of descriptiveness and
genericness, we hold that the Examining Attorney has met
his burden of establishing that “THE COMPUTER SUPERSTORE”
is generic in connection with the services set forth in the
application, and that in view of this fact, no amount of
evidence of distinctiveness can justify registration of
this term on the Principal Register under the provisions of
Section 2(f) of the Act.
The dictionary definitions of the individual words
“computer” and “superstore” do not necessarily establish
that the combination of the two words is generic, and the
evidence showing that third parties have disclaimed
Ser No. 75/110,434
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different generic terminology along with the word
“SUPERSTORE” in their own applications and registrations of
marks which combine the two is hardly dispositive of the
issue of whether or not the mark which is the subject of
this appeal, “THE COMPUTER SUPERSTORE,” is capable of
identifying and distinguishing this applicant’s retail
store services in the field of computers, computer products
and computer accessories.
The excerpts from published articles submitted by the
Examining Attorney, however, are clear and uncontroverted
evidence that prospective computer purchasers understand
the term to refer to the class of services with which
applicant uses it. In each of the excerpts quoted above,
as well as in the countless others of record in this
appeal, the term “computer superstore” is used as the
generic name for a large retail business featuring
computers and related products.
When the word “the” is used before “computer
superstore,” as in the first excerpt quoted above, it is
also as part of a generic term, rather than as a source-
indicating service mark. The addition of the article in
front of the generic term “computer superstore” does not
somehow convert this generic term into a registrable
service mark. Just as “THE COMPUTER STORE” was held to be
Ser No. 75/110,434
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generic for computer store services in the case cited
above, “THE COMPUTER SUPERSTORE” is likewise generic for
the services set forth in the instant application.
Furthermore, we agree with the Examining Attorney that
contrary to applicant’s arguments, even the excerpts which
clearly relate to applicant’s business show the term used
as a generic reference to the services, rather than as an
indication of their source.
Applicant argues strenuously that the Examining
Attorney has not identified particular computer superstores
other than applicant which use the term to identify their
businesses, but this argument misses the point. The
evidence submitted by the Examining Attorney shows that
journalists, whose work is widely exposed to the public,
refer to many retailers of computers and computer products
as “computer superstores.” It is on this basis that we
conclude that the relevant public understands the term
primarily as the name of this type or class of services.
Applicant also attempts to distinguish In re The
Computer Store, supra., by arguing that because applicant
is the only computer superstore to be using the entire term
“THE COMPUTER SUPERSTORE,” including the first word “THE,”
as a mark, the cited case is inapplicable. In that case
Ser No. 75/110,434
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the record showed that another entity was also using “THE
COMPUTER STORE” for computer store services.
Again, applicant’s argument is not well taken. The
issue is not whether other computer superstores incorporate
the term into their trademarks or service marks, but
instead, the issue is whether their customers understand
the term primarily to refer to the class of services they
render. As noted above, the evidence establishes that
these businesses are referred to as “computer superstores.”
It would be manifestly unreasonable to permit registration
of such generic terms simply because they were preceded by
the word “THE.” Addition of this article, just like
addition of terms like “Inc.” and “Company,” does not
somehow create distinctiveness, and it surely should not
have the effect of conferring registrability on otherwise
generic terminology.
The Examining Attorney notes that it is common
practice for businesses to tout their leadership in their
particular fields by using language such as “the foreign
car specialist” or “the real estate broker.” Such
references are clearly to the nature of the services being
rendered, rather than to the sources of those services.
Because the record establishes that the term sought to
be registered is generic, registration on the Principal
Ser No. 75/110,434
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Register, even under the provisions of Section 2(f) of the
Lanham Act, should not be permitted. Notwithstanding a
substantial showing by applicant that it has extensively
and exclusively used and promoted the term sought to be
registered in connection with its services and in
combination with its name and “CompUSA” mark, no amount of
promotion-—in fact, no amount of evidence of the
acquisition of de facto secondary meaning as an indication
of source—can justify the registration of a generic term.
Such terms are, by definition, not subject to exclusive
appropriation, in that they do not possess the capability
of identifying a single source of particular services and
distinguishing services rendered by that entity from
similar services provided by others. See: H. Marvin Ginn
Corp. v. International Association of Fire Chiefs, supra.
In fact, at the oral hearing, the Examining Attorney
conceded that the evidence of applicant’s extensive use and
promotion unquestionably would have been sufficient to
establish distinctiveness had the term in question been
only merely descriptive, instead of generic. Because the
term is generic, however, we need not detail the voluminous
evidence submitted by applicant in support of its claim of
acquired distinctiveness. Registration would not be
appropriate even if de facto significance as a service
Ser No. 75/110,434
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mark, or even fame, had been clearly established. If,
however, on appeal, the Court were to find that the term
applicant seeks to register is capable of identifying and
distinguishing applicant’s services, registration under the
provisions of Section 2(f) of the Act would be justified.
Applicant’s argument that registration is mandated
because of the third-party federal registrations applicant
made of record is similarly unpersuasive, as is the
contention that state and foreign registrations establish a
proper basis for registration under the Lanham Act. It is
well settled that the Board is not bound by prior decisions
of Examining Attorneys to register particular marks, and we
are certainly not so bound by state or foreign government
action registering the mark applicant seeks to register
here. Each case before us must be decided on its own
merits, based on its own record. We are not privy to the
records or the reasoning that apparently led others to
register this mark and other similar marks. Our decision
in the instant case rests on the application of the
relevant legal authority and principles as they are applied
to the record in this application.
DECISION: The refusal to register under Section
2(e)(1) of the Lanham Act is affirmed.