CT Realty Corp.

Trademark Trial and Appeal Board

Jun 22, 2005

No. 75841424 (T.T.A.B. Jun. 22, 2005)

Oral Hearing Held: Mailing Date:
January 18, 2005 June 22, 2005
GDH/gdh

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re CT Realty Corporation
________

Serial No. 75841424
_______

Jonathan Hyman and Jeffrey L. Van Hoosear of Knobbe, Martens,
Olson & Bear LLP for CT Realty Corporation.

Fred M. Mandir, Trademark Examining Attorney, Law Office 105
(Thomas G. Howell, Managing Attorney).
_______

Before Hohein, Bucher and Drost, Administrative Trademark Judges.

Opinion by Hohein, Administrative Trademark Judge:

CT Realty Corporation has filed an application to
register on the Supplemental Register the term "STORAGE OUTLET"
as a service mark for "providing self-service storage facilities
for general consumer and business use" in International Class
39.1
Registration has been finally refused under Section 23
of the Trademark Act, 15 U.S.C. §1091, on the ground that the

1 Ser. No. 75841424, filed on the Principal Register on November 5,
1999, based on an allegation of a bona fide intention to use such term
in commerce; amended, by an amendment to allege use filed on September
4, 2001, to set forth a date of first use anywhere of March 1, 2000
and a date of first use in commerce of January 1, 2001; and further
amended, by a paper received on March 4, 2003, to the Supplemental
Register.

THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF
THE TTAB
Ser. No. 75841424
2
term "STORAGE OUTLET" is generic and hence is incapable of
distinguishing applicant's services.
Applicant has appealed. Briefs have been filed and an
oral hearing was held. We affirm the refusal to register.
It is well settled that a term must be capable of
serving as an indicator of source in order for it to be
registrable on the Supplemental Register. Whether a term has the
capacity necessary for registration on the Supplemental Register
is determined by considering, among other things, the meaning
thereof as applied to the goods or services identified in the
application, the context in which it is used on any specimens
filed with the application, and the likely reaction to the term
by the average customer upon encountering such term in the
marketplace. See, e.g., In re Cosmetic Factory, Inc., 208 USPQ
443, 447 (TTAB 1980). "The test is not whether the mark is
already distinctive of the applicant's goods [or services], but
whether it is capable of becoming so." In re Bush Brothers &
Co., 884 F.2d 569, 12 USPQ2d 1058, 1059 (Fed. Cir. 1989).
However, as noted in H. Marvin Ginn Corp. v. International
Association of Fire Chiefs, Inc., 728 F.2d 987, 228 USPQ 528, 530
(Fed. Cir. 1986), if a term is generic, it is incapable of
registration on the Supplemental Register.
Moreover, in the case of a term asserted to be
incapable because it is generic, the burden is on the U.S. Patent
and Trademark Office to show the genericness of the term by
"clear evidence" thereof. In re Merrill Lynch, Pierce, Fenner &
Smith, Inc., 828 F.2d 1567, 4 USPQ2d 1141, 1143 (Fed. Cir. 1987).
Ser. No. 75841424
3
See also In re American Fertility Society, 188 F.3d 1341, 51
USPQ2d 1832, 1835-36 (Fed. Cir. 1999). In particular, as stated
in American Fertility Society, 51 USPQ2d at 1836: "Aptness is
insufficient to prove genericness"; instead, "the correct legal
test, as set forth in Marvin Ginn, requires evidence of 'the
genus of goods or services at issue' and the understanding by the
general public that the mark refers primarily to 'that genus of
goods or services.'" Specifically, as our principal reviewing
court held in Marvin Ginn, 228 USPQ at 530:
Determining whether a mark is generic [and
thus is incapable of distinguishing an
applicant's goods or services] ... 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?

Such test, as further noted in American Fertility Society, 51
USPQ2d at 1837, "is to be applied to a mark, or disputed phrase
thereof, as a whole, for the whole may be greater than the sum of
its parts." In addition, in applying such standard, evidence of
the relevant public's understanding of a term or disputed phrase
may be obtained from any competent source, including newspapers,
magazines, dictionaries, catalogs and other publications, as well
as the Internet. See, e.g., In re Northland Aluminum Products,
Inc., 777 F.2d 1566, 227 USPQ 961, 963 (Fed. Cir. 1985); and In
re Leatherman Tool Group Inc., 32 USPQ2d 1443, 1449 (TTAB 1994).
Both applicant and the Examining Attorney agree, and we
concur, that as to the first prong of the test for genericness,
the class or category of services at issue herein is that which
Ser. No. 75841424
4
is set forth in the recitation of applicant's services, namely,
"providing self-service storage facilities for general consumer
and business use." However, as to whether, under the second
prong of the genericness test, the relevant public understands
the term at issue herein primarily to refer to such class or
category of services, applicant maintains in its initial brief
that the evidence of record demonstrates that "consumers do not
understand the mark STORAGE OUTLET primarily to refer to self-
service storage facilities for general consumer and business
use." Applicant asserts, with respect thereto, that "the words
'storage' and 'outlet,' either individually or combined, are not
generic terms for Applicant's services," arguing that
(underlining in original):
The word "storage" has several
definitions previously made of record. Among
these are: (1a) the act of storing goods or
the state of being stored; (1b) a space for
storing goods; (1c) the price charged for
keeping goods stored; (2) the charging or
regenerating of a storage battery or (3) the
part of a computer that stores information
for subsequent retrieval. The American
Heritage Dictionary of the English Language,
Fourth Edition. Likewise, the word OUTLET
also has several definitions. Among these
are: (1a) a passage for escape or exit; a
vent;(1b) [a] means of release or
gratification, as for energies, drives, or
desires; (2) a stream that flows out of a
lake or pond; (3) a store that sells the
goods of a particular manufacturer or
wholesaler; (4) a receptacle that is
connected to a power supply and equipped with
a socket for a plug. Id. Typically,
consumers hearing the word OUTLET would think
of an electrical socket or a discount
shopping mall. Applicant submits that the
words STORAGE and OUTLET are commonly used
and understood to refer to any of these
possible meanings. In light of these other
Ser. No. 75841424
5
commonplace definitions for the words STORAGE
and OUTLET, Applicant submits that consumers
would not primarily associate the words
"storage" and "outlet" primarily with
Applicant's self-service storage facilities.

As additional support for its position, applicant
points out that it made of record, by a response it filed on
November 13, 2003, "printouts from websites of ... third[-]party
companies in the self-storage industry."2 Such companies,
applicant insists, "advertise storage services ... which are
nearly identical to Applicant's services, but [they] refer to
these services as 'self-storage facilities,' 'self-storage [mini]
warehouses,' and simply 'self-storage.'" Examples thereof,
applicant notes, are as follows (emphasis added):
"National Self Storage (NSS) is a
leading provider of clean, safe, flexible and
affordable self-storage mini warehouses. We
bring superior quality and value to every
facet of the self storage business, making
your rental experience simple! In an effort
to maintain our commitment to excellence, our
convenient new on-line services make renting
storage space easier than ever! Customers
can now make their payments and check for
availability and pricing of mini-storage
space on line at any of the NSS properties
nationwide!
There IS a Difference!
National Self Storage has been
developing and operating self-storage
facilities from the beginning of the self
storage industry." -- www.nationalself-
storage.com; and

"Eliminate clutter in your home, store
or office. Don't miss a good buy on business
or personal items because you lack storage
space. A Storage Depot will rent you just

2 Whether any of the websites were in use prior to applicant's alleged
first use of the term "STORAGE OUTLET" is not apparent, however.

Ser. No. 75841424
6
the amount of space for the time when you
need it ....
....
Self Storage Facility Locations [and]
Self Storage Unit Dimensions" -- www-
.membrane.com/philanet/mkee/storage.html.

Similarly, applicant notes that with its November 13,
2003 response it also submitted "printouts from websites which
provide directories to assist consumers in comparing and finding
storage facilities." Two examples of such, applicant observes,
are as follows (emphasis added):
"Self Storage: Public, Mini and Self
Storage Facilities
All-Moving.com makes it easy to find and
compare self storage facilities including
mini storage and public storage." -- www.all-
moving.com/storage_quotes.html;

"Self Storage California
A California Self Storage Directory
....
Ineedstorage.com is a Free Directory of
Self Storage Facilities in California" --
www.ineedstorage.com; and

"selfstorage.com
The Internet's Premier Self Storage
Website
Renters Click Here to Find a Self
Storage Facility Near You Now ....
....
ARGUS Self Storage Sales Network The
easy way to buy and sell Self Storage
facilities." -- www.selfstorage.com.

A third example, although not mentioned by applicant, is entitled
"GUIDE TO SELF-STORAGE" and provides, inter alia, as follows
(emphasis added):
"So, just what is self-storage? Self-
storage offers both personal and business
users a storage solution that they can
basically control themselves. As with more
traditional storage methods, self-storage
allows you to rent storage space where you
Ser. No. 75841424
7
can keep goods and belongings in specialist
facilities. .... With the advent of self-
storage, we've been given a lot more choice:
It's 'Do It Yourself' storage.
Recognizing that many consumers and
businesses need more control over what,
where, when and how they store the self-
storage industry has evolved into a cost-
effective, flexible and secure storage
alternative. The self-storage space you rent
will be self-contained and fully enclosed and
can vary in size according to your specific
needs - you could be looking at as small a
space as a closet through to a unit big
enough to store your boat, the entire
contents of your house or extensive business
archives.
This is an incredibly flexible storage
alternative. .... In many cases you can
simply drive up to your self-storage unit and
park outside. .... And, unlike traditional
storage methods, you'll know that your self-
storage unit will stay where it is and your
stuff won't be moved around by the storage
provider without your permission.
If your looking to use self-storage the
first difference you'll notice is that it's
your responsibility to get your stuff to the
self-storage facility. ....
....
As the self-storage industry has evolved
so has the range of services on offer.
Larger self-storage facilities have started
to offer business services such as office
space, administrative services, meeting areas
and toilet/shower rooms." -- www.self-
storage-facilities.com.

Applicant contends, in view thereof, that it is
"[e]vident from these examples ... that 'OUTLET' is not
synonymous with the words 'facilities,' 'warehouses,' or
'units.[']" In addition, with respect to the "SSA SELF STORAGE
ASSOCIATION" logo appearing in the above-referenced excerpt from
the "www.nationalselfstorage.com" website, applicant asserts--
although notably without any evidentiary support--that:
Ser. No. 75841424
8
[T]he trade association that serves the
self-storage industry is known as the "SSA
Self Storage Association." Based on the
website of the SSA, the SSA is "the only
trade association serving those in the self
storage industry across the U.S. and around
the globe." Applicant notes that this sole
trade association, which supports and strives
to enhance business practices in the
industry, and which would certainly want a
name representative of the industry, is known
as "Self Storage Association," not as
"Storage Outlet Association."

Thus, according to applicant:
The usage[s] by those in the relevant
industry demonstrate that the terms "storage
outlet" are not used generically to refer to
Applicant's services. If the words "storage
outlet" were understand [sic] to be the
primary designation for Applicant's services,
then the other descriptors that are used,
"facilities," "warehouses," etc., would be
generically replaced with "storage outlet."
But this is not the case.

As to certain other evidence which it has made of
record, applicant points out that:
Applicant also submitted two articles in
its November 13, 2003 Response, one [of]
which appeared in the Los Angeles Times and
the other in California Real Estate Journal,
[which are] about the self-storage industry.
These articles discuss the industry generally
and mention Applicant, as well as other
companies in the industry. Applicant directs
the Board's attention to the fact that both
articles consistently refer to Applicant's
class of services in the self-storage
industry as "self-storage centers," "storage
facilities" and "self-storage facilities."
Not once does either staff writer refer
generically to these services as "storage
outlets." Applicant submits that the usage
of terms and phrases by these staff writers
are reflective of the usage of the purchasing
public. The Examining Attorney must agree
since his evidence supporting his conclusion
is also composed of news articles written by
staff writers. From these articles, it is
Ser. No. 75841424
9
clear that the consuming public and those not
directly involved in the relevant trade
generically refer to Applicant's services as
"self-storage centers" and "storage
facilities," but not "storage outlets."

Representative portions of the above-noted articles are
reproduced below (emphasis added):
"People stick all kinds of junk into
self-storage centers. Now, many centers are
becoming junk themselves.
In an example straight out of Economics
101, supply is not outstripping demand in the
self-storage industry, dragging down a
business that once seemed practically
recession-proof.
....
Across the country, the number of
storage facilities has shot up by more than
60% in the last decade .... .... There are
about 6,000 storage centers statewide, with
more than half of them in Southern
California.
....
'We are going to play conservatively,'
said Lance Watkins, head of Storage Outlet,
which operates a small chain in Southern
California." -- Los Angeles Times, September
26, 2002; and

"Some people who are looking for stable
real estate investments are putting their
trust into storage--self storage, that is.
Though far from glamorous, the self-storage
business is proving attractive to investors
and is one of the few sectors driving
development in Southern California.
CT Realty Corp. ... is a case in point.
CT ... has launched two self-storage
investment funds since late 2000 and is
making plans to for a third fund.
According to President Robert T.
Campbell, most of CT's self-storage
facilities are in urban markets that have had
little new development of such product.
....
Lots of small businesses ... warehouse
their extra inventory in self-storage spaces
....
Records storage also represents a tidy
customer base for self-storage firms. Many
Ser. No. 75841424
10
law firms and medical practices would rather
archive their files in storage facilities
than in high-rent office space, for example.
....
CT brands its self-storage facilities
under the name Storage Outlet. The company
opened its first Storage Outlet last year
....
....
The majority of CT's storage tenants are
individuals, although it does have some
facilities with a high percentage of
commercial clients. The trade area for self-
storage facilities is confined to a fairly
tight, three-mile radius.
....
Additionally, while cities view self-
storage as an industrial use, the properties
function more like a retail business, with
heavy requirements in terms of marketing and
onsite management." -- California Real Estate
Journal, August 19, 2002.

With respect to "[f]urther evidence that consumers do
not understand Applicant's mark to generically refer to its
services," applicant points to "the fact that there is no
category for 'storage outlet' or 'storage outlets' in the yellow
pages." Specifically, applicant notes that:
Applicant submitted with its Response of
November 13, 2003 copies of the relevant
pages from several local [California] yellow
pages and Internet nationwide yellow pages
which show the absence of a category of
services known as "storage outlet." There is
simply no such class of services. There is,
however, a category known as "STORAGE-SELF
SERVICE which consistently appears in yellow
pages.

Applicant urges, in view thereof, that "if Applicant's mark was
understood to generically designate Applicant's services, a
category known as 'storage outlets' instead of 'storage-self
service' would exist in yellow pages because consumers would
Ser. No. 75841424
11
refer to such a category to find providers of storage services,
like Applicant's services."
Applicant insists, moreover, that its "position is
further strengthened by the fact that 'storage outlet' is
commonly used to refer to specific things other than Applicant's
type of services," pointing out that:
Applicant has submitted Internet evidence
with its Responses filed on February 28, 2003
and November 13, 2003 to demonstrate that
'storage outlet' does refer to drainage
associated with water, something of an
outflow accumulation of water. For example,
in these printouts, "storage outlet" refers
to: (1) a passage for stored water, (2)
drainage of excess stormwater, (3) release of
water from water storage structures, and (4)
discharge of sewer wastewater. Other
Internet printouts in Applicant's Responses
demonstrate that, among other things,
"storage outlet" is used to refer to storm
drain pipes and gas containers.

Applicant contends, in view of the fact that "[i]n none of these
Internet printouts are the words 'storage outlet' used to refer
to a class of self-service storage facilities," that "its mark
STORAGE OUTLET is not a generic designation for its services and
is capable of functioning as a trademark to distinguish
Applicant's services."
Finally, as to the evidence of genericness offered by
the Examining Attorney (which is specifically discussed later in
this opinion), applicant maintains that the Examining Attorney
has failed to meet his burden of showing that "the consuming
public primarily considers the mark STORAGE OUTLET to refer to
Applicant's type of services." In particular, applicant contends
that:
Ser. No. 75841424
12
[M]ore than half of the ... evidence
upon which the Examining Attorney relies is
immaterial. In the Office Action mailed
March 6, 2001, the Examining Attorney relied
upon seventeen "stories" from the Lexis/Nexis
database which allegedly support the
Examining Attorney's position. Of these
seventeen stories, nine of the references
refer to a "self-storage outlet," not a
"storage outlet." There is also a reference
to a "cold-storage outlet" among these
seventeen articles. More than half of the
evidence in the ... Office Action did not
support the Examining Attorney's finding.

In the Office Action mailed September 3,
2002, the Examining Attorney included three
additional printouts from the Internet as
evidence of the descriptive nature of
Applicant's mark. Of these three printouts,
two refer to "self-storage outlets" and "self
storage outlets." As Applicant's mark is
neither SELF-STORAGE OUTLET nor COLD-STORAGE
OUTLET, Applicant's submits that this
evidence is inapplicable.

In the final Office Action concerning
genericness, issued January 30, 2004, the
Examining Attorney attached dictionary
definitions for "storage" and "outlet" and
specifically referenced the definition ...
"showing that 'outlet' is defined as: 'a
commercial market for goods or services' or a
'market for services or goods.'" Applicant
respectfully submits that the Examining
Attorney's reference to "a commercial market
for goods or services" is completely
inapposite. The definition for outlet to
which the Examining Attorney refers is
clearly that of a shopping mall outlet, a
huge conglomeration of typically high-end
stores offering their goods at discounted
prices, often times located in remote areas.
Even the specific example for "market for
services or goods" identified in the
Examining Attorney's dictionary printout is
"retail outlets." Applicant's services are
not retail outlets and [it] do[es] not
commercially market any goods or services, or
provide a market for the sale of goods or
services. And yet, by this definition, the
Examining Attorney states that "[t]he
evidence of record and applicant's
Ser. No. 75841424
13
identification of services show that the
services Applicant provides are storage
outlet services."

In addition, applicant argues with respect to the ten
or so "'stories' from ALLNEWS" included with the final Office
Action issued January 30, 2004 that, in the case of "the first
story listed, the use of 'storage outlet' does not refer to self-
storage facilities" and, instead, "actually discusses storage
outlets for natural gas liquid." Similarly, applicant insists,
the "fourth story ... uses the term 'storage outlet' to refer to
something other than Applicant's class of services." In
particular, applicant notes, such "article discusses a 'funky,
retro-inspired ottoman [that] ... can double as a storage
outlet.'" Applicant also observes that:
Of the remaining 8 stories, four are
from foreign news articles, 2 from Australia,
1 from New Zealand and one concerning Sharjah
in the Gulf. Applicant submits that the
issue of genericness should be proven by
evidence from the United States and not from
international sources. Although the Board
has ... held that it "is reasonable to assume
that professionals in medicine, engineering,
computers, telecommunications and many other
field are likely to utilize all available
resources, regardless of country of origin or
medium," ... the mark and services at issue
here do not involve sophisticated technology
in the scientific fields which could benefit
form foreign sources of research. In re
Remacle, 66 USPQ2d 1222, 1224 n.5 (TTAB
2002). U.S. consumers in need of Applicant's
services are not likely to refer to foreign
news articles in a way that would influence
their understanding of Applicant's mark.

Because, "[a]s mentioned above, the Examining
Attorney's foreign articles should carry no weight on whether
Ser. No. 75841424
14
U.S. consumers would find the term 'storage outlet' to be generic
for Applicant's services," applicant further contends that:
As a result, the Examining Attorney has
only four U.S. articles which remain to
support his finding. Applicant submits that
this evidence falls short of meeting the
Examining Attorney's burden. .... The
Examining Attorney has offered no argument to
discredit Applicant's evidence that
["]storage outlet["] is not used by the
industry or consumers to generically refer to
Applicant's services, and that it can refer
to other things. Nor does the totality of
the Examining Attorney's evidence amount to a
clear and substantial showing to meet the
rigorous evidentiary burden of genericness.

Applicant, citing In re Bel Paese Sales Co., 1 USPQ2d 1233, 1236
additionally points out that "[d]oubts are resolved in favor of
the applicant when the generic status of a term is in doubt."
Applicant concludes, in view of the above, that "its
mark has the capability of distinguishing its services" and is
therefore registrable on the Supplemental Register. Applicant
stresses, in particular, that:
Applicant's competitors recognize Applicant
and its services by the mark STORAGE OUTLET,
[as] evidenced by the fact that Applicant's
competitors do not refer to themselves as a
storage outlet. The consuming public, and
those who write for the consumer public, also
recognizes [sic] the mark STORAGE OUTLET as
referring to Applicant's services.

The Examining Attorney, on the other hand, maintains in
his brief that (emphasis in original):
The evidence of record viewed in conjunction
with applicant's identification of services
shows that Applicant provides storage outlet
services. The proposed mark "STORAGE
OUTLET," is generic as applied to applicant's
services, because applicant's services
encompass the service of "providing self-
Ser. No. 75841424
15
service storage outlet facilities.
Applicant's services are identified as
"providing self-service storage facilities
for general consumer and business use." When
the well known term "storage outlet" is
applied to applicant's services, it merely
identifies the type of self-service storage
facilities provided by applicant, as self-
services storage outlet facilities.

In support of his position, the Examining Attorney insists that
the record contains "numerous stories obtained from the
Lexis/Nexis ALLNEWS database, and promotional matter obtained
from an on-line search, which show generic usage of the term
'storage outlet' in [the] field of providing self-service storage
outlet facilities."
Examples of the above evidence, which are specifically
mentioned by the Examining Attorney, are as follows (emphasis
added):
"Sick of storage facilities that don't
measure up[?] Many self storage outlets
[that] adequately cater for residential
tenants overlook the special needs of
removalists.
At The Storage Factory however, we have
recognized these special needs and have
designed our facility to make life easier for
removalists. Saving you ... time and money."
-- www.thestoragefactory.com.au/removalist-
.com, August 8, 2002;

"Katz will exclusively handle national
and regional real estate transactions for
Storage Mall. Storage Mall redevelops space
for self-storage, thereby creating a new
source of revenue from otherwise unused
space. ... Storage Mall will take awkward or
poorly located space[s] that are not
appropriate for other retail or commercial
uses to turn into self-storage outlets." --
Ser. No. 75841424
16
www.katzassociates.com/June2000.html, August
8, 2000;3

"[Cinergy] Corp., has won a contract to
provide utility cost reduction services to
Storage USA, a chain of 485 self-storage
outlets in 31 states." -- Cincinnati
Enquirer, February 5, 1999; and

"'One of the greatest attributes of
public warehousing is an ability to offer
flexible storage outlets for inventory and
let a company maneuver its goods to meet the
present demand,' said Jerry Latham ...." --
St. Louis Post-Dispatch, July 9, 1990
(article headlined: "SITTING PRETTY:
WAREHOUSES FILL THE GAP FOR BUSINESS").

Other pertinent examples of record, we note, include the
following (emphasis added):
"You might put it in a storage locker.
The FBI has thought of that, and has been
flashing Johnson's mug at self-storage
outlets between Florida and North Carolina."
-- Charleston Daily Mail, July 28, 1997, and
Palm Beach Post, July 28, 1997;

"[He] slowly built on the modest air-
conditioning business his father started in a
nondescript building amid the self-storage
outlets and muffler shops in western Orange
County." -- Palm Beach Post, November 9,
1996;

"Thomas said the self-storage outlet has
24-hour surveillance cameras monitoring more
than 8,000 square feet of climate-controlled
storage space." -- Times-Picayune (New
Orleans), October 29, 1995;

3 Likewise, while not referred to by the Examining Attorney, we observe
that the record contains an excerpt from an article which, in relevant
part, reports that (emphasis added):

"[Storage Mall] will take awkward or poorly located
spaces that are not appropriate for other retail or
commercial uses to turn into self-storage outlets." -- Real
Estate Weekly, June 21, 2000.

Ser. No. 75841424
17
"The same day, detectives searched a
compartment at a Granada Hills storage outlet
from which they had witnessed Voorhees remove
a package in October. There they found
hundreds of more boxes and bottles of
steroids." -- Los Angeles Times, March 19,
1992;

"The chase started after deputies saw a
man acting suspiciously outside a self-
storage outlet in Spring Valley, Morse said."
-- San Diego Union-Tribune, March 7, 1988;
and

"In 1979 there were only about 3,500
miniwarehouses. Today there are an estimated
18,000 self-storage outlets, with over 900
million square feet of space and gross
revenues of about $4 billion." -- Forbes,
June 15, 1987.

In addition, we observe that the Examining Attorney has
made of record the following definitions from The American
Heritage Dictionary of the English Language (3d ed. 1992).
Specifically, "storage" is defined in relevant part as "1. a. The
act of storing goods or the state of being stored. b. A space
for storing goods" and "outlet" is listed as meaning, in
pertinent part, "3. a. A commercial market for goods or services.
b. A store that sells the goods of a particular manufacturer or
wholesaler." Based thereon and the other evidence which he has
made of record, the Examining Attorney concludes that, contrary
to applicant's assertions:
Consumers will easily understand the generic
meaning of the proposed mark as applied to
applicant's services. In re Polo
International Inc., 51 USPQ2d 1061 (TTAB
1999) (Board found that DOC in DOC-CONTROL
would be understood to refer to the
"documents" managed by applicant's software,
not "doctor" as [applicant contended].

Ser. No. 75841424
18
Applicant, in reply, reiterates its criticism of the
evidence provided by the Examining Attorney, arguing among other
things that "the Examining Attorney has failed to demonstrate by
a substantial showing of evidence that the consuming public
primarily considers the mark STORAGE OUTLET to refer to
Applicant's type of services." Specifically, applicant notes
that (underlining in original):4
In the Examining Attorney's brief, he states
that there are "numerous stories" of record
which show generic usage of the term "storage
outlet" as applied to Applicant's services.
To support his determination of genericness,
the Examining Attorney has provided a total
of 30 Lexis/Nexis news stories. However, as
Applicant demonstrated in its principal
brief, more than half of these stories are
irrelevant. As a result, the Examining
Attorney is left with less than 15 total
articles to support his position of
genericness.

The standard most often applied to
determine whether a mark is generic is not
whether it has "some" significance to the

4 We observe, however, that while applicant also states in its reply
brief that the term "'storage outlet' does not appear in the
[Acceptable Identification of Goods and Services] Manual, and there is
not one single registered mark which lists 'storage outlet' as its
description of services," such statement is simply unsupported
argument inasmuch as the record contains no evidence which pertains
thereto and the Board does not take judicial notice of third-party
registrations. See, e.g., In re Duofold Inc., 184 USPQ 638, 640 (TTAB
1974). Moreover, while it is settled that the Board may properly take
judicial notice of standard reference works, see, e.g., In re Hartop &
Brandes, 311 F.2d 249, 135 USPQ 419, 423 n. 6 (CCPA 1962); Hancock v.
American Steel & Wire Co. of New Jersey, 203 F.2d 737, 97 USPQ 330,
332 (CCPA 1953); University of Notre Dame du Lac v. J. C. Gourmet Food
Imports Co., Inc., 213 USPQ 594, 596 (TTAB 1982), aff’d, 703 F.2d
1372, 217 USPQ 505 (Fed. Cir. 1983); and Marcal Paper Mills, Inc. v.
American Can Co., 212 USPQ 852, 860 n. 7 (TTAB 1981), we note that
even if we were to take judicial notice of the fact that the term
"storage outlet" apparently does not appear in the electronic version
of what is officially known as the Trademark Acceptable Identification
of Goods and Services Manual, it is interesting that such manual does
list, as an acceptable recitation of services, the following entry:
"Retail outlets featuring {indicate specific type or field}."

Ser. No. 75841424
19
public as the name of the services at issue,
but whether it is the mark's principal
significance. ....

Although the evidence of record is not a
direct consumer survey of the public,
Applicant submits that the evidence of record
(stories from the media and third[-]party
uses), is akin to a survey of the public's
understanding of Applicant's mark. Applying
the "majority controls" standard to the
Examining Attorney's already limited
evidence, certainly the Examining Attorney
has not demonstrated that a majority of the
public regards Applicant's mark as the
generic term for Applicant's services.

Applicant's services are not unique, and
in fact are very commonplace. If Applicant's
mark were truly a generic term for
Applicant's services, one would expect there
to be a plethora of evidence to support the
Examining Attorney's finding. However, the
Examining Attorney's evidence of record is
very, very scant. At least, it seems that
the Examining Attorney could have shown that
"storage outlet" is used by the U.S.
Trademark Office in the Acceptable
Identification of Good[s] and Services
Manual, or by third[-]party registrants in
their description of services to refer to
Applicant's type of services. ....

The Examining Attorney has not met his
burden of proving genericness. Therefore,
any doubt should be resolved in favor of
Applicant. In re Volvo White Truck Corp., 16
USPQ2d 1417, 1421 (TTAB 1990).

Furthermore, applicant repeats its assertion that "much
of the Examining Attorney's evidence is not relevant to
Applicant's services of 'providing self-service storage
facilities for general consumer and business use.'" In
particular, although evidentiary support for its argument has
notably not been provided, applicant insists with respect to "an
Ser. No. 75841424
20
article from the St. Louis Post-Dispatch" that (underlining in
original):
Applicant retrieved the full text of this
article and discovered that the "flexible
storage outlets" referred to in the article
are not Applicant's type of "self-service
storage facilities." Instead[,] the article
actually discusses a type of public
warehousing service that serves as the
extended warehouse for a retail store or the
distribution arm for a company. Unlike
Applicant's public self-storage facilities
where consumers simply rent space, retain a
key and lock up their goods for storage, the
public warehouses discussed in this article
operate as extensions of retail businesses.
.... Typically, contract warehouses are
single warehouses working for single
companies. However, the public warehouses
discussed in the Examining Attorney's article
act as giant consolidated contract warehouses
with building space and dedicated employees
that can operate for numerous businesses.
Instead of businesses operating their own
private warehouse for inventory pick-up and
distribution, business[es] can outsource
their private warehousing needs to those
public warehouses that can monitor inventory,
receive shipments and distribute products
.... .... Clearly, these public warehousing
services discussed in the Examining
Attorney's "evidence" are not the type of
services offered by Applicant. Again, the
Examining Attorney has not applied the rule
that the determination of whether a mark is
generic is considered in relation to the
identified services.

Upon consideration of the arguments and relevant
evidence presented, we find that the record contains clear and
sufficient evidence that the term "STORAGE OUTLET" is generic
and, hence, is incapable of distinguishing the category or class
of applicant's services at issue herein--namely, "providing self-
service storage facilities for general consumer and business
use." In particular, as to the second and dispositive step of
Ser. No. 75841424
21
the inquiry required by Marvin Ginn, which is whether the
relevant public understands the term "STORAGE OUTLET" to refer
primarily to the category or class of services at issue, we find
that such term would be so understood. Contrary to applicant's
assertion that the words "storage" and "outlet" individually "are
not generic terms for Applicant's services," it is obvious in
light of just the dictionary definitions thereof that the former
names a category or type of self-service storage facilities for
general consumer and business use while the latter designates a
category or type with respect to how such facilities are provided
to the relevant public in the market for storage facilities.
Plainly, in the context of applicant's services, the term
"storage" would be immediately perceived as meaning "[a] space
for storing goods" and the term "outlet" would likewise be
understood as signifying, in general, "[a] commercial market for
goods or services" or, more specifically, "[a] store that sells
the goods of a particular manufacturer or wholesaler."5 Here,
notwithstanding applicant's protestation in its initial brief
that its "services are not retail outlets and [it] do[es] not
commercially market any goods or services, or provide a market
for the sale of goods or services," it is clear from the evidence

5 We judicially notice, in this regard, that Webster's Third New
International Dictionary (1993) at 1602 defines "outlet" in relevant
part as "3 a : a market for a commodity ... b : a retail store ." Similarly, as a
further example, The Random House Dictionary of the English Language
(2d ed. 1987) at 1375 lists "outlet" as meaning in pertinent part "5.
a store, merchant or agency selling the goods of a particular
wholesaler or manufacturer."

Ser. No. 75841424
22
of record that applicant's services consist essentially of the
retailing of storage space.
Specifically, the various self-storage facilities which
applicant commercially develops are basically utilized by
applicant to sell, at the retail level, to general consumers and
businesses through leasing arrangements, its own "goods," which
consist of storage spaces or units in the self-service storage
facilities which it provides as part of its services. As stated
in the advertising literature which applicant made of record
(emphasis in original):
Storage Outlet is a division of CT
Realty Corporation, based in Newport Beach,
Calif. The company has developed more than
5,000 storage units since its inception in
1999 and is well on the way to reaching its
business goal of opening 20 self-storage
facilities by 2005.

The Storage Outlet facilities are
developed on either leased land or free land.
Property types range from new construction to
conversions of existing structures into self-
storage facilities. Storage Outlets run the
gamut from modular storage units to two- and
three-story constructed facilities.

The storage facilities depicted in such advertising show, in each
instance, what appears to be a rental office through which
consumers may obtain a lease to a self-storage unit. Moreover,
as noted in the excerpt from California Real Estate Journal
reproduced earlier herein, "while cities view self-storage as an
industrial use, the properties function more like a retail
business, with heavy requirements in terms of marketing and
onsite management." Thus, given the manner in which services
such as those provided by applicant are typically rendered,
Ser. No. 75841424
23
general consumers and business customers, who obviously
constitute the relevant purchasing public for applicant's self-
storage facilities, would regard such facilities as outlets which
sell or provide storage spaces or units. The term "STORAGE
OUTLET" thus plainly designates a category or class of self-
service storage facility services and, as explained below, the
relevant examples of third-party use of such designation are
sufficient to confirm that its primary significance to the
purchasing public is that of a generic term.
Contrary to the thrust of applicant's arguments, the
Examining Attorney need not establish that "STORAGE OUTLET" is
the sole or most frequently used generic term for applicant's
services; rather, he need only show that such term is a generic
term. It is settled in this regard that (italics in original):
[A] product [or service] may have more than
one generically descriptive name. .... All
of the generic names for a product [or
service] belong in the public domain.

In re Sun Oil Co., 426 F.2d 401, 165 USPQ 718, 719 (CCPA 1970)
(Rich, J., concurring). See also Roselux Chemical Co., Inc. v.
Parsons Ammonia Co., Inc., 299 F.2d 855, 132 USPQ 627, 632 (CCPA
1962) ("there is no legal foundation ... that a product has only
one [generic or] common descriptive name"); In re Eddie Z's
Blinds & Drapery Inc., 74 USPQ2d 1037, 1042 (TTAB 2005) ("that
there may be other generic terms that are functionally equivalent
to [the term at issue] ... does not make that term any less
generic"); Continental Airlines Inc. v. United Air Lines Inc., 53
USPQ2d 1385, 1394 (TTAB 1999) ("[i]t is important to note that
Ser. No. 75841424
24
there is usually no one, single and exclusive generic name for a
product or service. Any product or service may have many generic
designations"); and In re Recorded Books Inc., 42 USPQ2d 1275,
1281 (TTAB 1997) ("[i]ndeed, a product may have more than one
generic name"). Thus, instead of demonstrating that the term
"STORAGE OUTLET" is not generic for the services of "providing
self-service storage facilities for general consumer and business
use," applicant's examples of third-party usage of such terms as
"self-storage facilities," "self-storage mini warehouses," "self-
storage centers," "self-storage unit," "self-storage space" and
just "self-storage" simply confirm that there are a multiplicity
of terms which generically designate services of the kind offered
by applicant and identified in the application for registration.
Moreover, in view thereof, the absence from the limited
number of yellow page directories submitted by applicant of a
class or category of services listed under the term "STORAGE
OUTLET" is not persuasive evidence that such term is not generic
for applicant's services. The fact that, as applicant has
observed, the record shows only "a category known as 'STORAGE-
SELF SERVICE' which consistently appears in yellow pages" simply
does not mean that no other term is generic for the services of
providing self-service storage facilities for general consumer
and business use. If such were not the case, then applicant's
evidence of the absence of a listing of any terms other than
"STORAGE-SELF SERVICE" would mean that the primary significance
of such terms as "self-storage facilities" or "self-storage
centers," which applicant admits are generic for its services,
Ser. No. 75841424
25
are not in fact understood by the relevant purchasing public as
naming the category or class of services marketed by applicant.
Similarly, if the record contained evidence showing, as contended
by applicant, that the sole trade association for the self-
storage industry is known by the name "Self Storage Association,"
such evidence would not serve to eliminate the possibility of
there being another term or even several other terms which the
relevant purchasing public would consider to be generic for
services of the kind offered by applicant.
Moreover, having considered applicant's argument that
the particular examples, as set forth above, of various terms
which it made of record are relevant to the issue of genericness,
we likewise have considered the Examining Attorney's evidence of
third-party usage of the term "self-storage outlet" (along with
such usage of the term "storage outlet") for services of the type
set forth in the application and provided by applicant.6 The
issue herein is whether or not the term "STORAGE OUTLET" has been
shown by clear and sufficient evidence to be generic for
applicant's services. Therefore, if, as applicant contends,
usage of various terms consisting of "self-storage" (or "self
storage") followed by what applicant concedes are generic
designations (e.g., "facilities," "mini warehouses," "centers,"
"unit" or "space") for services of the kind which it renders is

6 While the record reveals that, when used in print, it is not uncommon
for the term "self-storage" to be hyphenated, we find that the
presence or absence of a hyphen therein has no bearing on whether the
usage thereof in connection with another word would be considered
generic by customers for self-service storage facility services.

Ser. No. 75841424
26
evidence that the designation "STORAGE OUTLET" is not generic,
then it necessarily is also the case that usage of the term
"self-storage outlet" (like "self storage outlet") is evidence
that such designation is generic for applicant's services, since
the latter term plainly designates "storage outlet" services
which can be utilized by one's self.
In a similar vein, while applicant insists that the
examples which it made of record showing usage of the term
"storage outlet" in contexts other than that of providing self-
service storage facility services constitute additional relevant
evidence that the term "STORAGE OUTLET" is not generic for the
services recited in its application, applicant criticizes as
irrelevant the two instances in which the Examining Attorney made
of record excerpts which mention such term in the contexts of,
respectively, natural gas liquid and a piece of furniture.
Suffice it to say that although, as argued in applicant's initial
brief, such evidence of usage in other contexts "bolsters
Applicant's argument that 'storage outlet' can refer to many
things other than Applicant's services," the fact that such term
may also be descriptive, if not generic, with respect to other
goods and/or services does not foreclose its being generic in the
context of applicant's self-service storage facility services.
Accordingly, while we have given no weight to such evidence in
the case of the two excerpts furnished by the Examining Attorney,
we have given only very limited probative value to the similar
evidence submitted by applicant.

Ser. No. 75841424
27
We fully agree with applicant, however, that in this
case the several excerpts from foreign sources which the
Examining Attorney included in the of record are without
probative value with respect to whether "STORAGE OUTLET" is a
generic term for applicant's services. Although the Board has
recently, as applicant correctly points out, liberalized its
practice and currently considers articles from foreign websites
and publications to have a bearing on issues of descriptiveness
and genericness where the term at issue concerns fields such as
medicine, engineering, computers, telecommunications and other
highly sophisticated scientific or technical specialties which
commonly make research reference to foreign sources of
information pertaining thereto, this case plainly does not
involve such circumstances. Compare In re Cell Therapeutics
Inc., 67 USPQ2d 1795, 1797-98 (TTAB 2003) and In re Remacle,
supra, with In re Men's International Professional Tennis
Council, 1 USPQ2d 1917, 1919-20 (TTAB 1986) and in In re Bel
Paese Sales Co., supra at 1235. Moreover, the record indicates,
as set forth in the previously noted excerpt from California Real
Estate Journal, that "the trade area for self-storage facilities
is confined to a fairly tight, three mile radius." Because
services of the kind rendered by applicant are so extremely
localized in terms of their customer base, it is highly unlikely
that consumers would refer to articles about such services which
are from foreign sources. Due to the lack of relevance thereof
to customers in the United States, we consequently have given no
Ser. No. 75841424
28
consideration to those excerpts made of record by the Examining
Attorney which are from foreign publications.
Nonetheless, we disagree with applicant's contention
that the Examining Attorney has failed to meet his burden of
showing genericness. While, like applicant, we would not
characterize the number of "NEXIS" and Internet excerpts offered
by the Examining Attorney to be "numerous," we find that the
record contains sufficient examples of third-party usage of the
term "STORAGE OUTLET" which clearly evidence that the primary
significance of such term to the relevant purchasing public for
applicant's services is to refer to a category or type of
services which involve providing self-service storage facilities
for general consumer and business use.7 Specifically, the
"NEXIS" and Internet excerpts sufficiently make plain that a
"STORAGE OUTLET" would be understood by customers as a generic
name for a facility which sells self-service storage space. The
relevant excerpts furnished by the Examining Attorney are
unambiguous in their manner of usage of such term as a reference
to a kind of self-service storage facility, with most of the
articles notably predating not only the dates of first use

7 We have considered, in this regard, the St. Louis Post-Dispatch
excerpt since, notwithstanding applicant's unsubstantiated assertion
that such excerpt is irrelevant because the "public warehousing" and
"flexible storage outlets" referred to therein are not the type of
self-service storage facilities which applicant actually operates, it
appears from the context of the article that the services mentioned
therein fall within the recitation of applicant's services, namely,
"providing self-service storage facilities for general consumer and
business use." Nevertheless, even if such excerpt were to be excluded
from consideration, it would not alter our conclusion that the
Examining Attorney has provided evidence adequate to clearly
demonstrate genericness.

Ser. No. 75841424
29
claimed by applicant but also the filing date of the application.
Of the other evidence in the record, only two excerpts, along
with the several examples of applicant's advertising, utilize the
term "STORAGE OUTLET" in a service mark manner and such instances
all appear to be subsequent to both applicant's claimed dates of
first use and the filing date of the application.
This record, therefore, does not present the "mixture
of usages" of the type which precluded a finding of genericness
in Merrill Lynch, 4 USPQ2d at 1143. Instead, the record shows
clear evidence of third-party usage of the term "STORAGE OUTLET"
as a generic name for providing self-service storage facilities
for general public and business use. Such usage, as applicant
concedes, "is akin to a survey of the public's understanding of
Applicant's mark" and suffices to prove, as required by American
Fertility Society, 54 USPQ2d at 1837, that the term "STORAGE
OUTLET" "as a whole ... has acquired no additional meaning to the
relevant public than," as shown by the pertinent dictionary
definitions thereof, the terms "storage" and "outlet" would "have
individually." Because the primary significance of the term
"STORAGE OUTLET" would accordingly be understood by the relevant
public to refer to a category of class of providing self-service
storage facilities for general consumer and business use, such
term is a generic term for applicant's services and is therefore
incapable of registration on the Supplemental Register.
Decision: The refusal under Section 23 is affirmed.