Directory of Schools, LLCDownload PDFTrademark Trial and Appeal BoardMar 23, 2009No. 77221668 (T.T.A.B. Mar. 23, 2009) Copy Citation Mailed: March 23, 2009 UNITED STATES PATENT AND TRADEMARK OFFICE ___________ Trademark Trial and Appeal Board ___________ In re Directory of Schools, LLC ___________ Serial No. 77221668 ___________ Ross B. Jones of Merrill, Arnone & Jones for Directory of Schools, LLC. Caryn Glasser, Trademark Examining Attorney, Law Office 108 (Andrew Lawrence, Managing Attorney). ____________ Before Quinn, Walters and Walsh, Administrative Trademark Judges. Opinion by Walters, Administrative Trademark Judge: Directory of Schools, LLC has filed an application to register on the Principal Register the standard character mark DIRECTORY OF SCHOOLS for “providing an online directory information service featuring information regarding education,” in International Class 35.1 The application was filed with a claim of acquired distinctiveness under Section 1 Serial No. 77221668, filed July 3, 2007, based on use of the mark in commerce, alleging first use and use in commerce as of December 18, 2001. THIS OPINION IS NOT A PRECEDENT OF THE TTAB Serial No. 77221668 2 2(f) and it includes a disclaimer of DIRECTORY apart from the mark as a whole. The examining attorney has issued a final refusal to register, under Section 2(e)(1) of the Trademark Act, 15 U.S.C. §§1052(e)(1), on the ground that DIRECTORY OF SCHOOLS is merely descriptive in connection with the identified services and applicant’s attempt to overcome the descriptiveness refusal with a claim of acquired distinctiveness does not suffice.2 Applicant has appealed. Both applicant and the examining attorney have filed briefs. We affirm the refusal to register. Applicant filed its application initially with a claim of acquired distinctiveness, which it supported with its statement of more than five years of substantially exclusive and continuous use of DIRECTORY OF SCHOOLS. Stating that DIRECTORY OF SCHOOLS is highly descriptive, the examining attorney concluded that the statement is insufficient to establish acquired distinctiveness. 2 Applicant contends that the examining attorney inappropriately characterized its mark as generic in the final action; that the issue had not been raised previously; and, alternatively, that the examining attorney has not established that DIRECTORY OF SCHOOLS is generic in connection with the identified services. The examining attorney clarified in her brief that the refusal is not based on genericness. Thus, genericness is not before the Board in this appeal. In this regard, we have not considered the examining attorney’s statements that no amount of evidence by applicant would establish acquired distinctiveness herein. Serial No. 77221668 3 Subsequently, applicant submitted additional evidence, including information that DIRECTORY OF SCHOOLS is recognized as applicant’s brand by the Google search engine and by other search engines as well; that it receives between 1 and 3 million page viewings per day; that it has been rendering its online services for six years; that its listing in Google search results contains numerous site links, which indicates the recognition of its popularity; and that it has been placed as the first search result by Google’s search engine, as well as by search engines Yahoo.com and Ask.com. Applicant explained the purported significance of this evidence, as discussed below. The examining attorney concluded that the evidence remained insufficient to establish acquired distinctiveness in view of the alleged highly descriptive nature of the mark. In support of her position that DIRECTORY OF SCHOOLS is highly descriptive, the examining attorney states that “the word ‘directory’ [is defined] as: ‘book of names: a book alphabetically listing persons and organizations, usually with information about how to contact them;’ and the word ‘schools’ is defined as: ‘education university-level institution: a college or university.’ [Encarta.msn.com] As evidenced by applicant’s specimen, the applicant provides a directory of schools, specifically college and university level schools with information and links on how to contact Serial No. 77221668 4 them. (See specimen submitted July 3, 2007).” (Brief, unnumbered p. 6.) The examining attorney also submitted excerpts from various Internet websites for third-party school directories. The following are several examples: • Aisne.org – Association of Independent Schools in New England – includes a heading in its homepage index entitled “Directory of Schools.” • Engineering.schools.com – includes a “Directory of Engineering Schools in the United States.” • Cecnsw.catholic.edu – includes a “Schools Directory.” • Opi.mt.gov – includes an “OPI Directory of Montana Schools.” • Mytechschools.com – includes a “Directory of Technical Schools.” Applicant responded to the examining attorney’s position by stating that evidence of sales and advertising expenses is irrelevant because applicant uses its mark only on the Internet; that the evidence it did submit is “appropriate” and “competent” for an Internet service because it shows the Internet’s “own recognition of [applicant’s mark] as a source of origin for applicant’s services, as well as Internet sources that provide guides to trademark usage.” (Reply Brief, p. 4.) Applicant states, further, that it “operates an enormously successful online service, measured not by traditional data-points like advertising expenses, but measured in methods that are more relevant to the online world: top-rated search engine results, and recognition by the world’s foremost search Serial No. 77221668 5 engine that applicant’s mark is considered a name brand.” (Reply Brief, p. 3.) Serial No. 77221668 6 Evidentiary Issues It is well established that both the examining attorney and applicant may submit as evidence excerpts from Internet websites and applicant does not disagree. However, applicant objects to the Internet evidence submitted by the examining attorney in this case because each page indicates that it is from “cached” Internet pages and, as such, it is unverifiable and should be excluded. The Google print-out of each website submitted by the examining attorney contains the following statement by Google: This is Google’s cache of http://www.aisne.org/school_or_camp/directory.asp as retrieved on Aug 9, 2007 18:44:34 GMT. Google’s cache is the snapshot that we took of the page as we crawled the web. The page may have changed since that time. Click here for the current page without highlighting. This cached page may reference images which are no longer available. Click here for the cached text only. … Applicant attached to its brief an explanation and discussion of “cached pages” from the Google website at googleguide.com. This is not appropriate material for judicial notice, but because the information is useful and the examining attorney did not object, we exercise our discretion and we have considered this evidence. We find applicant’s basis for arguing that the examining attorney’s Internet evidence should be excluded to be entirely without merit. As is apparent from the Google heading on the cached page and the additional information Serial No. 77221668 7 submitted by applicant about cached pages, the cached page is an exact “snapshot” of the web page taken at the date and time noted. Thus, it is entirely accurate and verifiable on its face. If applicant is uncertain of the page’s contents at that time, it can consult Google’s archives site or one of the archiving sites on the Internet to confirm that the page is accurate for the stated date and time. The examining attorney put this evidence in the record during examination and applicant had an opportunity to respond to the evidence. In other words, if the evidence was inaccurate or the website had changed or was no longer available, applicant could have submitted a report or a more current copy of the web page for consideration. Moreover, we view all evidence from Internet websites with the understanding that it may appear for a limited time and that it is subject to change. Thus, applicant’s objection is overruled and the examining attorney’s evidence has been considered. Analysis Applicant’s claim under Section 2(f) is essentially an admission that its mark is merely descriptive and applicant does not contest this. We also find that DIRECTORY OF SCHOOLS clearly describes a significant feature of applicant’s services of “providing an online directory information service featuring information regarding Serial No. 77221668 8 education.” It is apparent from the copy of its website home page submitted as a specimen of use that the site provides contact information and Internet links to various schools as well as information about degree programs, fields of study and other education resources. Therefore, the only question before us is whether applicant’s declaration and supporting evidence are sufficient to establish that DIRECTORY OF SCHOOLS has acquired distinctiveness for “providing an online directory information service featuring information regarding education.” Our analysis necessarily involves considering the degree of descriptiveness of the proposed mark. Logically, the standard for establishing acquired distinctiveness becomes more difficult as the mark’s descriptiveness increases. Yamaha International Corp. v. Hoshino Gakki Co., 840 F.2d 1571, 6 USPQ2d 1001, 1008 (Fed. Cir. 1988) (The kind and amount of evidence of acquired distinctiveness required to secure a registration will necessarily vary with the subject matter for which registration is sought). The evidence of third-party Internet websites shows common use of the terms “directory” and “schools,” sometimes in the same order and manner as applicant’s mark, to describe a listing of various types of schools. Additionally, and contrary to applicant’s contentions Serial No. 77221668 9 otherwise, the meanings of the terms “directory” and “schools” in applicant’s mark is essentially the same as the meanings of these terms in dictionary definitions submitted by the examining attorney. The order of the terms in the marks and their use together creates no unique or unusual meaning for either the individual terms or the mark as a whole. Thus, we agree with the examining attorney that applicant’s proposed mark, DIRECTORY OF SCHOOLS, falls on the far end of the spectrum as a highly descriptive mark in connection with its identified services. It is highly descriptive of a significant aspect of those services, i.e., the directory of schools that appears on its website. Therefore, we agree with the examining attorney that applicant’s use of its proposed mark for approximately seven years is neither conclusive nor persuasive that DIRECTORY OF SCHOOLS has acquired distinctiveness. In prior cases involving usage of comparable or even much longer duration, and with some of these uses even being coupled with significant sales and advertising expenditures (not to mention direct evidence of customers’ perceptions), the Board or its primary reviewing court has found a failure to demonstrate acquired distinctiveness within the meaning of Section 2(f). See In re Andes Candies, Inc., 478 F.2d 1264, 178 USPQ 156, 158 (CCPA 1973); In re Gibson Guitar Corp., 61 Serial No. 77221668 10 USPQ2d 1948, 1952 (TTAB 2001) (66 years of use). and In re Packaging Specialists, Inc., 221 USPQ 917, 920 (TTAB 1984). Likewise, and particularly in view of the highly descriptive nature of the mark, we find that applicant’s additional evidence, either alone or in combination with the declaration of use, does not establish that its proposed mark has acquired distinctiveness.3 The figures submitted by applicant regarding number of visitors to applicant’s website show only the popularity of applicant’s website, not that the relevant viewers have come to view DIRECTORY OF SCHOOLS as applicant’s source-identifying mark. See In re Candy Bouquet International, Inc., 73 USPQ2d 1883, 1889 (TTAB 2004). Cf. Bose Corp. v. QSC Audio Products Inc., 293 F.3d 1367, 63 USPQ2d 1303, 1309 (Fed. Cir. 2002). Moreover, applicant has not fully explained the nature of its business (e.g., does its revenue come from advertisers, schools, or website visitors; and who are its competitors) and, thus, the Board has no context within which to determine the significance of the information about applicant’s website visitors. Similarly, the fact that applicant may appear in the number one position in a number of search engine searches or 3 While we agree with applicant that the Internet provides a relatively recent venue for commerce, we do not agree that sales and advertising figures have become irrelevant for Internet businesses in the context of establishing trademark distinctiveness. In fact, in this case, such information might have been a useful addition to the information that applicant did submit. Serial No. 77221668 11 that it has site links on a Google search result page are not determinative. The information submitted by applicant to explain the significance of its rankings indicates that Google uses a complex and, to users, relatively opaque, algorithm for determining a site’s location in its search results; and that a website owner can do many things on its site to improve its Google rankings. We note, by analogy, that even highly substantial advertising and promotional expenditures often are not sufficient to support a finding of acquired distinctiveness. See, for example, Braun Inc. v. Dynamics Corp., 975 F.2d 815, 24 USPQ2d 1121, 1133 (Fed. Cir. 1992); and Brunswick Corp. v. British Seagull Ltd., 28 UDPQ2d 1197, 1202-03 (TTAB 1993). See also, In re Pennzoil Products Co., 20 USPQ2d 1753 (TTAB 1991); and In re Pingel Enterprises Inc., 46 USPQ2d 1811 (TTAB 1988) (advertising dollars may suggest efforts made to acquire distinctiveness, but do not demonstrate that the efforts have borne fruit). Additionally, the fact that, in connection with its search programs, Google may consider applicant’s DIRECTORY OF SCHOOLS to be a “brand name” has little meaning in the context of trademark law or the question of whether relevant purchasers of applicant’s services view DIRECTORY OF SCHOOLS as a source-identifying mark. In this regard, we note that, on the Google search report submitted by applicant, DIRECTORY OF SCHOOLS appears only in the context and Serial No. 77221668 12 location of a web address, i.e., www.directoryofschools.com. This does not prevent the phrase from being considered a trademark, but viewers are more likely to perceive of this use merely as a web address than as a mark. Finally, we are not persuaded by applicant’s argument that its case is similar to In re America Online, Inc., 77 USPQ2d 1618 (TTAB 2006), “where evidence was submitted that showed ‘trademark recognition by customers, publishers, and third parties’ which proved sufficient to prove acquired distinctiveness.” (Brief, p. 9.) Applicant contends that its evidence from major Internet search engines and their methodology is equivalent to “evidence of customers, publishers, and third parties.” (brief, p. 13.) We agree with the examining attorney that the facts in the America Online case are significantly different from the facts before us here because applicant in that case provided substantial evidence of its efforts to educate the public, its substantial marketing reach, its millions of users and billions of daily email messages, as well as customers’ and third-party businesses’ affidavits. While the evidence submitted by applicant may be equivalent to evidence of third-parties’ perception of applicant’s mark, it certainly does not substitute for evidence of consumer perception of applicant’s mark. Serial No. 77221668 13 As stated by the examining attorney, “applicant must establish that the purchasing public has come to view the proposed mark as an indicator of origin.” We note applicant’s argument that the examining attorney has not provided “a legal or factual basis for concluding that applicant’s evidence is insufficient to establish acquired distinctiveness.” (Reply Brief, p. 3.) However, the burden is on applicant to establish acquired distinctiveness, rather than on the examining attorney to refute applicant’s showing. Yamaha at 1006; In re Hollywood Brands, Inc., 214 F.2d 139, 102 USPQ 294, 295 (CCPA 1954)(“[T]here is no doubt that Congress intended that the burden of proof [under Section 2(f)] should rest upon the applicant”). For the reasons enunciated herein, we agree with the examining attorney that applicant has not established that DIRECTORY OF SCHOOLS has acquired distinctiveness as a source- identifying mark for “providing an online directory information service featuring information regarding education.” Decision: The refusal under Section 2(e)(1) of the Act is affirmed and applicant has not overcome that refusal with its claim of acquired distinctiveness under Section 2(f) of the Act. Copy with citationCopy as parenthetical citation