Edmunds.com, Inc.

Trademark Trial and Appeal Board

Sep 24, 2007

No. 78540254 (T.T.A.B. Sep. 24, 2007)

Mailed:
September 24, 2007
jtw

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Edmunds.com, Inc.
________

Serial No. 78540254
_______

Elisabeth A. Evert of Hitchcock Evert LLP for Edmunds.com,
Inc.

Michael G. Lewis, Trademark Examining Attorney, Law Office
111 (Craig D. Taylor, Managing Attorney).
_______

Before Bucher, Grendel and Walsh, Administrative Trademark
Judges.

Opinion by Walsh, Administrative Trademark Judge:

On December 30, 2004, Edmunds.com, Inc. (applicant)
applied to register the mark TRUE MARKET VALUE in standard-
character form on the Principal Register for services
identified as “computer services, namely providing online,
interactive database which provides an evaluation of the
market value of a vehicle based on criteria entered by the
database user” in International Class 35. Applicant claims
both first use of the mark anywhere and first use of the
THIS OPINION
IS NOT A PRECEDENT OF
THE T.T.A.B.
Serial No. 78540254
2
mark in commerce on June 15, 2000. Applicant also
submitted a claim of acquired distinctiveness under
Trademark Act Section 2(f), 15 U.S.C. § 1052(f), with its
application.
The Examining Attorney has finally refused
registration under Trademark Act Section 2(e)(1), 15 U.S.C.
§ 1052(e)(1), on the grounds that the mark is not only
merely descriptive but generic, that is, “incapable of
serving as a source-identfier for applicant’s goods and/or
serviuces.” Final Action at 1. The Examining Attorney
also rejected applicant’s evidence of acquired
distinctiveness as insufficient “in light of the highly
descriptive nature of the mark.” Id. at 3.
Applicant appealed. Applicant and the Examining
Attorney have filed briefs. We reverse the genericness
refusal and affirm the refusal on the grounds that
applicant’s evidence of acquired distinctiveness is
insufficient.
Our decision must address two distinct issues: (1)
whether the Examining Attorney has established that TRUE
MARKET VALUE is generic for “computer services, namely
providing online, interactive database which provides an
evaluation of the market value of a vehicle based on
criteria entered by the database user”; and, if he has not,
Serial No. 78540254
3
(2) whether applicant has established that TRUE MARKET
VALUE has acquired distinctiveness for the identified
services.
Applicant also argues, somewhat obliquely, that TRUE
MARKET VALUE is suggestive, that is, that TRUE MARKET VALUE
is inherently distinctive, in spite of the fact that
applicant filed a claim of acquired distinctiveness with
the application. We will address this issue, to the extent
necessary, in our discussion of whether or not TRUE MARKET
VALUE is generic.
I. The Genericness Issue
A term is generic if it identifies the class, genus or
category of services at issue. See In re Dial-A-Mattress
Operating Corp., 240 F.3d 1341, 57 USPQ2d 1807 (Fed. Cir.
2001), citing H. Marvin Ginn Corp. v. International
Association of Fire Chiefs, Inc., 782 F.2d 987, 228 USPQ
528 (Fed. Cir. 1986).
The Court of Appeal for the Federal Circuit provided a
framework for the consideration of whether or not a term is
generic in the Fire Chief case. Specifically, the Court
dictated a two-step inquiry: “First what is the genus of
goods or services at issue? Second, is the term sought to
be registered or retained on the register understood by the
relevant public primarily to refer to that genus of goods
Serial No. 78540254
4
or services.” H. Marvin Ginn Corp. v. International Assn.
of Fire Chiefs, Inc., 228 USPQ at 530.
Thus, the ultimate test for determining whether a term
is generic is its primary significance to the relevant
public. See Section 14(3) of the Act. See also In re
American Fertility Society, 188 F.3d 1341, 51 USPQ2d 1832
(Fed. Cir. 1999) and Magic Wand Inc. v. RDB Inc., 940 F.2d
638, 19 USPQ2d 1551 (Fed. Cir. 1991). The Examining
Attorney has the burden of establishing by clear evidence
that the term is generic. See In re Merrill Lynch, Pierce,
Fenner and Smith, Inc., 828 F.2d 1567, 4 USPQ2d 1141 (Fed.
Cir. 1987). Evidence of the relevant public’s
understanding of a term may come from any competent source,
including direct testimony of consumers, consumer surveys,
newspapers, magazines, dictionaries, trade journals,
catalogs, and other publications. See In re Northland
Aluminum Prods., Inc., 777 F.2d 1556, 227 USPQ 961 (Fed.
Cir. 1985).
As to the first question Fire Chief mandates, the
genus question, applicant and the Examining Attorney have
taken different positions. The Examining Attorney
consistently refers to the relevant genus as including
valuation services generally. By so defining the genus the
Examining Attorney seeks to rely on evidence of the use of
Serial No. 78540254
5
TRUE MARKET VALUE for valuations in fields other than
vehicles. Citing the Merriam-Webster’s Online Dictionary
(10th ed.) the Examining Attorney argues, “Genus is defined
as ‘a class, kind or group marked by common
characteristics.’ In this particular instance valuation
services are the genus because it describes the class
through which the Applicant’s services must be grouped.”
Examining Attorney’s Brief at 5-6. The Examining Attorney
argues further, “Applicant’s narrow classification is more
akin to species classification in the biological
classification system instead of the genus classification
and thus is improper based on the facts of this case.” Id.
at 6.
On the other hand applicant argues that we should look
to the identification of services in the application to
determine the genus, that is, “computer services, namely
providing online, interactive database which provides an
evaluation of the market value of a vehicle based on
criteria entered by the database user.”
We agree with applicant. In fact, the Examining
Attorney’s arguments simply beg the question; the
dictionary definition and the analogy to biology are not
helpful here. In the Fire Chief case, the Court, in fact,
looked to the identification of services in the
Serial No. 78540254
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registration at issue, that is, “a magazine directed to the
field of fire fighting,” noted that there are other
publications directed to that field and concluded, “The
class of magazines at issue is, therefore, those directed
to the field of firefighting.” H. Marvin Ginn Corp. v.
International Assn. of Fire Chiefs, Inc., 228 USPQ at 532.
In this case we see no reason to depart from the Court’s
approach in Fire Chief. We have no evidence that those
engaged in valuations in such diverse fields as vehicles,
real estate, jewelry or business records are part of a
“group marked by common characteristics.” The potential
“common characteristic” of interest here is terminology,
whether descriptive, generic or otherwise. We have no
evidence that those performing valuation in these diverse
fields and those using their services employ the same
terminology and understand terminology in the same way.
Therefore, for the purpose of our consideration of
whether or not TRUE MARKET VALUE is generic we will
consider only the evidence relating to the field of vehicle
valuations. We hasten to add that the Examining Attorney
has overstated the volume of evidence of record in other
fields, and that we would not reach a different conclusion
here if we had considered all of the Examining Attorney’s
evidence without regard to the valuation field.
Serial No. 78540254
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We now turn to the second question Fire Chief poses -
Is the term sought to be registered … understood by the
relevant public primarily to refer to that genus of goods
or services.
In addressing this question we must first consider a
threshold issue applicant and the Examining Attorney have
not directly addressed, that is, whether TRUE MARKET VALUE
is a phrase or a compound term. We conclude that TRUE
MARKET VALUE is a phrase and should be analyzed as such.
In In re Dial-A-Mattress Operating Corp., the Court
considered the mark “1-888-M-A-T-R-E-S-S” for “telephone
shop-at-home retail services in the field of mattresses”
and stated:
… where the proposed mark is a phrase (such as
“Society for Reproductive Medicine”), the board
“cannot simply cite definitions and generic uses
of the constituent terms of a mark”; it must
conduct an inquiry into “the meaning of the
disputed phrase as a whole.” In re The Am.
Fertility Soc'y, 188 F.3d at 1347, 51 USPQ2d at
1836.

In re Dial-A-Mattress Operating Corp., 57 USPQ2d at
1387. The court concluded that “1-888-M-A-T-R-E-S-S”
bears closer conceptual resemblance to a phrase than a
compound word, and the court reiterated that the PTO
must produce evidence of the meaning the relevant
purchasing public ascribes to the mark “as a whole.”
Serial No. 78540254
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Id. at 1387. The Court concluded that 1-888-M-A-T-R-
E-S-S was generic and added that the term is not
literally a genus or class name for the service at
issue. Accordingly, we conclude that TRUE MARKET
VALUE is a phrase and will analyze it as such.
Next we consider whether the Examining Attorney’s
evidence establishes that TRUE MARKET VALUE is a
phrase which defines the class of vehicle valuation
services. Applicant argues that the evidence is
lacking and summarizes the evidence as follows:
By Applicant’s count, the Examining Attorney
submitted 12 articles in conjunctions with his
final action in an attempt to demonstrate a
generic nature. Of these articles five are
outside the automotive field, and one refers to
boats… This leaves only six articles discussing
TRUE MARKET VALUE in the vehicle field. Of
these, one is from the U.K…

…in his denial of request for reconsideration
mailed January 5, 2007, the Examining Attorney
provides an additional 13 Internet references
that attempt to portray “true market value” as a
generic term. Of these three are outside the
scope of Applicant’s services, one is a reference
in the United Kingdom, and two are from the same
website.

Applicant’s Brief at 4. The Examining Attorney also
provided examples with his First Action, but those
examples appear to be duplicated in the evidence
applicant discusses here.
Serial No. 78540254
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Later applicant also points out and documents
that, in the case of the one “boat” example at
usedboats.com, the use of TRUE MARKET VALUE ceased.
Applicant also provided a full copy of the article
from the Orange County Register which the Examining
Attorney had provided a brief excerpt from to show
that, in fact, the article refers to applicant. Id.
at 6. In addition applicant notes that the example
from newcars.com appears to be infringing because it
also uses a registered mark owned by applicant, TMV,
along with TRUE MARKET VALUE. Id. at 7.
On the other hand the Examining Attorney argues
that this same evidence is sufficient to conclude that
TRUE MARKET VALUE is generic.
We conclude that the evidence of the use of TRUE
MARKET VALUE is insufficient in both quantity and
quality to establish that TRUE MARKET VALUE is
generic. Applicant’s characterization and criticisms
of the Examining Attorney’s evidence are well-taken.
In the end we have about ten to fifteen examples of
the use of FAIR MARKET VALUE in relation to vehicles,
and only a few more in other fields. The examples are
generally in the text of articles, typically in the
form of passing references to valuations. Also,
Serial No. 78540254
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conspicuous by their absence are clear uses by
competitors. In sum, we conclude that the evidence
here is insufficient to meet the clear evidence
standard and that, on this record, the Examining
Attorney has failed to establish that TRUE MARKET
VALUE is a genus or class name for “computer services,
namely providing online, interactive database which
provides an evaluation of the market value of a
vehicle based on criteria entered by the database
user.”
However, the evidence of record does show that the
phrase TRUE MARKET VALUE is highly descriptive of the
identified services. We reject applicant’s arguments that
TRUE MARKET VALUE is suggestive of these services.
When we view TRUE MARKET VALUE in the context of the
identified services, as we must, the conclusion that it is
highly descriptive of a feature or characteristic of the
services is inescapable. See In re Gyulay, 820 F.2d 1216,
3 USPQ2d 1009, 1009 (Fed. Cir. 1987); In re Abcor
Development Corp., 588 F.2d 811, 200 USPQ 215, 217-18 (CCPA
1978); In re H.U.D.D.L.E., 216 USPQ 358, 359 (TTAB 1982);
and In re MBAssociates, 180 USPQ 338, 339 (TTAB 1973). The
point of the service is to provide a measure of market
value of a vehicle, and the addition of the highly
Serial No. 78540254
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descriptive, laudatory adjective TRUE is hardly sufficient
to transform the phrase into an inherently distinctive
mark. See In re Best Software Inc., 63 USPQ2d 1109 (TTAB
2002); In re Wileswood, Inc., 201 USPQ 400 (TTAB 1978).
II. Acquired Distinctiveness
In view of our finding that the Examining Attorney has
established that TRUE MARKET VALUE is highly descriptive,
but not generic, we must consider whether applicant has
established that its highly descriptive phrase has acquired
distinctiveness. Section 2(f) contemplates that, in the
case of a mark found to be merely descriptive under Section
2(e)(1), but not generic, an applicant may nonetheless
establish that the mark is entitled to registration by
showing that the mark has acquired distinctiveness.
15 U.S.C. § 1052(f). The applicant bears the burden of
establishing acquired distinctiveness. Yamaha Intl. Corp.
v. Hoshino Gakki Co. Ltd., 840 F.2d 1572, 6 USPQ2d 1001,
1004-1008 (Fed. Cir. 1988).
Section 2(f) provides, in part, “The Director may
accept as prima facie evidence that the mark has become
distinctive, as used on or in connection with the
applicant’s goods in commerce, proof of substantially
exclusive and continuous use thereof as a mark by the
Serial No. 78540254
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applicant in commerce for the five years before the date on
which the claim of distinctiveness is made.” 15 U.S.C.
§ 1052(f).
In considering a claim of acquired distinctiveness,
the Examining Attorney must determine, based on the degree
of descriptiveness of the mark in question, whether a five-
year claim or other evidence proffered is adequate to
establish acquired distinctiveness. See In re America
Online Inc., 77 USPQ2d 1618 (TTAB 2006); In re Mine Safety
Appliances Co., 66 USPQ2d 1694 (TTAB 2002); In re Garcia,
175 USPQ 732 (TTAB 1972).
In support of its claim of acquired distinctiveness,
in its brief applicant first refers the length of time it
has used TRUE MARKET VALUE, that is, since June 15, 2000 as
alleged in the appication. Although applicant appears to
invoke the five-year provision of Section 2(f), applicant
has not submitted the verified statement with all of the
essential allegations, including a claim of “substantially
exclusive and continuous use” for five years (emphasis
provided). Accordingly, we will consider applicant’s claim
of long use apart from the five-year provision of Section
2(f). For the record, we note that a proper five-year
claim under Section 2(f) would, by itself, be insufficient
to show acquired distinctiveness in this case due to the
Serial No. 78540254
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highly descriptive nature of the mark. Likewise we reject
the claim of long use as insufficient, by itself, or for
that matter, in combination with applicant’s other evidence
in this case, to establish acquired distinctiveness. See
In re Lens.com Inc., 83 USPQ2d 1444, 1448 (TTAB 2007) and
cases cited therein.
Applicant also relies on other evidence in its attempt
to show that TRUE MARKET VALUE has acquired
distinctiveness. Applicant provides that evidence
principally with an affidavit from Kenneth H. Levin,
applicant’s Executive Vice President and General Counsel
filed with the application. The additional evidence
includes: (1) three articles in which its service is
discussed and TRUE MARKET VALUE is mentioned, two very
brief items from The New York Times and the article
referenced above from The Orange County Register; (2) uses
of TRUE MARKET VALUE “by the press and trade and industry
groups” consisting of examples of uses appearing on three
websites; and (3) uses of TRUE MARKET VALUE on “third party
websites in the trade and industry…” consisting of examples
from three additional web sites. Levin Aff. at 3.
The Levin affidavit itself consists largely of
conclusory statements. For example, Mr. Levin states, “The
subject mark has been extensively used, promoted and
Serial No. 78540254
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advertised by Applicant in interstate commerce throughout
the United States and on the global computer information
network known as the Internet.” Levin Aff. at 2. Mr.
Levin also asserts, “Recognition by the public and the
trade of the distinctiveness of the subject mark as used in
connection with the services has consistently increased and
this mark has been a significant feature in increasing
sales and total business growth.” Id.
Mr. Levin does provide the following information:
… Applicant makes extensive use of the mark at its
website www.edmunds.com. By way of example and not
limitation, visitors to Applicant’s home page totaled
approximately 250,000 per day for the months of
October and November of 2004. As such annualized
impressions of the mark total over 90 million per
year.

… Additionally, visitors to Applicant’s “Options
Results” page within its www.edmunds.com site total
approximately 2 million per month. Annualized
impressions total 24 million per year.

… Applicant has expended tens of thousands of dollars
in advertising and promotion expenditures in
connection with the mark in an effort to achieve
consumer recognition of the mark… Moreover, Applicant
has devoted countless person-hours to the promotion,
advertising and offering of its goods and services
under the mark.

Id. at 3.
Under the circumstances of this case, the examples of
references to TRUE MARKET VALUE in the press and on
websites is not impressive in either quantity or quality.
Serial No. 78540254
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With regard to the evidence about applicant’s own website,
it is possible, if not probable, that many of those who
viewed the home page also viewed the “Options Results”
page. More importantly, even if we assume these totals
represent different individuals, and further assume
applicant’s extrapolations from this limited data to apply
over the history of its use of TRUE MARKET VALUE, we find
this evidence unimpressive. Likewise with regard to the
rather vague evidence concerning advertising expenditures
and activities, we find that evidence unpersuasive.
Conspicuous by its absence is any evidence showing the
promotion of TRUE MARKET VALUE specifically as a mark. In
sum, we find applicant’s evidence far short of what would
be required to show acquired distinctiveness in this case.
Due to the highly descriptive nature of TRUE MARKET VALUE,
mere evidence of applicant’s use of TRUE MARKET VALUE and
evidence of applicant’s general promotion of its service,
however extensive, is not sufficient. Likewise, the
limited references by third parties to TRUE MARKET VALUE in
the context of applicant’s services is insufficient.
Rather, again, due to the highly descriptive nature of
TRUE MARKET VALUE, evidence of the promotion of TRUE MARKET
VALUE specifically as a mark and evidence of the impact of
applicant’s use and promotion of TRUE MARKET VALUE is
Serial No. 78540254
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necessary to establish that TRUE MARKET VALUE has acquired
distinctiveness. That is, in a case such as this, we need
direct evidence that relevant consumers have come to
associate TRUE MARKET VALUE with applicant. Direct
evidence could take the form of consumer testimony or
consumer surveys, or other similar evidence. In the
absence of any direct evidence, on this record we conclude
that applicant has failed to establish that TRUE MARKET
VALUE has acquired distinctiveness.
Finally, we note that in its main brief applicant for
the first time refers to two prior registrations it owns in
an apparent attempt to bolster its claim of acquired
distinctiveness. Specifically, applicant refers to
Registration No. 2498032 for the mark EDMUNDS.COM TRUE
MARKET VALUE and Registration No. 2484937 for the mark TMV.
The services identified in both applications are the same
as the services identified in the application at issue
here. Applicant also points out that the registration for
EDMUNDS.COM TRUE MARKET VALUE does not include a
disclaimer.
The Board does not take judicial notice of USPTO
records. To make registrations of record, applicant must
submit a copy of the registration or a printout from the
USPTO's electronic database. In re Duofold, Inc., 184 USPQ
Serial No. 78540254
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638, 640 (TTAB 1974) (“[T]he submission of a list of
registrations is insufficient to make them of record.”).
However, the Examining Attorney has not objected to this
listing of registrations. Nor has the Examining Attorney
objected to the late submission of this evidence. See
Trademark Rule 2.142, 37 C.F.R. § 2.142(d), which states,
“The record in the application should be complete prior to
the filing of an appeal.” In fact, the Examining Attorney
has not only failed to object to this evidence on either
ground, but he has discussed this evidence in his brief.
Accordingly, we have considered the registrations, but only
to the extent of the information provided.
The second registration for TMV mark is not relevant
because it does not include the words TRUE MARKET VALUE.
Therefore, we find all arguments based on this registration
unconvincing.
As to the first registration, in the absence of any
official record, we accept applicant’s characterization of
the mark as including spaces between each of the terms,
EDMUNDS.COM, TRUE, MARKET, and VALUE. We also accept
applicant’s representation that the registration does not
include any disclaimer. Likewise, we accept application’s
representation that the services identified in the
Serial No. 78540254
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registration are the same as the services identified in the
TRUE MARKET VALUE application we are considering here.
Nonetheless, we reject applicant’s argument that it is
entitled to register TRUE MARKET VALUE alone based on its
prior registration for EDMUNDS.COM TRUE MARKET VALUE. The
difference in the marks is critical. See In re Best
Software Inc., 63 USPQ2d at 1112-1113 and cases cited
therein. We reject applicant’s arguments that TRUE MARKET
VALUE is the truly distinctive element in the composite
registered mark and that EDMUNDS.COM is not significant.
In fact, the opposite would appear to be the case.
Furthermore, because we have no evidence that
applicant’s prior registration has achieved incontestable
status under Trademark Act Section 15, 15 U.S.C. § 1065,
applicant would be barred from basing its entitlement to
registration on this prior registration even if it were
otherwise proper. See In re American Sail Training Assn.,
230 USPQ 879, 880 (TTAB 1986).
This is a case where we have the discretion to accord
the claim of ownership of the prior registration
appropriate weight in our consideration of acquired
distinctiveness. We find that it is entitled to little, if
any weight. In the end we must consider this case on its
own merits based on the full record before us. In re Nett
Serial No. 78540254
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Designs, Inc., 236 F.3d 1339, 57 USPQ2d 1564 (Fed. Cir.
2001). Based on this record we conclude that applicant has
failed to meet its burden in establishing that the highly
descriptive phrase TRUE MARKET VALUE has acquired
distinctiveness.
Decision: We reverse the refusal to register the mark
under Trademark Act Section 2(e)(1) on the ground that the
mark is generic, and we affirm the refusal to register the
mark under Trademark Act Section 2(e)(1) on the ground that
the mark is merely descriptive and applicant has failed to
establish that the mark has acquired distinctiveness under
Trademark Act Section 2(f). Registration is refused.