Festival Markets, Inc.

Trademark Trial and Appeal Board

Dec 9, 1999

No. 75138331 (T.T.A.B. Dec. 9, 1999)

Paper No. 14
BAC
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF THE TTAB DEC. 9, 99
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Festival Markets, Inc.
________
Serial No. 75/138,331
_______
Glenn S. Bacal of Quarles & Brady LLP for Festival Markets,
Inc.
Catherine K. Krebs, Trademark Examining Attorney, Law
Office 108 (David Shallant, Managing Attorney)
_______
Before Hairston, Chapman and Holtzman, Administrative
Trademark Judges.
Opinion by Chapman, Administrative Trademark Judge:
Festival Markets, Inc. has filed an application to
register the mark INDOOR SWAPMART for “flea market
services, namely, the operation of flea markets.” 1
Registration has been refused under Section 2(e)(1) of
the Trademark Act on the basis that, when used in
connection with applicant’s services, the mark is merely

1 Application Serial No. 75/138,331, filed July 23, 1996. The
claimed date of first use is April 20, 1991.
Ser. No. 75/138331
2
descriptive of them.2 The Examining Attorney also found
that applicant’s alternative claim of distinctiveness under
Section 2(f) is insufficiently supported.
Applicant has appealed. 3 Both applicant and the
Examining Attorney have filed briefs, but an oral hearing
was not requested.
The issues before the Board are (1) whether
applicant’s mark INDOOR SWAPMART is merely descriptive when
applied to its services; and (2) if the mark is merely
descriptive, whether applicant has submitted sufficient
evidence of acquired distinctiveness under Section 2(f) to
overcome the refusal to register under Section 2(e)(1).
Turning first to the question of descriptiveness, the
Examining Attorney submitted definitions of the following

2 The Examining Attorney utilized the term “generic” in some of
her Office actions, but she did not issue a clear, and separate
refusal to register on that basis. Applicant addressed the issue
“in an abundance of caution” (applicant’s brief, p. 1). The
Examining Attorney concurred that “there was no specific refusal
on the grounds that the proposed mark is not capable of
functioning as a mark because it is generic.” (Examining
Attorney’s brief, p. 2). Thus, there is no refusal to register
on the ground of genericness in this case. We emphasize that any
refusal(s) to register and the statutory ground(s) therefore must
be clearly set forth in the Office actions. See TMEP §1106.01.
3 Along with its brief, applicant also filed a request for a
remand to the Examining Attorney for consideration of new
evidence. In her brief, the Examining Attorney waived any
objection to the entry of all of the evidence submitted with the
request for remand. The record is clear that the Examining
Attorney considered the involved evidence. The Board has also
considered all of applicant’s additional evidence.
Ser. No. 75/138331
3
terms from the Random House Unabridged Dictionary (2nd ed.
1993):
(1) “indoor” is defined as “occurring, used,
etc., in a house or building, rather than
out of doors”;
(2) “swap” is defined as “exchange, barter or
trade as one thing for another...”; and
(3) “mart” is defined as “1. market, trading
center, trade center. 2. A building, center,
or exposition for the sale of goods by
manufacturers and wholesalers to retail
merchants. 3. Archaic. A fair. 4. Obs.
Bargain.”
The Examining Attorney also submitted several third-
party registrations which include disclaimers of the
component words (“indoor,” “swap,” and “mart”); and Nexis
and Dialogue story excerpts such as the following:
(1) “Recreation Department and Twin Rivers Bass Club
will host the First Annual Fishing Tackle – New
and Used – Sale and Swap Mart from 8am-2pm,
Saturday...” News & Record (Greensboro, NC),
January 24, 1996;
(2) “The General Services Administration no longer
wants to run the government’s used computer swap
mart. GSA officials have proposed amending the
Federal IRM Regulation to give agencies authority
to dispose of their own excess hardware.”
Government Computer News, June 5, 1995;
(3) “Headline: Second string: Fake Apparel Earns
Counterfeiters Millions” “...everyday,’ Alan
Baskin of the Arizona Attorney General’s Office
said. ‘It’s on street corners, shopping malls
and at swap marts.’” The Phoenix Gazette,
February 3, 1995;
Ser. No. 75/138331
4
(4) “...high-tech Denver International Airport, thus,
leaving Stapleton to find a second lease on life
as an indoor swap mart, United is taking GADS
with it...” AI Expert, October 1994;
(5) “Headline: Shopper’s World picks Mesa as site for
its 2nd swap mart” “Shopper’s World, the indoor
swap mart that insists it’s not a flea market,
plans to open a second Valley market next month
in...” Mesa Tribune, November 3, 1993; and
(6) “...newly formed North Encanto Neighborhood
Association. The booklet also includes tips for
selling and setting up merchandise for swap marts
and craft fairs....” The Arizona Republic, March
6, 1993.
The Examining Attorney essentially contends that this
evidence establishes that the mark INDOOR SWAP MART has an
immediately recognizable descriptive meaning, specifically,
that “it is a market where value is exchanged, or swapped.”
(Examining Attorney’s brief, p. 3).
Applicant, in urging reversal of the refusal, contends
that the mark is only suggestive of flea market services;
and that the common descriptive terms for applicant’s
services are “flea markets” or “swap meets.” 4
A mark is unregistrable under Section 2(e)(1) of the
Trademark Act as merely descriptive of the services in

4 “Swap meet” is defined on a page from the Random House
Unabridged Dictionary (2nd ed. 1993) submitted by the Examining
Attorney, as “a fair or bazaar where objects, usually secondhand,
are bartered or sold.” We take judicial notice of the following
definition of “flea market” from The American Heritage Dictionary
(1976) as “a shop or open market selling antiques, used household
goods, curios, and the like.” See TBMP §712.
Ser. No. 75/138331
5
connection with which it is used if it immediately and
forthwith conveys information about the characteristics,
features or functions of those services. See In re Omaha
National Corp., 819 F.2d 1117, 2 USPQ2d 1859 (Fed. Cir.
1987); and In re Abcor Development Corp., 588 F.2d 811, 200
USPQ 215 (CCPA 1978).
Initially, we note that applicant has agreed to
disclaim the term “indoor,” stating that the “Examiner has
convinced Applicant on this point. Therefore, Applicant is
willing to disclaim ‘indoor’ apart from the mark as shown.”
(Applicant’s response filed January 23, 1998, p. 9)
We agree with the Examining Attorney that this mark
immediately and directly conveys information about the
nature of applicant’s services, i.e., flea markets which
are held indoors. The public would readily understand that
this mark merely describes these services. See In re
Gyulay, 820 F.2d 1216, 3 USPQ2d 1009 (Fed. Cir. 1987).
Accordingly, we find that applicant’s mark is merely
descriptive as applied to applicant’s goods.
Turning now to the merits of applicant’s alternative
position that the mark INDOOR SWAPMART has acquired
distinctiveness, applicant has the burden of establishing
that its mark has become distinctive. See Yamaha
Ser. No. 75/138331
6
International Corp. v. Hoshino Gakki Co. Ltd., 840 F.2d
1572, 6 USPQ2d 1001, 1006 (Fed. Cir. 1988).
The question of acquired distinctiveness is one of
fact which must be determined on the evidence of record.
As the Board stated in the case of Hunter Publishing Co. v.
Caulfield Publishing Ltd., 1 USPQ2d 1996, 1999 (TTAB 1986):
“[e]valuation of the evidence
requires a subjective judgment as to
its sufficiency based on the nature of
the mark and the conditions surrounding
its use.”
There is no specific rule as to the exact amount or
type of evidence necessary at a minimum to prove acquired
distinctiveness, but generally, the more descriptive the
term, the greater the evidentiary burden to establish
acquired distinctiveness. See In re Bongrain International
(American) Corp., 894 F.2d 1316, 13 USPQ2d 1727 (Fed. Cir.
1990); and Yamaha, supra at 1008. See also, 2 J. McCarthy,
McCarthy on Trademarks and Unfair Competition, §15:28 (4th
ed. 1999).
In support of its claim of acquired distinctiveness,
applicant submitted several unsolicited media articles
regarding its INDOOR SWAPMART flea markets; and the
declaration of Roger Karber, president of applicant. In
his declaration, Mr. Karber avers that when applicant was
in the process of choosing a mark, it first conducted focus
Ser. No. 75/138331
7
group research where consumers were asked to consider and
comment on a variety of names; and that the focus group
considered the term “SwapMart” as an indicator of source,
whereas the terms “swap meet” and “flea market” were common
references to these marketplaces. He further avers that
applicant’s use of the mark INDOOR SWAPMART commenced in
1991, and since then applicant has spent $2,217,500 on
print publications (e.g., West Coast Merchandiser, The
Business Journal, Phoenix New Times , Arizona Republic , Arts
and Crafts Chronicle, Arizona Woman ) and electronic media
advertising; and that as shown in the Table of Weekly
Advertising Impressions for electronic media buying,
applicant has made 1.6 billion consumer impressions through
television and radio advertising.
Also in the Karber declaration is information that in
August 1993 applicant hired WestGroup Marketing Research to
conduct a random, unaided, consumer telephone survey
wherein respondents were asked to identify all swap meets
for which they had seen ads in the last 30 days, and 53%
specifically recalled seeing the “Indoor SwapMart” ads, the
highest recall among consumers of all swap meets in the
Phoenix area. In a follow-up question, for those that did
not mention “Indoor SwapMart” in response to the previous
question, they were asked if they had heard of “Indoor
Ser. No. 75/138331
8
SwapMart” and 72.1% responded yes. Mr. Karber avers that
this survey shows that applicant’s marketing efforts have
been successful and that the consuming public recognizes
INDOOR SWAPMART as a “single, distinctive source of flea
market services.” Finally, he avers that applicant
diligently polices its mark, having successfully stopped
others in the industry (including a swap meet in Flagstaff,
Arizona) from using “SWAPMART” as part of their names or
marks or in their advertisements.
The Examining Attorney contends that the involved mark
is highly descriptive and thus, applicant’s declaration of
use since 1991 is not sufficient; that some of applicant’s
evidence of unsolicited media coverage is “equivocal”; that
although applicant provided evidence of “substantial
advertising,” there is “no evidence of the geographical
extent of the advertising” (Examining Attorney’s Office
action dated July 23, 1997, p. 2), but rather, the
advertising appears to be limited to the Arizona area 5; and
that applicant’s consumer survey involved a limited
geographical area where the population was “subjected to

5 The fact that much of applicant’s advertising and use is
concentrated in the Arizona area does not, by itself, indicate a
lack of acquired distinctiveness. There is no requirement in
Section 2(f) of the Trademark Act, nor in any judicial precedent
of which the Board is aware, that an applicant must prove
nationwide or state-by-state consumer recognition of a term as
indicating source of the goods or services.
Ser. No. 75/138331
9
saturation advertising.” (Examining Attorney’s brief, p.
11). Further, the Examining Attorney contends that perhaps
consumers recognize not the words INDOOR SWAPMART as a
trademark, but rather the unique design silhouette which
appears on applicant’s specimens of record.
It is clear from the evidence in this case, that the
applied-for mark is highly descriptive, thus, requiring a
greater showing of acquired distinctiveness. While both
applicant’s advertising figures and the number of “consumer
impressions” from radio and television advertising are
impressive, these are not determinative of acquired
distinctiveness. That is, this information may show the
popularity of applicant’s services, but it does not
establish that the term INDOOR SWAPMART functions as a mark
to identify and distinguish the services rendered by
applicant.
We are also not persuaded by applicant’s 1993 survey
because it is not surprising that persons remember
applicant’s advertisements in view of applicant’s massive
advertising in the local area where the telephone survey
was conducted.
We agree with the Examining Attorney that the articles
are “equivocal” and thus do not establish that applicant’s
mark has acquired distinctiveness.
Ser. No. 75/138331
10
In the instant case, the overall evidence is
insufficient to establish a prima facie showing that
applicant’s highly descriptive mark has acquired
distinctiveness. 6 See In re Pennzoil Products Co., 20
USPQ2d 1753 (TTAB 1991); and In re Redken Laboratories,
Inc., 170 USPQ 526 (TTAB 1971).
Decision: The refusal to register is affirmed.
P. T. Hairston
B. A. Chapman
T. E. Holtzman
Administrative Trademark Judges,
Trademark Trial and Appeal Board

6 The Examining Attorney requested in her brief (p. 10) that the
Board take judicial notice of excerpts from a geographical
dictionary (1988) and a world almanac (1993) regarding the
populations of Phoenix, Tucson and Arizona. We have determined
this case without reference to these publications. Hence, the
Examining Attorney’s request regarding judicial notice is moot.