GIE Media, Inc.

Trademark Trial and Appeal Board

May 10, 2013

No. 85253450 (T.T.A.B. May. 10, 2013)

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB

Mailed:
May 10, 2013

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

In re GIE Media, Inc.
_____

Serial No. 85253450
_____

Michael G. Craig of Brouse McDowell for GIE Media, Inc.

Odessa Bibbins, Trademark Examining Attorney, Law Office 105 (Thomas G.
Howell, Managing Attorney).
_____

Before Holtzman, Bergsman and Shaw, Administrative Trademark Judges.

Opinion by Bergsman, Administrative Trademark Judge:
GIE Media, Inc. (“applicant”) filed a use-based application to register on the
Principal Register under the provisions of Section 2(f) of the Trademark Act of 1946
the mark QUALITY ASSURANCE & FOOD SAFETY, in standard character form,
for the following goods and services, as amended:
Printed publications, namely, magazines in the field of
quality assurance and food safety in the food processing
industry directed to quality assurance, pest control,
hygiene, food safety and security, and research and
laboratory personnel working in the food processing
industry, in International Class 16; and
Serial No. 85253450

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Providing online non downloadable publications, namely,
magazines in the field of quality assurance and food
safety in the food processing industry directed to quality
assurance, pest control, hygiene, food safety and security,
and research and laboratory personnel working in the
food processing industry, International Class 42.
Applicant claimed ownership of Registration No. 3459867, on the Supplemental
Register, for the mark QUALITY ASSURANCE & FOOD SAFETY, in standard
character form, for the same goods and services as in its pending application.1 Also,
applicant claimed that pursuant to Trademark Rule 2.41(b), the mark sought to be
registered had acquired distinctiveness by virtue of applicant’s substantially
exclusive and continuous use of the mark for five years.
The Trademark Examining Attorney refused to register applicant’s mark
under Section 2(e)(1) of the Trademark Act of 1946, 15 U.S.C. § 1052(e)(1), on the
ground that applicant’s mark is merely descriptive and has not acquired
distinctiveness. For procedural purposes, a claim of distinctiveness under § 2(f),
whether made in the application as filed or in a subsequent amendment, may be
construed as conceding that the matter to which it pertains is not inherently
distinctive and, thus, not registrable on the Principal Register absent proof of
acquired distinctiveness. For the purposes of establishing that the subject matter is
not inherently distinctive, the Trademark Examining Attorney may rely on this
concession alone. Once an applicant has claimed that matter has acquired
distinctiveness under § 2(f), the issue to be determined is not whether the matter is

1 With respect to the services in Class 42, the registration prefaces the services as “online
publications” in lieu of “providing online non downloadable publications.”
Serial No. 85253450

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inherently distinctive but, rather, whether it has acquired distinctiveness. See, e.g.,
Yamaha Int’l Corp. v. Hoshino Gakki Co. , 840 F.2d 1572, 1577, 6 USPQ2d 1001,
1005 (Fed. Cir. 1988); In re Cabot Corp., 15 USPQ2d 1224, 1229 (TTAB 1990); In re
Prof'l Learning Ctrs., Inc., 230 USPQ 70, 71 (TTAB 1986); In re Chopper Indus., 222
USPQ 258, 259 (TTAB 1984). Accordingly, the only issue before us is whether
applicant’s mark has acquired distinctiveness.
In her June 1, 2011 Office action, the Trademark Examining Attorney
submitted a dictionary definition of the term “quality assurance” from the Merriam-
webster.com website.
Quality Assurance
A program for the systematic monitoring and evaluation
of the various aspects of a project, service, or facility to
ensure that standards of quality are being met.
The Trademark Examining Attorney also submitted a definition of the term
“food safety” from the MedlinePlus website (nlm.nih.gov), “a service of the U.S.
National Library of Medicine.”
Food safety
Food safety refers to the conditions and practices that
preserve the quality of food to prevent contamination and
foodborne illnesses.
Because applicant’s publications are in the field of quality assurance and food
safety, applicant’s mark is highly descriptive and applicant has a heavy burden of
establishing that its mark has acquired distinctiveness. Typically, more evidence is
required where a mark is so highly descriptive that purchasers seeing the matter in
relation to the named goods or services would be less likely to believe that it
Serial No. 85253450

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indicates source in any one party. See, e.g., In re Bongrain Int’l Corp., 894 F.2d
1316, 13 USPQ2d 1727, 1729 (Fed. Cir. 1990); In re Seaman & Assocs., Inc., 1
USPQ2d 1657, 1659 (TTAB 1986); In re Packaging Specialists, Inc., 221 USPQ 917,
919 (TTAB 1984).
Where, as here, the mark is highly descriptive of the goods or services named
in the application, the statement of five years’ use alone is insufficient to establish
acquired distinctiveness. See In re Noon Hour Food Prods., Inc., 88 USPQ2d 1172
(TTAB 2008) (finding, despite applicant’s claim of use in commerce for almost one
hundred years, as well as an “inadvertently cancelled” seventy-year old registration
for the mark BOND-OST for cheese, current evidence clearly showed the mark was
generic for the goods, and assuming arguendo that BOND-OST is not generic, that
applicant had failed to establish acquired distinctiveness of the highly descriptive
mark); In re Crystal Geyser Water Co., 85 USPQ2d 1374 (TTAB 2007) (holding
applicant’s evidence of acquired distinctiveness, including a claim of use since 1990,
sales of more than 7,650,000,000 units of its goods, and extensive display of its
mark CRYSTAL GEYSER ALPINE SPRING WATER on advertising and delivery
trucks and promotional paraphernalia, insufficient to establish that the highly
descriptive phrase ALPINE SPRING WATER had acquired distinctiveness for
applicant’s bottled spring water); In re Kalmbach Publ’g Co., 14 USPQ2d 1490
(TTAB 1989) (holding applicant’s sole evidence of acquired distinctiveness, a claim
of use since 1975, insufficient to establish that the highly descriptive, if not generic,
designation RADIO CONTROL BUYERS GUIDE had become distinctive of
Serial No. 85253450

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applicant’s magazines); In re Gray Inc., 3 USPQ2d 1558, 1559 (TTAB 1987) (“[T]o
support registration of PROTECTIVE EQUIPMENT [for burglar and fire alarms
and burglar and fire alarm surveillance services] on the Principal Register a
showing considerably stronger than a prima facie statement of five years’
substantially exclusive use is required.”); cf. In re Synergistics Research Corp., 218
USPQ 165 (TTAB 1983) (holding applicant’s declaration of five years’ use sufficient
to support registrability under § 2(f) of BALL DARTS for equipment sold as a unit
for playing a target game, in view of lack of evidence that the term is highly
descriptive (e.g., no dictionary evidence of any meaning of BALL DARTS and no
evidence of use of the term by competitors or the public)).
Applicant’s ownership of a registration on the Supplemental Register is not
probative that the mark has acquired distinctiveness. Trademark Rule 2.41(b),
37 C.F.R. § 2.41(b), provides that the Trademark Examining Attorney may accept,
as prima facie evidence of acquired distinctiveness, ownership by the applicant of
one or more prior registrations of the same mark on the Principal Register or under
the Act of 1905. Therefore, claims of acquired distinctiveness under § 2(f) cannot be
based on ownership of registrations on the Supplemental Register. See In re
Canron, Inc., 219 USPQ 820, 822 n.2 (TTAB 1983).
Under Trademark Rule 2.41(a), 37 C.F.R. § 2.41(a), an applicant may submit
affidavits, declarations under 37 C.F.R. § 2.20, depositions, or other appropriate
evidence showing the duration, extent, and nature of the applicant’s use of a mark
in commerce that may lawfully be regulated by Congress, advertising expenditures
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Serial No. 85253450

8

b. Two of the emails reference "Quality Assurance magazine," not
QUALITY ASSURANCE & FOOD SAFETY (Susan Smith,
Senior Vice President of Strategic Communications, National
Confectioners Association, Taran March, Contributing Editor of
Quality Digest);
c. Two emails did not reference any publication (Lee Jones from
The Chef’s Garden and Mike Burness from Chiquita Brands);
and
d. Three emails reference QA Magazine, not QUALITY
ASSURANCE & FOOD SAFETY.
3. “Advertiser Recognition”
Applicant submitted five comments from advertisers who purportedly
“recognize the high reputation and quality publications [applicant] provides under
the trademark QUALITY ASSURANCE & FOOD SAFETY.” However, we do not
find these communications very probative because three of the comments reference
QA magazine and one does not reference any magazine title.
4. “Google Analytics”
According to applicant, “the Google analytics report in Exhibit D shows that
there were 45,961 visits at the website over a one year period. Among them, 35,703
were unique visitors. Fifty-two percent (52%) came through search engines. As
such, given the niche in the industry, [applicant] has a high volume of web traffic
visiting its sight which prominently displays the QUALITY ASSURANCE & FOOD
Serial No. 85253450

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SAFETY trademark.” However, as shown on applicant’s specimen, the abbreviation
QA dominates the mark and QUALITY ASSURANCE & FOOD SAFETY is barely
visible.
5. Customer base
According to applicant, since its inception in April 2004, applicant has
increased its circulation to 18,309 subscribers.
B. July 9, 2012 request for reconsideration.
In its July 9, 2012 request for reconsideration, applicant submitted the
evidence described below to show that QUALITY ASSURANCE & FOOD SAFETY
has acquired distinctiveness.
1. “Survey Evidence”
In February 2012, applicant conducted a survey of 600 randomly selected
subscribers of QUALITY ASSURANCE & FOOD SAFETY magazine. There were
89 responses [a 14.7% response rate]. Applicant reported the following results:
a. 61.6% indicated that QUALITY ASSURANCE & FOOD
SAFETY had the best coverage of food quality and safety;
b. 58.6% indicated that they look to QUALITY ASSURANCE &
FOOD SAFETY for information regarding new products and
services in the industry;
c. 64.8% indicated that if they could only receive one publication,
they would choose QUALITY ASSURANCE & FOOD SAFETY;
and
Serial N

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Serial No. 85253450

11

A similar display is featured on the page identifying the “2012 Staff.” These are the
only two references to QUALITY ASSURANCE & FOOD SAFETY in the media kit.
The first page of the media kit provides the following information:
The QA Media Group is your single source for the
most comprehensive, integrated communications product
portfolio in the food processing industry today.…
(Emphasis in the original).
On the page identifying the staff, the media kit presents the following
information:
Entering our ninth year of serving the food processing
industry, QA magazine has established itself as a “must-
read” publication for sanitarians, quality assurance and
food safety professionals, pest management service
personnel and food safety plant managers working in the
rapidly expanding food processing industry.
Advertisers in QUALITY ASSURANCE & FOOD SAFETY magazine pay
$8,470 for a “spread style marketing piece,” $4,235 for a full page advertisement,
$2,529 for a half page advertisement. Applicant contends that “customers and
advertisers from the food processing industry would not be willing to spend such
amounts on a monthly basis if QUALITY ASSURANCE & FOOD SAFETY were not
a well-recognized mark in the food processing industry.”
3. “Outside of Industry Recognition”
QUALITY ASSURANCE & FOOD SAFETY magazine was recognized in 2012
by ASBPE, the professional organization for full-time and freelance editors and
writers in the business, trade, and specialty press, as a finalist for an Azbee Award
of Excellence in the category of organizational profiles.

Serial No. 85253450

12

C. Analysis.
We do not find applicant’s evidence to be convincing. First, applicant’s use
since 2004, while indicative of its commercial success, is not conclusive or
persuasive considering the nature of the subject matter sought to be registered,
regardless of the subscriber and advertiser statements. In re Ennco Display
Systems Inc., 56 USPQ2d 1279, 1286 (applicant’s use of the product designs ranging
from seven to seventeen years is insufficient to bestow acquired distinctiveness).
See also In re Bongrain International Corp., 894 F.2d 1316, 1317 n.4, 13 USPQ2d
1727, 1728 n.4 (Fed. Cir. 1990); Yamaha Int’l Corp. v. Hoshino Gakki Co. Ltd., 6
USPQ2d at 1005.
Second, in considering the totality of the evidence submitted by applicant,
applicant’s subscribers and website visitors are indicative of commercial success,
but not recognition of QUALITY ASSURANCE & FOOD SAFETY as a trademark.
For example, the manner in which applicant uses the mark QUALITY
ASSURANCE & FOOD SAFETY is subordinate to the more dominant use of QA.
The commercial impression engendered by the display of the mark is that QA is the
name of the magazine and QUALITY ASSURANCE & FOOD SAFETY is the
subject matter. This is corroborated by the customers and advertisers noted above
who identify the magazine as QA.
Moreover, there is no evidence putting the number of applicant’s subscribers
into context to show whether applicant’s subscribers are significant vis-à-vis the
subscribers of competing magazines and websites or other industry specific
Serial No. 85253450

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magazines and websites. Cf. Bose Corp. v. QSC Audio Products, Inc., 293 F.3d
1367, 63 USPQ2d 1303, (Fed. Cir. 2002) (with respect to the fame of a mark, “[r]aw
numbers of product sales and advertising expenses may have sufficed in the past to
prove fame of a mark, but raw numbers alone in today’s world may be misleading.”).
Third, the problem with the form statements by subscribers and advertisers
is not that they are form statements per se. In the statements, the subscribers and
advertisers have not explained their understanding of the definition of a trademark
or how it is that they view QUALITY ASSURANCE & FOOD SAFETY for
publications relating to quality assurance and food safety to be a trademark. Thus,
we are not convinced that applicant first ascertained what the advertisers and
subscribers recognized as a trademark and then prevailed upon them to sign the
statements. In other words, the subscribers and advertisers did not state their own
knowledge; rather, they simply concurred in the conclusion to which they were led
by applicant. See In re Bausch & Lomb Inc., 206 USPQ 534, 538 (TTAB 1979).
Finally, there are numerous problems with applicant’s survey that affect its
probative value. Applicant submitted only selected excerpts from the survey
results. Applicant did not provide any information regarding the purpose of the
survey (“An industry survey was conducted for QUALITY ASSURANCE & FOOD
SAFETY in February 2012”).2 We do not know whether the survey was conducted
in the regular course of applicant’s business or specifically for the purpose of
establishing acquired distinctiveness. If, for example, the survey was conducted

2 July 9, 2012 request for reconsideration.
Serial No. 85253450

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during the regular course of business, then the survey is a business record and has
probative value for what it shows on its face.
If, on the other hand, the purpose of the survey was to establish acquired
distinctiveness, we note that applicant conducted the survey rather than an
independent market research company with experience in the field of consumer
surveys. Accordingly, unbeknownst to applicant there may be biases built into the
instructions and questions that limit the probative value of the survey. In this
regard, the universe of respondents selected for the survey is too narrow because it
is limited to applicant’s subscribers rather than including everyone in the field of
quality assurance and food safety. Thus, the narrow universe skews the results in
favor of finding acquired distinctiveness. As previously noted, there is no evidence
putting the number of applicant’s subscribers into context to show whether
applicant’s subscribers are significant vis-à-vis the subscribers of competing
magazines and website or other industry specific magazines and websites.
In addition, applicant did not present the survey instructions with the
questions the interviewers asked the respondents. To the extent that the survey
results that applicant submitted accurately represent the questions, applicant
identified its magazine as “QA (Quality Assurance & Food Safety).” It is possible
that the interviewer simply identified applicant’s magazine as QA during the
interview. In that situation, the conclusions that applicant draws from the survey
results show recognition of QA as a trademark, not QUALITY ASSURANCE &
FOOD SAFETY.
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The questions in the survey are leading questions in that they ask
respondents to choose one of three magazines - - Food Quality, Food Safety, or “QA
(Quality Assurance & Food Safety).” Moreover, the questions do not measure
acquired distinctiveness. Question 6 asks which of three magazines provides the
best coverage of the food quality and safety industry. Question 8 asks which of
three magazines do you look to regarding new products or services. Question 9 asks
which one of the three magazines would you choose if you could only read one.
These questions do not ask the respondents how they perceive the term QUALITY
ASSURANCE & FOOD SAFETY. A proper question for measuring acquired
distinctiveness is do you associate the term “QUALITY ASSURANCE & FOOD
SAFETY” with one company, more than one company, or no company? An
appropriate follow-up question would be what company or companies do you
associate with “QUALITY ASSURANCE & FOOD SAFETY”?
In view of the foregoing, we find that the evidence is insufficient to show that
the term QUALITY ASSURANCE & FOOD SAFETY has acquired distinctiveness.
Decision: The refusal to register QUALITY ASSURANCE & FOOD
SAFETY under Section 2(e)(1) on the ground that applicant’s evidence is
insufficient to demonstrate acquired distinctiveness under Section 2(f) is affirmed.