Highway Transport Logistics, Inc.

Trademark Trial and Appeal Board

Jun 4, 2020

87780575 (T.T.A.B. Jun. 4, 2020)

This Opinion is Not a
Precedent of the TTAB

Mailed: June 4, 2020

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

In re Highway Transport Logistics, Inc.
_____

Serial No. 87780575
_____

Dorian B. Kennedy of Baker Donelson Bearman Caldwell & Berkowitz, PC,
for Highway Transport Logistics, Inc.
David I, Trademark Examining Attorney, Law Office 114,
Laurie Kaufman, Managing Attorney.
_____

Before Zervas, Ritchie, and Wolfson,
Administrative Trademark Judges.

Opinion by Ritchie, Administrative Trademark Judge:
Highway Transport Logistics, Inc. (“Applicant”) filed an application to register the
mark HIGHWAY TRANSPORT (in standard characters) for “Freight transportation
by trucks; supply chain logistics and reverse logistics services, namely, storage,
transportation and delivery of goods for others by air, rail, ship or truck;
transportation of goods; transportation of liquids by trucks,” in International Class
Serial No. 87780575
- 2 -
39,1 on the Principal Register. The application was filed with a claim of acquired
distinctiveness under Section 2(f) of the Trademark Act, 15 U.S.C. § 1052(f). As
amended, the application contains a disclaimer of the term “TRANSPORT” apart
from the mark as shown.
The Trademark Examining Attorney refused registration under Sections 1, 2, 3,
and 45 of the Trademark Act; 15 U.S.C. §§ 1051, 1052, 1053, and 1127, on the ground
that the proposed mark is generic as applied to the identified services. The Examining
Attorney also refused registration under Section 2(e)(1), 15 U.S.C. § 1052(e)(1), on the
basis that if the mark is not generic, Applicant’s claim of acquired distinctiveness
based on at least five years’ use and additional evidence is insufficient due to the
highly descriptive nature of the mark.
When the refusals were made final, Applicant filed this appeal. We affirm the
refusal to register on the ground that Applicant’s proposed mark is generic as applied
to its identified services. For this reason, we need not consider the refusal under
Section 2(e)(1) and the insufficiency of the Section 2(f) evidence.
Evidentiary Objection
The Examining Attorney objects to evidence that Applicant attached with its brief.
In accordance with Board rules, “The record in the application should be complete
prior to the filing of an appeal.” Rule 2.142(d); 37 C.F.R. § 2.142(d). Accordingly, the
objection is sustained, and we do not consider any of the attachments as evidence in

1 Serial No. 87780575 was filed under Section 1(a) of the Trademark Act, 15 U.S.C. § 1051(a),
claiming first of use of the mark anywhere and in commerce in July 1964.
Serial No. 87780575
- 3 -
our decision. We note that the attachments nevertheless appear to be copies of
evidence Applicant otherwise submitted into the record during prosecution. In this
regard, we have considered the evidence and note that it is neither necessary nor
helpful to resubmit record evidence as exhibits to a brief. See Life Zone, Inc. v.
Middleman Group, Inc., 87 USPQ2d 1953, 1957 (TTAB 2008).
Genericness
A. Legal Standard for Genericness
As dictated by our case law and precedent, “A generic mark, being the ‘ultimate
in descriptiveness,’ cannot acquire distinctiveness, and is not entitled to registration
on either the Principal or Supplemental Register under any circumstances.” In re La.
Fish Fry Prods., Ltd., 797 F.3d 1332, 116 USPQ2d 1262, 1264 (Fed. Cir. 2015)
(quoting H. Marvin Ginn Corp. v. Int’l Ass’n of Fire Chiefs, Inc., 782 F.2d 987, 228
USPQ 528, 530 (Fed. Cir. 1986)). A designation is generic if it refers to the class or
category of goods or services on or in connection with which it is used. In re Dial-A-
Mattress Operating Corp., 240 F.3d 1341, 57 USPQ2d 1807 (Fed. Cir. 2001) (citing
Marvin Ginn, 228 USPQ at 528). “[A] term [also] is generic if the relevant public
understands the term to refer to part of the claimed genus of goods or services, even
if the public does not understand the term to refer to the broad genus as a whole.” In
re Cordua Rests., Inc., 823 F.3d 594, 118 USPQ2d 1632, 1638 (Fed. Cir. 2016) (“[T]he
term ‘pizzeria’ would be generic for restaurant services, even though the public
understands the term to refer to a particular sub-group or type of restaurant rather
than to all restaurants”); see also In re 1800Mattress.com IP LLC, 586 F.3d 1359, 92
Serial No. 87780575
- 4 -
USPQ2d 1682, 1685 (Fed. Cir. 2009) (“The test is not only whether the relevant public
would itself use the term to describe the genus, but also whether the relevant public
would understand the term to be generic.”).
The test for determining whether a proposed mark is generic is its primary
significance to the relevant public. Magic Wand Inc. v. RDB Inc., 940 F.2d 638, 19
USPQ2d 1551, 1553-54 (Fed. Cir. 1991); Marvin Ginn, 228 USPQ at 530. Making this
determination “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?” Id.
Addressing the first part of the genericness inquiry, we find in this case that the
genus of services is commensurate with Applicant’s identification of services in the
application, i.e., “freight transportation by trucks; supply chain logistics and reverse
logistics services, namely, storage, transportation and delivery of goods for others by
air, rail, ship or truck; transportation of goods; transportation of liquids by trucks.”
See Magic Wand, 19 USPQ2d at 1552 (“[A] proper genericness inquiry focuses on the
description of services set forth in the [application or] certificate of registration.”).
We next proceed to the second part of the Marvin Ginn inquiry: whether the term
“highway transport” is understood by the relevant public primarily to refer to that
genus of services. In this regard, as noted above, “a term can be generic for a genus
of goods or services” if the relevant public “understands the term to refer to a key
aspect of that genus.” See Cordua 118 USPQ2d at 1637; see also Royal Crown Co. v.
Coca-Cola Co., 892 F.3d 1358, 127 USPQ2d 1041, 1047 (Fed Cir 2018). We consider
Serial No. 87780575
- 5 -
“[e]vidence of the public’s understanding of the term [which] may be obtained from
any competent source, such as purchaser testimony, consumer surveys, listings in
dictionaries, trade journals, newspapers, and other publications.” In re Merrill Lynch,
Pierce, Fenner & Smith Inc., 828 F.2d 1567, 4 USPQ2d 1141, 1143 (Fed. Cir. 1987).
In this regard, competitor use may be evidence of genericness. See BellSouth Corp. v.
DataNational Corp., 60 F.3d 1565, 35 USPQ2d 1554, 1558 (Fed. Cir. 1995) (“The
cases have recognized that competitor use is evidence of genericness.”) (citing
Remington Prods., Inc. v. N. Am. Philips Corp., 892 F.2d 1576, 13 USPQ2d 1444, 1446
(Fed. Cir. 1990)); Cont’l Airlines, Inc. v. United Air Lines, Inc., 53 USPQ2d 1385, 1395
(TTAB 1999) (use of term “e-ticket” by media and competitors indicates term is
generic for electronic tickets); Philip Morris Inc. v. Brown & Williamson Tobacco
Corp., 230 USPQ 172, 176 (1986) (finding evidence that competitors have used a
particular word as the name of their goods is persuasive evidence of genericness).
Applicant submits, in its brief, that “[t]he end purchasers of Applicant’s services
are primarily people seeking a trucking company, and especially a trucking company
specializing in the transportation of liquids.”2 We agree that the relevant public for
purposes of our genericness inquiry are consumers of the identified services, namely,
consumers of “freight transportation by trucks; supply chain logistics and reverse
logistics services, namely, storage, transportation and delivery of goods for others by
air, rail, ship or truck; transportation of goods; transportation of liquids by trucks.”
Since the recitation of services broadly describes freight transportation, including but

2 4 TTABVUE 6.
Serial No. 87780575
- 6 -
not limited to, transportation of liquids, the relevant consumers include consumers
of all such services, including individuals and business of any sort and size.
B. Evaluating the Evidence
To determine the public perception of the term “highway transport” as it applies
to the identified services, we must analyze the meaning of the applied-for mark “as a
whole.” See In re Cordua Rests., Inc., 118 USPQ2d at 1638. In doing so, our case law
and precedent dictates that it may be appropriate “as a first step” to analyze the
constituent terms in the applied-for mark. See 1800Mattress.com IP, 92 USPQ2d at
1684 (explaining that the Board appropriately considered the separate meanings of
“mattress” and “.com” when determining that the combination “mattress.com” was
generic); In re Hotels.com LP, 573 F.3d 1300, 1304, 91 USPQ2d 1532, 1535 (Fed. Cir.
2009) (affirming the Board’s finding that “the composite term HOTELS.COM
communicates no more than the common meanings of the individual components”).
To support the refusal on genericness, the Examining Attorney submitted
definitions of the individual terms “highway” and “transport,” along with Internet
evidence of third-party references to the term “highway transport” in articles and
books. Applicant, in response, submitted a declaration from its CFO and President,
Marshall Franklin, with attached news articles and advertisements; affidavits from
“vendors”; and Google search results for the term “highway transport.” Applicant also
submitted evidence that the term “highway transport,” as a whole, does not appear
in a dictionary.
Serial No. 87780575
- 7 -
We discuss and analyze the evidence of the public’s understanding of “highway
transport.”
a) Dictionary definitions
The Examining Attorney submitted the following dictionary definitions:3
Highway – 1. A wide road built for fast travel between towns and cities;
2. A road or street.

Transport: 1. To move people or things from one place to another,
usually in a vehicle.

As noted, Applicant, in response, submitted evidence that there is no dictionary
definition of the term “highway transport,” as a whole.4
b) Internet evidence of third-party references to “highway
transport”
The Examining Attorney submitted Internet evidence of third-party references to
the term “highway transport,” as a whole, in various articles and books, including the
following:
Forbes: The Four Biggest Freight Transportation Trends to Watch For
in 2018:
. . . The likely outcome of increased truck rates will be the transition
from highway transport to rail freight. Intermodal or rail is typically
less expensive than truck due to the nature of the mode, and we are
already seeing shippers switch to intermodal to circumvent the capacity
and rate issues of the highway.
Forbes.com; Attached to January 8, 2019 Office Action, at 2-4.

3 Both definitions are from MacMillan Dictionary, attached to May 17, 2018 Office Action at
2, 5. Macmillandictionary.com.
4 Page submitted from print edition of Random House Dictionary, attached to July 2, 2019
Response to Office Action, at 12.
Serial No. 87780575
- 8 -
Merchandise Warehouse: The Three Biggest Trends in Freight
Transportation for 2018: . . . The recent shortage in truck drivers, which
raised truck transport rates, has many companies moving from
highway transport to intermodal or rail transport. They are generally
less expensive than trucks simply because of the nature of the mode of
transport.
http://mwindy.com; Attached to January 8, 2019 Office Action, at 7-8.

EDF Environmental Defense Fund: How electric trucks could disrupt
highway transport and save businesses billions: . . . Trucks move
about 70 percent of freight in the United States today, and while only
accounting for 10 percent of highway miles traveled, they are a major
source of harmful nitrogen oxide and particulate matter – especially in
cities and towns along congested truck routes.
Edf.org; Attached to January 8, 2019 Office Action, at 39-41.

Taylor & Francis Online Journal Ergonomics: Predictors of whole-body
vibration exposure experienced by highway transport operators; 20
Feb 2007: Whole-body-vibration (WBV) exposure levels experienced by
transport truck operators were investigated to determine whether
operator’s exposure exceeded the 1997 International Standards
Organization (ISO) 2631-1 WBV guidelines.
Tandfonline.com; Attached to August 1, 2019 Final Office Action, at 29.

Professional Short Period Advanced Courses [in Highway Engineering]
By University of Michigan Dept. of Civil Engineering; Division of
Highway Engineering and Highway Transport: The Davis Library of
Highway Engineering and Highway Transport, named after its founder,
Charles Henry Davis, President of the National Highways Association,
is the most complete collection of literature on highway engineering and
highway transport in the world.
https://books.google.com; Attached to August 1, 2019 Final Office
Action, at 12.

Power Wagon, Volumes 30-32; February 1923:5 . . . It is reported that 90
per cent of all highway transport companies doing business with New
York City as a center fail within 3 years after entering this field. . . . The
Highway Education Board has a big task before it in bringing to the
attention of groups of business men or capitalists, operators and
prospective operators of highway transport, the necessity of having

5 Considering that the publication date of this entry is almost a century ago, we accord it less
probative value as to the relevant consumer perceptions. We do nevertheless consider it in
the context of the other evidence of record.
Serial No. 87780575
- 9 -
connected with their operating organization men who are thoroughly
trained in the methods of highway transport, the inter-relationship of
highway, railway and waterway transport, cost and record systems and
the principles of highway transport management.
https://books.google.com; Attached to August 1, 2019 Final Office
Action, at 48.

c) Applicant’s declaration with attached exhibits
In response to the argument and evidence from the Examining Attorney,
Applicant submitted a declaration from its CFO and President, Marshall Franklin,
with attached news articles and advertisements; affidavits from “vendors”; and
Google search results for the term “highway transport.” Mr. Franklin’s declaration
makes reference to Applicant’s revenues and marketing expenditures, and states
that:
As a result of Applicant’s promotion and sales efforts, Applicant’s
trucking services under the mark HIGHWAY TRANSPORT of the
present application has come to be recognized as a signature, symbol
and trademark of Applicant.6

The declaration further references attached “affidavits from entities utilizing
trucking services,” along with news articles that mention Applicant. Although the
declaration and evidence were apparently submitted in support of Applicant’s claim
of acquired distinctiveness under Section 2(f) of the Trademark Act, we consider the
declaration and evidence in our genericness inquiry, to the extent they demonstrate
whether the term “highway transport” is understood by the relevant public primarily
to refer to “freight transportation by trucks; supply chain logistics and reverse

6 Paragraph 7, attached to November 19, 2018 Response to Office Action, at 6.
Serial No. 87780575
- 10 -
logistics services, namely, storage, transportation and delivery of goods for others by
air, rail, ship or truck; transportation of goods; transportation of liquids by trucks.”
Applicant also submitted a list of search results from Google, but did not attach
printouts of the results.7
Analysis of the relevant purchasing public’s understanding of the meaning of
“highway transport”
A generic term names a good or service. See Marvin Ginn, 228 USPQ at 530 (“The
critical issue in genericness cases is whether members of the relevant public
primarily use or understand the term sought to be protected to refer to the genus of
goods or services in question.”); see also 2 J. Thomas McCarthy, MCCARTHY ON
TRADEMARKS AND UNFAIR COMPETITION § 12:20 (5th ed.). We must consider the
question of whether “the primary significance of the term in the minds of the
consuming public is not the product but the producer.” Id. at 299. As the Federal
Circuit has further explained:
Generic terms, by definition incapable of indicating source, are the
antithesis of trademarks, and can never attain trademark status. The
reason is plain: To allow trademark protection for generic terms, i.e.,
names which describe the genus of goods being sold, even when these
have become identified with a first user, would grant the owner of the
mark a monopoly, since a competitor could not describe his goods as
what they are.

In re Pennington Seed Inc., 466 F.3d 1053, 80 USPQ2d 1758, 1762 (Fed. Cir. 2006)
(affirming Board ruling that applicant cannot trademark varietal name for plant seed
even if it created genus) (quoting In re Merrill Lynch, 4 USPQ2d at 1142). In this

7 Attached to July 2, 2019 Response to Office Action, at 8-11.
Serial No. 87780575
- 11 -
regard, the Court of Customs and Patent Appeals, citing the Kellogg Supreme Court
decision, noted that generic marks, even those well known to the public, cannot be
registered. In re The Deister Concentrator Co., Inc, 289 F2d 496, 129 USPQ 314, 322
(CCPA 1961) (“The true basis of such holdings is not that they cannot or do not
indicate source to the purchasing public but that there is an overriding public policy
of preventing their monopolization.”)
The CCPA has further explained that even a significant investment in the
development of a mark cannot result in trademark rights where the proposed mark
is itself generic:
While it is always distressing to contemplate a situation in which money
has been invested in a promotion in the mistaken belief that trademark
rights of value are being created, merchants act at their peril in
attempting, by advertising, to convert common descriptive names, which
belong to the public, to their own exclusive use. Even though they
succeed in the creation of de facto secondary meaning, due to lack of
competition or other happenstance, the law respecting registration will
not give it any effect.

Weiss Noodle Co. v. Golden Cracknel and Specialty Co., 290 F.2d 845, 129 USPQ 411,
414 (CCPA 1961). We thus consider whether the term “highway transport” is generic
for “freight transportation by trucks; supply chain logistics and reverse logistics
services, namely, storage, transportation and delivery of goods for others by air, rail,
ship or truck; transportation of goods; transportation of liquids by trucks.” The
Examining Attorney has the burden of proving genericness by clear evidence. See La.
Fish Fry Prods., 116 USPQ2d at 1265 (citations omitted).
Serial No. 87780575
- 12 -
We find availing the dictionary definitions submitted by the Examining Attorney,
with “highway” defined as “a wide road built for fast travel between towns and cities;”
or simply “a road or street,” and “transport” defined as “to move people or things from
one place to another, usually in a vehicle.” Although Applicant argues that there is
no definition for the term “highway transport” as a whole, it is clear that the terms
may be understood together in their ordinary meaning to refer to services, such as
those identified by Applicant, of “transport” by “highway.”
Numerous media articles and book authors elaborate on this characterization.
Applicant acknowledges that the articles submitted by the Examining Attorney use
the term “highway transport” in reference to “a generic manner of physically moving
goods, i.e., the goods are moved over land rather than by air or sea.”8 Applicant
argues, however, that the references in these articles do not relate to “a specific
service or relate in any way to a truck line or its logistics or delivery services.”9 First,
we note that Applicant’s identification of services includes a general reference to
“transportation of goods” without limitation as to the means of transportation by
truck or otherwise. Thus the “generic” reference that Applicant concedes in the
articles does correspond with Applicant’s identification of services. Furthermore, we
note that indeed the articles make reference to “highway transport” in specific regard
to transportation by truck, including, as set forth in Applicant’s identification of
services, “freight transportation by trucks; supply chain logistics and reverse logistics

8 4 TTABVUE 4.
9 Id.
Serial No. 87780575
- 13 -
services, namely, storage, transportation and delivery of goods for others by air, rail,
ship or truck; transportation of goods; transportation of liquids by trucks.” Therefore,
we find clear evidence that the relevant public would understand the term “highway
transport” to refer to a key aspect of the genus of services, which is set forth in
Applicant’s identification of services to include transportation by truck.
This conclusion is not refuted by the evidence submitted by Applicant. The
declaration from Mr. Franklin discusses Applicant’s commercial success with its
services. However, the declaration does not have sufficient information to indicate
the understanding of the relevant public with regard to the term “highway transport.”
Similarly, the media articles attached to the declaration refer principally to the term
“highway transport” not as a mark for Applicant’s identified transportation services,
but rather to Applicant as a business entity operating under the trade name
“Highway Transport Logistics, Inc.”10 The affidavits, which appear to have been
created as form documents, and in some cases actually included just names
handwritten into the template, are of limited probative value because they do not
convey the understanding of the relevant public, but rather of a handful of people
affiliated with Applicant’s business. See In re Pacer Tech., 338 F.3d 1348, 67 USPQ2d
1629, 1633 (Fed. Cir. 2003) (finding submitted affidavits “all signed by individuals in
the artificial nail business, at most purport to represent the views of a small segment
of the relevant market.”); see also Mag Instrument, Inc. v. Brinkman Corp., 96
USPQ2d 1701, 1723 (TTAB 2010) (finding submitted declarations do not represent

10 See articles attached to November 19, 2018 Response to Office Action, at 10, 14, 26.
Serial No. 87780575
- 14 -
views of “end consumer.”). see also In re Candy Bouquet Int'l Inc., 73 USPQ2d 1883,
1890 (TTAB 2004) (finding vendor declarations insufficient as evidence of acquired
distinctiveness because, inter alia, “none of the letters attests to the perception of
CANDY BOUQUET by the general public, the ultimate consumers of applicant’s
services.”).
The Google search results submitted by Applicant are not very probative since
they are truncated and do not provide us with sufficient information upon which to
make a clear finding. See In re Bayer Aktiengesellschaft, 488 F.2d 960, 82 USPQ2d
1828, 1833 (Fed. Cir. 2007) (“Search engine results – which provide little context to
discern how a term is actually used on the web page that can be accessed through the
search link – may be insufficient to determine the nature of the use of a term or the
relevance of the search results to registration considerations.”); See also Alcatraz
Media Inc. v. Chesapeake Marine Tours Inc., 107 USPQ2d 1750, 1759 (TTAB 2013)
(finding results from search engine introduced by testimony admissible but of limited
probative value because they lacked sufficient context), aff’d, 565 F. App’x 900 (Fed.
Cir. 2014) (mem.). To the extent we can glean information from the submitted Google
search results, they primarily refer to websites intended for employees and
prospective employees of Applicant, namely truck drivers, and not to consumers of
Applicant’s identified services.
In short, while Applicant’s declaration, attached web evidence, and Google search
results may show use of “Highway Transport” as a trade name, they do not provide
information about whether the relevant public understands “highway transport” to
Serial No. 87780575
- 15 -
refer to “freight transportation by trucks; supply chain logistics and reverse logistics
services, namely, storage, transportation and delivery of goods for others by air, rail,
ship or truck; transportation of goods; transportation of liquids by trucks.” See Pacer
Tech., 67 USPQ2d at 1633; Mag Instrument, 96 USPQ2d at 1723.
Evaluating the totality of the record, we find that the Examining Attorney has
proven by clear evidence that the term “highway transport,” as a whole, refers to a
key aspect of the genus “freight transportation by trucks; supply chain logistics and
reverse logistics services, namely, storage, transportation and delivery of goods for
others by air, rail, ship or truck; transportation of goods; transportation of liquids by
trucks,” including the transportation of goods on the highway, especially by truck.
See Cordua Rests., Inc., 118 USPQ2d at 1638
Although Applicant may have created “de facto secondary meaning” by potentially
being a commercially successful user of the term, such use has not prevented the
relevant public from viewing “HIGHWAY TRANSPORT” as “primarily us[ing] or
understand[ing] the term sought to be protected to refer to the genus of goods or
services in question.” Marvin Ginn 228 USPQ at 530. Overall, the record supports a
finding that the primary significance of the term in the minds of the consuming public
is to identify a service rather than to identify a single source thereof, and that indeed
“highway transport” services derive from more than one source. See Kellogg, 39 USPQ
at 299; In re Merrill Lynch, 4 USPQ2d at 1142; Weiss Noodle, 129 USPQ at 414.
Although Applicant argues that “there are many words or phrases that describe
Serial No. 87780575
- 16 -
Applicant’s services,”11 the availability of other generic terms or characterizations
does not affect our inquiry into the relevant public’s understanding of the particular
term at issue in our genericness inquiry. See Frito-Lay N. Am., Inc. v. Princeton
Vanguard, LLC, 124 USPQ2d 1184, 1201 (TTAB 2017) (“The question Plaintiff has
raised is whether the [proposed mark] is another generic name for the product in
question.”); see also McCarthy § 12:9 (“There is usually no one, single and exclusive
generic name for a product. Any product may have many generic designations. Any
one of those is incapable of trademark significance.”)
The genericness refusal is affirmed. Because the term “HIGHWAY TRANSPORT”
is generic when used in connection with the identified services, it is not registrable
on the Principal Register, including under the provisions of Section 2(f). See In re
Northland Aluminum Prods., 777 F.2d 1556, 227 USPQ 961, 963 (Fed. Cir. 1985); In
re Hikari Sales USA, Inc., 2019 USPQ2d 111514, 13 (TTAB 2019).
Decision: The refusal on the ground of genericness is affirmed.

11 4 TTABVUE 4.