It's Easy, Inc.

Trademark Trial and Appeal Board

Jun 14, 2021

87782192 (T.T.A.B. Jun. 14, 2021)

Oral Hearing: January 23, 2020 Mailed: June 14, 2021

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re It’s Easy, Inc.
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Serial No. 87782192
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Dorothy R. Whitney of Cowan Liebowitz & Latman PC for It’s Easy, Inc.
Andrew Leaser, Trademark Examining Attorney, Law Office 117,
Hellen M. Bryan-Johnson, Managing Attorney.
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Before Zervas, Wolfson, and Lykos,
Administrative Trademark Judges.

Opinion by Wolfson, Administrative Trademark Judge:
It’s Easy, Inc. (“Applicant”) seeks registration on the Principal Register of the
mark IT’S EASY (in standard characters) for:
Arranging for and facilitating the obtaining and
surrendering of license plates and arranging for and
facilitating the obtaining of motor vehicle, motorcycle and
boat registrations and registration renewals; transfer of
motor vehicle, motorcycle and boat ownership documents
and duplicate title documents; arranging for and
facilitating the obtaining of birth certificates and social
security cards, in International Class 35; and
Arranging for and facilitating the obtaining of travel visas,
passports and travel documents for persons traveling
This Opinion is Not a
Precedent of the TTAB
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abroad; arranging for and facilitating the obtaining of
replacement visas, passports and travel documents that
have been lost, inadvertently destroyed and/or stolen, in
International Class 39.1
The Examining Attorney refused registration under Trademark Act Sections 1,
2, 3, and 45, 15 U.S.C. §§1051-53 and 1127, on the ground that the phrase IT’S EASY
is a commonplace widely used slogan that does not function as a service mark to
indicate the source of Applicant’s services and to identify and distinguish them from
others. Applicant, in traversing the refusal, argued that IT’S EASY had acquired
distinctiveness and that registration was proper under Trademark Act Section 2(f),
15 U.S.C. § 1052(f).
When the refusal was made final, the Examining Attorney explained that
Applicant could not overcome the failure to function refusal by asserting a claim of
acquired distinctiveness. Applicant then appealed and requested reconsideration.
After Applicant’s request was denied, the appeal resumed. Both Applicant and the
Examining Attorney filed briefs and appeared at an oral hearing. Following the oral
hearing, the Board remanded the case to the Examining Attorney for further
examination, resulting in an additional refusal under Section 2(e)(1) of the
Trademark Act, 15 U.S.C. §1052(e)(1), on the ground that IT’S EASY is merely
descriptive of Applicant’s services and that Applicant’s claim of acquired
distinctiveness under Section 2(f) is insufficient. Applicant and the Examining

1 Application Serial No. 87782192 was filed February 2, 2018, under Section 1(a) of the
Trademark Act, 15 U.S.C. § 1051(a), based on Applicant’s alleged use of the mark in
commerce since at least as early as December 1985.
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Attorney filed supplemental briefs addressing the descriptiveness refusal and issue
of acquired distinctiveness.
I. Evidence and Arguments
A. Examining Attorney
The Examining Attorney argues that the term IT’S EASY simply “indicates that
something requires little effort or can be done with ease,” 17 TTABVUE 5, and that
such sentiment is “readily-understood” and merely “informational.” Id.2 The
Examining Attorney further contends that IT’S EASY is widely used in a variety of
situations to convey this message. In the alternative, the Examining Attorney argues
that IT’S EASY is descriptive of a feature or characteristic of Applicant’s services,
and that Applicant has failed to establish that this descriptive designation has
acquired distinctiveness. 36 TTABVUE 3. The Examining Attorney supports his
arguments with definitions of the word “easy”; excerpts from third-party Internet
websites and news articles (showing third-party use of “it’s easy” and expressions
derived therefrom); Applicant’s specimen of use and excerpts from Applicant’s
website.
Examples of dictionary usage include THE AMERICAN HERITAGE DICTIONARY OF
THE ENGLISH LANGUAGE (5th ed. 2016), which defines “easy” as “requiring or

2 All citations in this opinion to the appeal record are to TTABVUE, the docket history system
for the Trademark Trial and Appeal Board. Citations to the prosecution history of the
application are to pages from the Trademark Status & Document Retrieval (“TSDR”)
database of the United States Patent and Trademark Office (“USPTO”).
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exhibiting little effort or endeavor; undemanding.”3 An online usage guide,
“Education First,” lists English idioms and expressions and gives their meaning and
usage; the guide states that “It’s a piece of cake” means “It’s easy” and that the
expression is used by itself.4
Evidence of use by businesses in Applicant’s field or closely related fields of the
same or substantially the same wording as the mark may be probative of consumer
perception. The following are representative excerpts from the Internet materials
submitted by the Examining Attorney showing third-party use of IT’S EASY:
 From Travel.State.Gov:5

 From the United States Postal Service:6

 From Baby Bonanza:7

3 At http://www.yourdictionary.com/easy, attached to May 23, 2018 Office Action, TSDR 2.
4 At https://www.ef.edu/english-resources/english-idioms/, June 12, 2019 Denial of Request
for Reconsideration, TSDR 6.
5 At https://travel.state.gov, attached to May 23, 2018 Office Action, TSDR 3.
6 At https://about.usps.com, attached to May 23, 2018 Office Action, TSDR 4.
7 At http://www.babybonanza.org, December 5, 2018 Office Action, TSDR 7.
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 From HomeTeam Pest Defense:8

In addition, the Examining Attorney submitted excerpts from Applicant ’s
website, https://www.itseasy.com/, wherein Applicant uses “easy” as follows:9
 “Traveling for vacation, tourism or business trips, ItsEasy can
secure Chinese visas quickly and easily!”
 “Brazilian tourist and business visas can be made simple and
easy - get your Brazil visa today!
 “Going the extra mile to make it Easy!”
 “We have been expediting US passports for over 40 years and
make obtaining your new passport, well... Easy.”
B. Applicant
Applicant argues that its proposed mark is not “so ubiquitous that [it] can
effectively be equated with generic terms that are incapable of acting as source
identifiers.” Reply Brief, 18 TTABVUE 7. Applicant contends that a “more probing

8 At https://pestdefense.com, December 5, 2018 Office Action, TSDR 13.
9 June 12, 2019 Denial of Request for Reconsideration, TSDR 133-136.
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analysis of the relevant cases, as well as Applicant’s supporting evidence, shows that
Applicant’s Mark is appropriately classified as a descriptive term that has acquired
the requisite degree of distinctiveness to function as a valid service mark.” Id. at 8.
Applicant supports its argument with copies of its prior, now cancelled,
registrations for the marks IT’S EASY and IT’S EASY and design;10 15 third-party
registrations for the mark IT’S EASY and for similar marks such as IT’S SO EASY,
IT’S THAT EASY, and WE MAKE IT EASY;11 and the Declaration of David Alwadish,
Applicant’s President, in support of Applicant’s claim to acquired distinctiveness
based on 35 years of use of the term IT’S EASY.12
The third-party registrations, based on use and for which specimens of use were
submitted, include Reg. No. 5311332 for IT’S EASY for legal services (registered
October 17, 2017); several registrations for the mark ITS SO EASY, such as Reg. No.
2152739 for ITS SO EASY for retail store services in the field of window coverings

10 Reg. Nos. 3118810 and 3125429, attached to November 14, 2018 Response to Office Action,
TSDR 11-12. The cancelled registrations have no probative value other than as evidence that
they issued. Once a federal registration is cancelled or expires, all presumptions, rights, and
privileges associated with that registration terminate. In re Cordua Rests., Inc., 823 F.3d 594,
118 USPQ2d 1632, 1635 (Fed. Cir. 2016); see also In re Datapipe, Inc., 111 USPQ2d 1330,
1336 n.11 (TTAB 2014) (“We have long held that cancelled or expired registrations are not
evidence of anything except that they issued.”).
11 November 14, 2018 Response to Office Action, TSDR 14-29. The specimens of use from each
file are attached at TSDR 31-44. We accord little weight to the third-party registrations
attached to Applicant’s May 22, 2019 Request for Reconsideration for the mark WE
DELIVER, and for marks containing the word “simple,” such as IT’S SIMPLE and IT’S A
SIMPLE THING. These have little probative value as they project different connotations and
overall commercial impressions than does Applicant’s mark.
12 May 22, 2019, Request for Reconsideration, TSDR 100-105. Mr. Alwadish attests to
continuous use of the word mark from “as early as December 1985,” and continuous use of
the design mark beginning on November 15, 2004, in association with the recited services.
Id. at 100-01.
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(registered April 21, 1998, renewed); Reg. No. 5120764 for WE MAKE IT EASY for
providing an online marketplace and for advertising services (registered January 10,
2017); and Reg. No. 5146696 for for moving company services (registered
February 21, 2017).13
II. Mere Descriptiveness and Acquired Distinctiveness
We begin with the Examining Attorney’s mere descriptiveness refusal and
finding that Applicant’s showing of acquired distinctiveness is insufficient.
A mark is “merely descriptive” within the meaning of Trademark Act Section
2(e)(1) “if it immediately conveys information concerning a feature, quality, or
characteristic of the goods or services for which registration is sought .” In re N.C.
Lottery, 866 F.3d 1363, 123 USPQ2d 1707, 1709 (Fed. Cir. 2017) (citing In re Bayer
A.G., 488 F.3d 960, 82 USPQ2d 1828, 1831 (Fed. Cir. 2007)); Yarnell Ice Cream, 2019
USPQ2d 265039 at *5. A merely descriptive mark can be registered on the Principal
Register only upon a showing that it has acquired distinctiveness. Trademark Act
Section 2(f), 15 U.S.C. § 1052(f) (“nothing herein shall prevent the registration of a
mark used by the applicant which has become distinctive of the applicant ’s goods in
commerce”).
By seeking registration of its proposed mark IT’S EASY pursuant to Section 2(f),
Applicant has conceded that this wording is at least merely descriptive of its services.
See Cold War Museum, Inc. v. Cold War Air Museum, Inc., 586 F.3d 1352, 92 USPQ2d

13 November 14, 2018 Response to Office Action, TSDR 15 (Reg. No. 5146696), TSDR 16 (Reg.
No. 5311332), TSDR 17 (Reg. No. 2152739) and TSDR 23 (Reg. No. 5120764).
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1626, 1629 (Fed. Cir. 2009) (“an applicant’s reliance on Section 2(f) during prosecution
presumes that the mark is descriptive”); In re Hikari Sales USA, Inc., 2019 USPQ2d
111514 (TTAB 2019); cf. Alcatraz Media, Inc. v. Chesapeake Marine Tours, Inc., 107
USPQ2d 1750, 1753 (TTAB 2013) (registration of respondent’s involved registration
under Section 2(f) constitutes a concession that its mark is not inherently distinctive).
In addition, the evidence supports a finding that the proposed mark is merely
descriptive, and Applicant does not dispute this finding but even states, as noted
above, that “Applicant’s Mark is appropriately classified as a descriptive term.” 18
TTABVUE 8. Thus, to be registrable on the Principal Register, IT’S EASY must have
acquired distinctiveness for the recited services.
Applicant bears the burden of proving that IT’S EASY has acquired
distinctiveness. In re La. Fish Fry Prods., Ltd., 797 F.3d 1332, 1335, 116 USPQ2d
1262, 1264 (Fed. Cir. 2015) (citing In re Steelbuilding.com, 415 F.3d 1293, 1297, 75
USPQ2d 1420, 1422 (Fed. Cir. 2005)). “To show that a mark has acquired
distinctiveness, an applicant must demonstrate that the relevant public understands
the primary significance of the mark as identifying the source of a … service rather
than the … service itself.” Steelbuilding.com, 75 USPQ2d at 1422.
An applicant’s evidentiary burden of showing acquired distinctiveness increases
with the level of descriptiveness of the mark sought to be registered; a more
descriptive term requires more evidence. In re Nat’l Ass’n of Veterinary Technicians
in Am., 2019 USPQ2d 269108 (TTAB 2019) (citing Royal Crown Co. v. Coca-Cola Co.,
892 F.3d 1358, 1365, 127 USPQ2d 1041, 1045 (Fed. Cir. 2018) (citing
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Steelbuilding.com, 75 USPQ2d at 1424)). In other words, “the greater the degree of
descriptiveness the term has, the heavier the burden to prove it has attained
secondary meaning.” In re Bongrain Int’l (Am.) Corp., 894 F.2d 1316, 13 USPQ2d
1727 (Fed. Cir. 1990) (quoting Yamaha Int’l Corp. v. Hoshino Gakki Co. Ltd., 840 F.2d
1572, 6 USPQ2d 1001, 1008 (Fed. Cir. 1988)).
Applicant and the Examining Attorney are at odds regarding the mark’s degree
of descriptiveness and the concomitant level of proof required to show acquired
distinctiveness. Applicant contends that its mark is merely descriptive, not highly
descriptive: “Applicant is not disputing that Applicant ’s Mark is descriptive; it is
merely stating that on the spectrum going from generic to descriptive to highly
suggestive, Applicant’s Mark is much closer to the highly suggestive side and thus
should not be treated as a highly descriptive mark bordering on generic.” 34
TTABVUE 7. The Examining Attorney argues that the phrase IT’S EASY “is not just
descriptive but highly descriptive of a feature or characteristic of Applicant ’s
services.” Examining Attorney’s Brief, 36 TTABVUE 9.
A. Degree of Descriptiveness
Based on the entirety of the record, we find that the phrase “IT’S EASY” is not
just descriptive but highly descriptive as a laudatory term that clearly informs the
relevant public that Applicant touts its services as being without difficulty or effort.
It is well established that laudatory terms, those that attribute quality or excellence
to goods or services, generally are deemed to be merely descriptive under Trademark
Act Section 2(e)(1). See, e.g., In re Nett Designs Inc., 236 F.3d 1339, 57 USPQ2d 1564,
1566 (Fed. Cir. 2001) (THE ULTIMATE BIKE RACK is “a laudatory descriptive
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phrase that touts the superiority of Nett Designs’ bike racks”); In re The Place Inc.,
76 USPQ2d 1467, 1468 (TTAB 2005) (THE GREATEST BAR found merely
descriptive as a laudatory term for bar and restaurant services).
B. Acquired Distinctiveness
To establish that a term has acquired distinctiveness, “an applicant must show
that in the minds of the public, the primary significance of a product feature or term
is to identify the source of the product rather than the product itself.” See In re La.
Fish Fry Prods., Ltd., 797 F.3d 1332 , 116 USPQ2d 1262, 1265 (Fed. Cir. 2015)
(quoting Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356 , 101 USPQ2d
1713, 1729 (Fed. Cir. 2012)). Depending on the nature of the mark and the facts in
the record, an applicant may meet this burden by offering three basic types of
evidence:
1. A claim of ownership of one or more active prior
registrations on the Principal Register of the same mark
for goods or services that are sufficiently similar to those
identified in the pending application. Trademark Rule
2.41(a)(1) , 37 C.F.R. § 2.41(a)(1).
2. A verified statement that the mark has become
distinctive of the applicant’s goods or services by reason of
the applicant’s substantially exclusive and continuous use
of the mark in commerce for five years before the date on
which the claim of distinctiveness is made. Trademark
Rule 2.41(a)(2) , 37 C.F.R. § 2.41(a)(2).
3. Other appropriate evidence of acquired distinctiveness.
Trademark Rule 2.41(a)(3) , 27 C.F.R. § 2.41(a)(3).
An applicant may submit one or any combination of these types of evidence.
In any given case, the examining attorney may determine that a claim of
ownership of a prior registration(s), or a claim of five years’ substantially exclusive
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and continuous use in commerce, is insufficient to establish a prima facie case of
acquired distinctiveness, in which case, “other appropriate evidence” of acquired
distinctiveness shall be considered. “Other appropriate evidence” includes “direct
and/or circumstantial evidence.’” Kohler Co. v. Honda Giken Kogyo K.K., 125 USPQ2d
1468, 1506 (TTAB 2017) (quoting Stuart Spector Designs Ltd. v. Fender Musical
Instruments Corp., 94 USPQ2d 1549, 1554 (TTAB 2009)); see also Schlafly v. Saint
Louis Brewery, LLC, 909 F.3d 420, 128 USPQ2d 1739, 1743 (Fed. Cir. 2018) (“The
Board and courts have recognized that both direct and circumstantial evidence may
show secondary meaning”) (citation omitted).
“‘Direct evidence includes actual testimony, declarations or surveys of consumers
as to their state of mind. Circumstantial evidence is evidence from which consumer
association may be inferred, such as years of use, extensive amounts of sales and
advertising, and any similar evidence showing wide exposure of the mark to
consumers.’” Kohler, 125 USPQ2d at 1506 (quoting Stuart Spector Designs, 94
USPQ2d at 1554). When the evidence comprises indirect evidence such as the
applicant’s length and manner of use, it is usually expected that such indirect
evidence will be “supplemented by evidence of the effectiveness of such use to cause
the purchasing public to identify the mark with the source of the product.” In re
Owens-Corning Fiberglas Corp., 774 F.2d 1116, 227 USPQ 417, 422 (Fed. Cir. 1985).
Cf. Converse, Inc. v. ITC, 909 F.3d 1110, 128 USPQ2d 1538, 1546 (Fed. Cir. 2018); In
re Steelbuilding.com, 415 F.3d 1293, 75 USPQ2d 1420, 1424 (Fed. Cir. 2005) (“In
determining whether secondary meaning has been acquired, the Board may examine
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copying, advertising expenditures, sales success, length and exclusivity of use,
unsolicited media coverage, and consumer studies (linking the name to a source).”).14
Because we have found that the term IT’S EASY is highly descriptive of
Applicant’s services, “Applicant’s burden of establishing acquired distinctiveness
under Section 2(f) is commensurately high.” In re Virtual Indep. Paralegals, LLC,
2019 USPQ2d 111512 at *11 (TTAB 2019); see also Steelbuilding.com, 75 USPQ2d
at 1424. The key determination remains whether the purchasing public has come to
identify the mark with the source of the goods or services. Our ultimate Section 2(f)
analysis of acquired distinctiveness and determination in this case is based on all of
the evidence considered as a whole.
In support of its claim to acquired distinctiveness, Applicant relies primarily on
the Declaration of David Alwadish, Applicant’s President and founder. May 22, 2019
Request for Reconsideration, TSDR 100-05.
Mr. Alwadish testifies that:
 Applicant began using the word mark IT’S EASY in December
1985 and the design mark on November 15, 2004, in
connection with “DMV Services” and “Travel Services.” DMV
Services involve “arranging and facilitating the obtaining and
surrendering of license plates, vehicle registrations and
obtaining of birth and death certificates.” Travel Services

14 Considerations that may be assessed in determining whether a mark has acquired
distinctiveness can be described by the following six factors: (1) association of the [mark] with
a particular source by actual purchasers (typically measured by customer surveys); (2)
length, degree, and exclusivity of use; (3) amount and manner of advertising; (4) amount of
sales and number of customers; (5) intentional copying; and (6) unsolicited media coverage of
the product embodying the mark. In re SnoWizard, Inc., 129 USPQ2d 1001, 1005 (TTAB
2018) (quoting Converse, Inc., 128 USPQ2d at 1546). However, the Section 2(f) considerations
enunciated by the Federal Circuit in Converse do not alter our analysis in any significant
way. The first of the six factors enunciated by the Court inquires into direct evidence, while
the remaining factors describe typical circumstantial evidence.
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involve “arranging and facilitating the obtaining of travel
visas, passports and other travel documents for persons
traveling abroad.”
 Since then, Applicant has processed over 2 million passport
and visa applications and “a similar number” of motor vehicle
registration requests.
 Applicant uses the mark as part of its corporate name (“It’s
Easy, Inc.”), as its domain name (www.itseasy.com) and in its
telephone number (1-866-ITS-EASY).
 Applicant’s gross revenues from Travel Services rendered
under the IT’S EASY mark from 2011 through 2017 averaged
over ten million ($10,000,000) dollars. During the same period,
the yearly gross revenues received from DMV Services
averaged over thirty-eight million ($38,000,000) dollars, and
Applicant spent an average of $720,000 per year promoting its
Travel Services. Applicant promotes its services online, in
social media (Google, Facebook, Instagram, Twitter), and
through radio and print advertising.
 Applicant’s website received over 600,000 hits each year for
the three years from 2015 through 2018. In 2017, the website
received over 1.2 million hits.
 In 2016 and 2017, Applicant received the Excellence Award
from the NY Times Travel Show for its Travel Services. In
2015, Applicant received the Travel Weekly Magellan Award
and in 2010, the NBTA Award, each time for its Travel
Services.
 Applicant has received unsolicited media coverage. In 2017,
Applicant’s “IT’S EASY app” was featured in the magazine
Travel & Leisure. In 2016, the app was featured online by the
NY Times and Oyster’s websites.15

15 Applicant’s submission with its October 29, 2020 Response to Office Action of pages from
its and five of its alleged principal competitor’s Facebook and Instagram websites cannot be
used to prove the ranking of these companies by number of followers because they were not
authenticated by witness testimony. While Internet materials are admissible in ex parte
proceedings to demonstrate how a term is used and the likely impression it may make upon
viewers, such materials are not admissible for the truth of the matters asserted therein, i.e.,
how many “followers” there are for each website. See In re I-Coat Co., LLC, 126 USPQ2d
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Considering all of the Section 2(f) evidence as a whole, we find that Applicant has
failed to meet its burden of establishing that the proposed mark has acquired
distinctiveness as a source identifier for Applicant ’s services. Applicant has not
presented any direct evidence of acquired distinctiveness such as a consumer survey
or customer declarations,16 nor is there evidence of any intentional copying.
Applicant’s prior registrations are now cancelled. Applicant’s circumstantial evidence
of length, degree, and exclusivity of use; amount and manner of advertising; amount
of sales and number of customers; and unsolicited media coverage of the services
embodying the term IT’S EASY is insufficient to show that relevant consumers
recognize IT’S EASY as a service mark. The fact that Applicant “has used its mark
for a long time does not necessarily establish that the mark has acquired
distinctiveness.” In re Tires, Tires, Tires Inc., 94 USPQ2d 1153, 1158 (TTAB 2009)
(20+ years of use insufficient); see Flowers Inds. Inc., v. Interstate Brands Corp., 5

1730, 1735 (TTAB 2018) (accepting internet printouts only for what they show “on their
face”); see also In re Wal-Mart Stores, Inc., 129 USPQ2d 1148, 1156 (TTAB 2019) (information
from the Internet, websites and blog posts is admissible “as evidence of information available
to the consuming public and of the way in which a term is being used or would be understood
by the relevant public”); In re Mr. Recipe, LLC, 118 USPQ2d 1084, 1087 n.4 (TTAB 2016)
(stories are probative of the perceptions of the authors and of the content that may have been
received by the readers); TRADEMARK TRIAL AND APPEAL BOARD MANUAL OF PROCEDURE
(TBMP) § 1208.03 (2020) (“Because website contents and search engine results are accessible
by the consuming public . . ., they constitute evidence of potential public exposure. . . .
although their probative value will vary depending on the facts of the particular case.”). Here,
the evidence of record shows only that the consuming public has been exposed to various
websites that display a numerical figure representing the number of alleged followers of each
site, but the evidence does not prove the accuracy of the number of followers ascribed to each
site.
16 The public postings on Applicant’s social media accounts, and comments from visitors to
Applicant’s website, are not the same as verified declarations and thus, contrary to
Applicant’s assertion, are not considered direct evidence of acquired distinctiveness.
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USPQ2d 1580, 1588-89 (TTAB 1987) (51 years of use insufficient); Ayoub, Inc. v. ACS
Ayoub Carpet Serv., 118 USPQ2d 1392, 1402 (TTAB 2016) (35 years use insufficient).
Applicant provides no industry context for its sales figures ($10M for Travel
Services and $38M for DMV Services over a 7-year period), such as Applicant’s
“relative market share, or its sales position vis-à-vis its competitors, thus diminishing
the probative value of these raw numbers.” MK Diamond Prods., 2020 USPQ2d 10882
at *23 (TTAB 2020) (citing Target Brands Inc. v. Hughes, 85 USPQ2d 1676, 1681
(TTAB 2007) (holding that it is difficult “to accurately gauge the level of [sales]
success . . . in the absence of additional information such as applicant’s market share
or how [applicant’s] product ranks in terms of sales in the trade”)). Even assuming
that Applicant’s sales activity is substantial in the industry, “[i]t is well established
that compelling sales and advertising figures do not always amount to a finding of
acquired distinctiveness.” Kohler, 125 USPQ2d at 1516 (quoting Stuart Spector
Designs, 94 USPQ2d at 1572). Applicant’s expenditures on promotional activities
appears modest, and only those directed to its Travel Services were reported.
While Applicant has garnered some unsolicited media attention and accrued
awards in its field, the evidence pertaining to these is minimal. Accordingly, it is of
limited persuasive value. In toto, the evidence fails to meet the high standard for
showing that the term IT’S EASY has become distinctive of its services and that it
serves to identify these services in commerce. Given the highly descriptive nature of
the designation, we would need substantially more evidence (especially in the form of
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direct evidence from customers) than what Applicant has submitted in order to find
that the designation has become distinctive of Applicant’s services.
We realize that Applicant will find itself having owned a registration for its
proposed mark for nearly 15 years, and now its application for the same proposed
mark, for virtually the same services, is being refused registration. It
is unfortunate that Applicant’s prior registration was not maintained, and that in the
period since March 3, 2017 when the registration was cancelled, circumstances have
changed. However, such developments do not justify the registration of an
unregistrable mark. As the Federal Circuit has taught, each case must be decided on
its own record and prior decisions are not binding on the Board. In re Cordua Rests.
LP, 110 USPQ2d 1227, 1233 (TTAB 2014), aff’d 823 F.3d 594, 118 USPQ2d 1632,
1635 (Fed. Cir. 2016) (“The PTO is required to examine all trademark applications
for compliance with each and every eligibility requirement, including non-
genericness, even if the PTO earlier mistakenly registered a similar or identical mark
suffering the same defect.”); see also In re Thunderbird Prods. Corp., 406 F.2d 1389,
160 USPQ 730, 732 (CCPA 1969) (“Trademark rights are not static. A word or group
of words not descriptive today may, through usage, be descriptive tomorrow.”).
In this case, the record presented to us fails to persuade us that Applicant’s
proposed mark has acquired distinctiveness. Considering the record in its entirety,
we find that Applicant has not met its burden to establish acquired distinctiveness
under Section 2(f) of the Trademark Act, 15 U.S.C. § 1052(f), as to the highly
descriptive wording IT’S EASY.
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Decision: The refusal to register Applicant’s mark based on mere descriptiveness
under Section 2(e)(1) and lack of acquired distinctiveness under Section 2(f) is
affirmed.
In view of this decision, we need not reach the refusal on the ground that IT’S
EASY fails to function as a mark under Trademark Act Sections 1, 2, 3 and 45. See
In re Guaranteed Rate, Inc., 2020 USPQ2d 10869 at *10 (TTAB 2020) (“In view of our
affirmance of the refusals to register under Trademark Act Section 2(e)(1), 15 U.S.C.
§ 1052(e)(1), and lack of acquired distinctiveness, we do not reach the Examining
Attorney’s alternative grounds for refusing to register Applicant ’s marks as failing to
function as marks (because they are merely informational) under Trademark Act
Sections 1, 2, 3, and 45, 15 U.S.C. §§ 1051-1053, 1127.”).