Journey Education Marketing, Inc.

Trademark Trial and Appeal Board

Nov 8, 2000

No. 75058829 (T.T.A.B. Nov. 8, 2000)

Paper No. 19
HRW
11/8/00
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Journey Education Marketing, Inc.
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Serial No. 75/058,829
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Dennis T. Griggs of Griggs & Johnston, L.L.P.
for Journey Education Marketing, Inc.
Catherine K. Krebs, Trademark Examining Attorney, Law
Office 108 (David Shallant, Managing Attorney).
_______
Before Cissel, Quinn and Wendel, Administrative Trademark
Judges.
Opinion by Wendel, Administrative Trademark Judge:
Journey Education Marketing, Inc. has filed an
application to register the mark STUDENT SOFTWARE GUIDE for
“distributorships in the field of computer software for
others.”1
Registration has been finally refused on the grounds
that:

1 Serial No. 75/058,829, filed February 16, 1996, claiming a
first use date and first use in commerce date of October 1992.
The application was subsequently amended to one seeking
registration under the provisions of Section 2(f).
THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Ser No. 75/058,829
2
(1) the proposed mark is merely descriptive under
Section 2(e)(1) of the Trademark Act;
(2) the claim of distinctiveness under Section 2(f)
is not supported by the record;
(3) the proposed mark is generic as applied to the
identified services; and
(4) the proposed mark fails to function as a mark
under the provisions of Sections 1, 2 and 45 of
the Trademark Act.
The final refusal of registration based on these grounds
has been appealed and both applicant and the Examining
Attorney have filed briefs. An oral hearing was not
requested.
In all of the outstanding refusals to registration,
the Examining Attorney is relying upon the specimens of
record, particularly the substitute specimens,2 and the
manner in which STUDENT SOFTWARE GUIDE is used thereon.
These specimens consist of catalogs for software bearing
STUDENT SOFTWARE GUIDE as the title on the cover page.
Statements throughout the catalog indicate that the
prospective purchasers of this software are students; in
fact potential purchasers for software at the “student
educational pricing” are limited to college students, high

2 The original specimens were considered unacceptable by the
Examining Attorney, since the words STUDENT SOFTWARE GUIDE only
appeared in the advertising material as a part of the phrase “To
receive a FREE Student Software Guide, call:” and not separately
as a mark.
Ser No. 75/058,829
3
school students (for most of the software) and faculty and
staff. The designation JOURNEY EDUCATION MARKETING appears
frequently as the name of the source from which the
software may be ordered.3
In her refusal under Sections 1, 2 and 45, the
Examining Attorney maintains that the proposed mark does
not function as a service mark, but rather merely names or
serves as a title for a publication which is used in
connection with applicant’s services. She argues that in
the specimens of record the function of identifying the
source of the services is fulfilled by the designation
JOURNEY EDUCATION MARKETING. In her view, STUDENT SOFTWARE
GUIDE, as used by applicant, fails to function as a service
mark because it is merely the name of the software catalog;
it neither distinguishes the services of applicant from
those of others nor indicates the source of applicant’s
services.

3 From these specimens, it appears that the present recitation of
services does not accurately describe applicant’s services.
These services are not “distributorships,” or “distributorship
services,” as that term is commonly understood; applicant appears
to render retail mail order services. Accordingly, if applicant
is successful on an appeal of our decision, the case should be
remanded to the Examining Attorney for amendment of the
recitation of services to a more accurate description of
applicant’s services. For purposes of our present decision, we
have considered applicant’s services as being retail mail order
services in the field of computer software, as demonstrated by
the specimens.
Ser No. 75/058,829
4
Applicant contends that it has demonstrated its intent
to use STUDENT SOFTWARE GUIDE as a service mark by placing
the superscript “TM” adjacent thereto and by submitting a
sworn statement of its adoption of the mark to identify its
services. Moreover, according to applicant, in view of
applicant’s distinctive display of the mark in relatively
large type on the front page of the catalog, purchasers
would recognize STUDENT SOFTWARE GUIDE as an indicator of
origin.
Under Section 45 of the Trademark Act, a “service
mark” is defined as “any word, name, symbol, or device, or
combination thereof (1)used by a person...to identify and
distinguish the services of one person...from the services
of others and to indicate the source of the services, even
if that source is unknown.” Implicit in this definition is
a requirement that there be a direct association between
the mark sought to be registered and the services
identified in the application. Whether a designation has
been used a service mark must be determined on the basis of
the specimens or any other evidence of record. See In re
Moody’s Investors Services Inc., 13 USPQ2d 2043 (TTAB 1989)
and the cases cited therein.
Potential purchasers would simply view STUDENT
SOFTWARE GUIDE as the title of a publication or catalog
Ser No. 75/058,829
5
listing the software which is available to students. There
is no direct link between this title, as used on the front
of the catalog, and the underlying source of the service of
mail order retail sales of the software. This is no
apparent reason for purchasers to view the title of the
catalog as a service mark for applicant’s services. The
mere size of the title is irrelevant. Furthermore, whether
or not applicant intends that the title be viewed as a
service mark does not make it happen.4 The manner in which
potential purchasers encounter STUDENT SOFTWARE GUIDE, as
evidenced by the specimens, is the determinative factor.
See In re Morganroth, 208 USPQ 284 (TTAB 1980). The
specimens simply show this designation used descriptively
in reference to the catalog, not as an indicator of the
source of the services.
We are fully aware that in promoting its retail mail
order service, applicant could be expected to issue a
catalog advertising its goods. The title of the catalog
could well serve as a service mark for the sale of the
goods advertised therein. The problem here, however, is
that no direct association has been made between the title

4 Although applicant may argue that it uses a “TM” designation to
demonstrate its intended use as a mark, the specimens show use of
a ®, which is not only misleading, but improper. See TMEP § 906.
Ser No. 75/058,829
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of the catalog and the source of the software listed
therein. The highly descriptive title of the catalog,
STUDENT SOFTWARE GUIDE, has no function other than that; it
names the publication. Purchasers must look elsewhere to
determine the source of the software listed therein and the
service of selling it at retail by means of mail order. In
fact, the source is specifically indicated as JOURNEY
EDUCATION MARKETING.
Accordingly, we find that the designation STUDENT
SOFTWARE GUIDE fails to function as a service mark for the
services specified in the application. In the interests of
completeness, however, and in the event that our affirmance
of this refusal might be overturned on appeal, we have also
considered the other refusals. In so doing, we operate
under the assumption that STUDENT SOFTWARE GUIDE does
function as a mark for applicant’s services.
Looking to the refusal under Section 2(e)(1), we note,
as pointed out by the Examining Attorney, that applicant
has disclaimed the term SOFTWARE GUIDE, thus acknowledging
the descriptiveness thereof. As for the word STUDENT, the
Examining Attorney relies upon the many references in the
specimens of record to students as the prospective
purchasers. On the basis of these statements, the
Examining Attorney maintains that the term STUDENT merely
Ser No. 75/058,829
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describes the primary intended customer of applicant’s
retail mail order services in the field of computer
software.
Applicant’s principal argument with respect to the
descriptiveness of its mark, as opposed to the issue of
genericness, is that the phrase as a whole does not
immediately describe the specific nature of applicant’s
services.5
A term or phrase is merely descriptive within the
meaning of Section 2(e)(1) if it immediately conveys
information about a characteristic or feature of the goods
or services with which it is being used. In re Abcor
Development Corp., 588 F.2d 811, 200 USPQ 215 (CCPA 1978).
It is not necessary that the term or phrase describe all
the characteristics or features of the goods or services in
order to be merely descriptive; it is sufficient if the
term or phrase describes a significant attribute thereof.
See In re Pennzoil Products Co., 20 USPQ2d 1753 (TTAB
1991). The Board has held a mark merely descriptive if it
describes the type of individuals to whom an appreciable

5 We are puzzled, as was the Examining Attorney, with applicant’s
arguments with respect to registration of the mark on the
Supplemental Register and the underlying question of capability
of functioning as a mark. Applicant amended the application to
one seeking registration on the Principal Register under Section
2(f), not on the Supplemental Register.
Ser No. 75/058,829
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number or all of a party’s goods or services are directed.
See In re Camel Manufacturing Company, Inc., 222 USPQ 1031
(TTAB 1984) and the cases cited therein.
Here the term SOFTWARE GUIDE has been disclaimed as
descriptive of applicant’s services. Moreover, from the
content of the catalog or guide, as noted above, it is
clear that applicant’s services are directed primarily to
students. In fact, purchasers have to certify that they
qualify as students in order to obtain the educational
discounts. The only exception made is for faculty members.
Thus, we find the phrase STUDENT SOFTWARE GUIDE as a whole,
when used in connection with applicant’s services, merely
descriptive because a feature of these services is
providing a guide to students listing the software
applicant sells. There is little left to the potential
purchaser’s imagination; the information is immediately
conveyed that a feature of applicant’s services is the
student software guide.
We turn next to the refusal on the ground of
genericness. A generic term or phrase is by definition
incapable of indicating source, and thus can never attain
trademark status. See In re Merrill Lynch, Pierce, Fenner,
and Smith Inc., 828 F.2d 1567, 4 USPQ2d 1141 (Fed. Cir.
1987). Accordingly, the issue of genericness must be
Ser No. 75/058,829
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determined before any consideration can be given to
applicant’s claim of acquired distinctiveness under Section
2(f).
The test for determining genericness, as set forth in
H. Marvin Ginn Corp. v. International Ass’n of Fire Chiefs,
Inc., 782 F.2d 987, 228 USPQ 528 Fed. Cir. 1986), and
recently re-affirmed in In re American Fertility Society,
188 F.3d 1341, 51 USPQ2d 1832 (Fed. Cir. 1999), involves a
two-step inquiry: 1) what is the genus of goods or services
at issue and 2) whether the term or phrase sought to be
registered is understood by the relevant public primarily
to refer to that genus of goods or services.
Here the genus or category of services at issue is
retail mail order services in the field of computer
software. The question is whether STUDENT SOFTWARE GUIDE
would be understood by the relevant public, namely, the
students and faculty who purchase the software, to refer
primarily to this genus or category of services, in a
generic manner.
The Examining Attorney maintains that the phrase
STUDENT SOFTWARE GUIDE is the generic name for a retail
sales “tool,” namely, a software guide intended for
students, and thus is being used in a generic manner when
Ser No. 75/058,829
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used in connection with applicant’s services. In support
of her refusal to register based on genericness, the
Examining Attorney has made of record several Nexis
excerpts in which the term “software guide” is found in
close proximity to the word “student.” She argues that
these excerpts provide evidence of the use of the term
“software guide” as the generic name of a type of
publication and of the term “student” as the generic name
of the intended user.
The first deficiency in the Examining Attorney’s
refusal is her failure to produce any evidence of use of
the phrase STUDENT SOFTWARE GUIDE in its entirety. The
Court made it clear in its American Fertility decision,
supra, that “definitions and generic uses of the
constituent terms of a mark ... [cannot be cited] in lieu
of conducting an inquiry into the meaning of the disputed
phrase as a whole to hold a mark ... generic.” 51 USPQ2d at
1836. The Court placed the burden on the Office to
establish that the phrase as a whole had no meaning to the
relevant public in addition to that of the terms
individually; to demonstrate that the phrase, and not just
the constituent elements, was generic.
Here, we find no use in any of the Nexis excerpts of
the composite phrase “student software guide.” Although
Ser No. 75/058,829
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there is evidence of the use of the term “software guide,”
the concurrent references in the same excerpts to
“students” are not in direct conjunction therewith. The
requirement of the Court in American Fertility that there
be evidence that the phrase as a whole has been used in a
generic manner has not been met. Cf. In re 3Com Corp., 56
USPQ2d 1060 (TTAB 2000)(numerous Nexis excerpts showing
generic usage of “ATM link” as a whole).
Even more significantly, even if such evidence were of
record, it would not establish that the phrase STUDENT
SOFTWARE GUIDE would be understood by the relevant public
as a generic reference to the genus or category of services
at issue. A generic reference to a particular “tool” used
therewith is not the same as a generic reference to the
services per se. Accordingly, we cannot uphold the refusal
based on genericness.
Thus, we turn to the question of whether applicant has
submitted sufficient evidence to support of its claim of
acquired distinctiveness under Section 2(f). Applicant’s
burden of proof is to demonstrate that its use of the
merely descriptive designation STUDENT SOFTWARE GUIDE has
been such that the designation has acquired distinctiveness
as a mark in commerce.
Ser No. 75/058,829
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Applicant’s original claim of distinctiveness under
Section 2(f) was based solely on use of the mark in
commerce for at least five years. When the Examining
Attorney refused this claim of distinctiveness, in view of
the highly descriptive nature of applicant’s mark,
applicant submitted a supplemental declaration from Michael
S. Fischler, President and CEO of applicant. In his
declaration made in January 1999, Mr. Fischler attests to
use of the mark STUDENT SOFTWARE GUIDE since as early as
October 1992; use of the mark in the advertisement of
applicant’s sale of software in catalogs, magazines, and
television advertising, and at trade shows, promotions at
colleges and on its web site; advertising expenditures
incurred in the marketing of its software products in
connection with the use of its mark ranging from $192,512
in 1992 to $1,440,000 in 1998; gross software sales
advertised and marketed in connection with applicant’s mark
ranging from $962,561 in 1992 to $12,000,000 in 1998; and
fees of approximately $250,000 paid by software companies
in 1998 for advertising space in applicant’s catalog. Mr.
Fischler attached to his declaration samples of promotional
materials showing use of the mark, which for the most part
are advertisements in magazines showing use of applicant’s
Ser No. 75/058,829
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mark in connection with the promotion of its free catalog,
the STUDENT SOFTWARE GUIDE.
The Examining Attorney was not persuaded by this
additional evidence. She argues that evidence that
applicant has made large advertising expenditures or that
others have advertised in applicant’s catalog does not
establish acquired distinctiveness for the phrase being
used by applicant in connection with its catalog. She
insists that applicant’s exhibits show use of STUDENT
SOFTWARE GUIDE simply as the name of the free catalog which
applicant provides in connection with the marketing of its
services and that consumers would so regard the phrase,
rather than as an identification of applicant as the source
of the underlying retail sales services.
As noted above, we agree that the evidence of record
shows consistent use by applicant of the phrase STUDENT
SOFTWARE GUIDE to describe or name its catalog, not to
identify the source of its services. While applicant may
have established that it has expended substantial amounts
in advertising its services and that it has reaped
substantial profits in sales, applicant has failed to
demonstrate that it has promoted, or that consumers have
come to view, STUDENT SOFTWARE GUIDE as a mark for these
services. See In re Pennzoil Products Co., supra.
Ser No. 75/058,829
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Applicant’s advertising merely touts its free catalog,
which is entitled STUDENT SOFTWARE GUIDE. There is no
promotion of the term as an indicator of applicant as the
source of the software listed therein.
We have found the evidence before us insufficient to
establish that the designation would be understood by the
relevant public as a generic name for services of the type
rendered by applicant. Without evidence of specific
promotion and consumer recognition of the designation as a
service mark for applicant’s services, however, acquired
distinctiveness has not been established. See In re Audio
Book Club Inc., 52 USPQ2d 1042 (TTAB 1999); In re Recorded
Books Inc., 42 USPQ2d 1276 (TTAB 1997). Applicant’s
evidence is insufficient to support its claim of
distinctivness under Section 2(f).
Decision: The refusal on the ground that the
designation STUDENT SOFTWARE GUIDE fails to function as a
mark for applicant’s services under the provisions of
Sections 1, 2, and 45 is affirmed. In addition, the
refusal to register on the ground that STUDENT SOFTWARE
GUIDE is merely descriptive when used in connection with
applicant’s services and that the evidence submitted under
Section 2(f) is insufficient to establish acquired
Ser No. 75/058,829
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distinctiveness is also affirmed. The remaining refusal on
the grounds of genericness is reversed.
R. F. Cissel
T. J. Quinn
H. R. Wendel
Administrative Trademark Judges,
Trademark Trial and Appeal Board

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