Kelly Coyne, Erik Knutzen, and Process Media, Inc.v.Dervaes Institute

Trademark Trial and Appeal Board

Mar 22, 2017

No. 92053837 (T.T.A.B. Mar. 22, 2017)

Baxley Mailed: March 22, 2017

Cancellation No. 92053837
Kelly Coyne, Erik Knutzen, and
Process Media, Inc.

v.
Dervaes Institute

Before Zervas, Wellington, and Masiello,
Administrative Trademark Judges.

By the Board:

On April 4, 2011, Petitioners filed a petition to cancel Respondent’s
registrations (1) on the Supplemental Register for the wording URBAN
HOMESTEADING, 1 and (2) on the Principal Register for the wording URBAN
HOMESTEAD,2 both for nearly identical “[e]ducational services,”

1 Registration No. 3633366, issued June 2, 2009, Section 8 affidavit accepted. The
complete recitation of services of this registration is as follows: “Educational services,
namely, conducting informal programs in the fields of sustainable living, organic foods
and gardening, the environment, and conservation, using on-line activities and
interactive exhibits; entertainment services, namely, providing a web site featuring
photographic, audio and video featuring sustainable living, organic foods and
gardening, the environment, and conservation; on-line journals, namely, blogs
featuring sustainable living, organic foods and gardening, the environment and
conservation.” This registration was cancelled on January 5, 2017, in accordance with
a court determination, as discussed later in this order.

2 Registration No. 3855377, issued on October 5, 2010, Section 8 affidavit accepted.
The registration includes a claim of acquired distinctiveness under Trademark Act
Section 2(f), 15 U.S.C. § 1052(f). The complete recitation of services of this registration
is as follows: ““Educational services, namely, conducting informal programs in the
UNITED STATES PATENT AND TRADEMARK OFFICE
Trademark Trial and Appeal Board
P.O. Box 1451
Alexandria, VA 22313-1451
General Contact Number: 571-272-8500

This Opinion is Not a
Precedent of the Trademark
Trial and Appeal Board.

Cancellation No. 92053837

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“entertainment services,” and “on-line journals” in International Class 41. In
the petition to cancel, Petitioners contend that the terms URBAN
HOMESTEAD and URBAN HOMESTEADING are merely descriptive and
generic and are used as such by Respondent on its website. Accordingly,
Petitioners seek cancellation of Respondent’s registrations on the grounds
that: (1) the term URBAN HOMESTEAD is merely descriptive and has not
acquired distinctiveness; (2) the mark URBAN HOMESTEAD is generic; (3)
Respondent committed fraud in obtaining its registration on the Principal
Register for the URBAN HOMESTEAD mark in the declaration under
Trademark Act Section 2(f), 15 U.S.C. § 1052(f), during ex parte prosecution of
the application for Registration No. 3855377; (4) the URBAN
HOMESTEADING mark is incapable of distinguishing Respondent’s services
because it “is and has been for decades used as a common term for the
[identified] services” in Registration No. 3633366; and (5) the URBAN
HOMESTEADING mark was not in lawful use in commerce prior to the filing
date of the application for Registration No. 3633366. 1 TTABVUE. Respondent,
in its answer, denied the salient allegations of the petition to cancel and set

fields of sustainable living, organic foods and gardening, homesteading, the
environment, and conservation, using on-line activities and interactive exhibits;
entertainment services, namely, providing a web site featuring photographs and audio
and video recordings featuring instruction and current events reporting on
sustainable living, organic foods and gardening, the environment, and conservation;
on-line journals, namely, blogs featuring the subjects of sustainable living, organic
foods and gardening, the environment, and conservation”.

Cancellation No. 92053837

3
forth additional arguments concerning its intended defense herein.3 5
TTABVUE.
Relevant procedural history
Because of the lengthy history of this proceeding, much of which bears on
the resolution of the pending motions, we first provide a history of the
proceeding and related Cancellation No. 92053896. On July 21, 2014,
Petitioners filed a motion for summary judgment on the ground that the terms
URBAN HOMESTEAD and URBAN HOMESTEADING are generic for the
services recited in each of Respondent’s involved registrations.4 81-85
TTABVUE. After full briefing of that motion, the Board, in a December 23,
2014 order (97 TTABVUE), noted that Respondent, in its response to the
motion for summary judgment, referred to its having “successfully defend[ed]”

3 In a June 9, 2011 order, this proceeding was consolidated with Cancellation No.
92053896, styled Denver Urban Homesteading, LLC v. Dervaes Inst., wherein Denver
Urban Homesteading, LLC (“Denver”) sought cancellation of Registration No.
3633366 on the Supplemental Register. 9 TTABVUE.
On October 6 and 9, 2012, respectively, Denver and Petitioners filed separate motions
for summary judgment in these consolidated proceedings. Cancellation No. 92053896,
10 TTABVUE; 31-38 and 44 TTABVUE. In a February 19, 2013 order (52 TTABVUE),
the Board declined to consider the separate motions for summary judgment, but
indicated that Denver and Petitioners could file a single renewed motion for summary
judgment. On March 13, 2013, Denver filed a request for reconsideration of the
February 19, 2013 order (54 TTABVUE), which was denied in an August 12, 2013
order (61 TTABVUE).
In a March 31, 2014 order (77 TTABVUE), the Board denied Denver’s request (filed
January 6, 2014, 72 TTABVUE) for an immediate hearing on the merits in
Cancellation No. 92053896 under Trademark Act Section 24, 15 U.S.C. § 1092, divided
the consolidated proceedings, suspended Cancellation No. 92053896 pending
dispostion of this proceeding, and resumed the above-captioned proceeding.

4 Petitioners filed the renewed motion for summary judgment between the due date
for its pretrial disclosures and the date on which its testimony period was to commence
under the operative schedule at the time of such filing.
Cancellation No. 92053837

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a civil action, namely, Case No. 1:13-cv-00917-REB-KMT, styled Denver Urban
Homesteading, LLC v. Dervaes Inst., in the United States District Court for the
District of Colorado (“the Colorado case”) (92 TTABVUE 7), deferred
consideration of the renewed motion for summary judgment, and requested
copies of the pleadings and any decisions regarding the alleged genericness of
the involved marks in that case. On January 20, 2015, Respondent filed such
copies. 98 TTABVUE.
In the complaint in the Colorado case (98 TTABVUE 14-36), filed April 10,
2013, Denver alleged, among other things, that: (1) because the mark URBAN
HOMESTEADING is generic and “not capable of distinguishing” Respondent’s
services, Respondent’s Registration No. 3633366 on the Supplemental Register
for that mark should be cancelled; (2) Respondent’s Registration No. 3633366
was obtained through fraud and therefore should be cancelled; (3) the URBAN
HOMSTEADING mark was never in lawful use in commerce; (4) Respondent
is liable to Denver for damages for injuries resulting from Respondent’s fraud;
and (5) because Respondent has no exclusive right to use the term URBAN
HOMESTEADING, Denver is not infringing on Respondent’s trademark
rights. The record indicates that, in a March 28, 2014 decision, the Colorado
case was dismissed, in relevant part, for lack of personal jurisdiction over the
defendants. 98 TTABVUE 13, 205-214.
In an April 9, 2015 order (100 TTABVUE), the Board, having been made
aware that, on December 1, 2014, Denver commenced Case No. 2:2014-cv-
Cancellation No. 92053837

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09216, styled Denver Urban Homesteading, LLC v. Dervaes Inst., in the United
States District Court for the Central District of California (“the California
case”), again deferred consideration of the renewed motion for summary
judgment, and requested copies of the pleadings in the California case. On May
7, 2015 (101 TTABVUE 10-30), Respondent filed the requested copies. In the
California case, Denver pleaded essentially the same claims as in the Colorado
case. In response to Respondent’s filing (102 TTABVUE), Petitioners requested
that the Board decline to suspend this proceeding and instead rule on its
pending motion for summary judgment.
On July 15, 2015, the district court in the California case issued an order
to show cause why that case should not be suspended pending final
determination of Cancellation Nos. 92053837 and 92053896. On July 20, 2015,
Respondent filed, among other things, a copy of (1) the district court’s order to
show cause (103 TTABVUE). The district court discharged the order to show
cause in a September 18, 2015 decision. After Denver, on October 2, 2015, filed
a motion for summary judgment in the California case on the grounds of
genericness and fraud, the Board in an October 19, 2015 order, suspended
proceedings herein pending a decision on the motion for summary judgment in
the California case (104 TTABVUE).
On November 25, 2015, Respondent filed a copy of a November 5, 2015
decision in the California case wherein the District Court granted partial
summary judgment on the ground that the term URBAN HOMESTEADING
Cancellation No. 92053837

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is generic for the recited services, but denied the motion for summary judgment
“in all other respects” (105 TTABVUE 6-12). On December 7, 2015, Respondent
filed copies of, among other things, the following documents from the California
case: (1) a December 3, 2015 order in which the California case was dismissed
with prejudice (107 TTABVUE 5), (2) the parties’ stipulation (filed December
2, 2015 in the California case) for voluntary dismissal (107 TTABVUE 14), and
(3) a stipulation (filed December 2, 2015 in the California case) for dismissal
with prejudice and mutual general release.
On December 31, 2015, Respondent filed a motion for dismissal of the
above-captioned proceeding in view of the dismissal with prejudice of the
California case. In response thereto, Petitioners ask that the District Court’s
entry of summary judgment on the claim that the term URBAN
HOMESTEADING is generic be given preclusive effect.
In related Cancellation No. 92053896, Denver, on March 3, 2016, filed a
motion for entry of judgment on its genericness claim based on the November
5, 2015 order granting summary judgment on the genericness claim in the
California case. In a July 28, 2016 order, the Board granted that motion,
determining that the District Court’s entry of summary judgment on the claim
that the term URBAN HOMESTEADING is generic “survived, and was not
superseded, by” the dismissal of the California case.5 Cancellation No.

5 The Board noted that, on February 1, 2016, the District Court issued a Form AO 120
“Report on the Filing or Determination of an Action Regarding a Patent or
Trademark,” by which it notified the USPTO that by “[o]rder dated November 5, 2015
(Dkt. No. 77) cancelling trademark ‘urban homesteading’” the court had ordered the
Cancellation No. 92053837

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92053896, 34 TTABVUE 10. Registration No. 3633366 was cancelled on
January 5, 2017.
Respondent’s motion to dismiss denied
Regarding Respondent’s motion to dismiss based on the dismissal of the
California case after the entry of partial summary judgment on the genericness
claim with regard to the mark URBAN HOMESTEADING and Respondent’s
Registration No. 3633366 therefor, that case was limited to the mark URBAN
HOMESTEADING and Registration No. 3633366. Respondent’s involved
Registration No. 3855377 for the mark URBAN HOMESTEAD was not at issue
in either the California case or Cancellation No. 92053896. Further, in view of
the Board’s July 28, 2016 decision in Cancellation No. 92053896, the Board
finds that dismissal of the above-captioned proceeding based on the dismissal
of the California case is unwarranted.6 Accordingly, Respondent’s motion to
dismiss is denied.

cancellation of Respondent’s Registration No. 3633366. Based thereon, the Board
concluded that “the actions and statements of the district court following dismissal of
the action clearly indicate that its determination on summary judgment survived
dismissal. Indeed, by issuing the Form AO 120, the district court acted to effectuate
the cancellation of the registration.” Cancellation No. 92053896, 34 TTABVUE 8. The
Board further noted that “the [United States] Court of Appeals for the Ninth Circuit
has stated that ‘district courts have been reversed for refusing to order the
cancellation of registrations for claimed marks found to be incapable of serving as
valid marks.’” Id. at 9 n.8, quoting Gracie v. Gracie, 217 F.3d 1060, 1065 (9th Cir.
2000).

6 Time to appeal that decision to the United States Court of Appeals for the Federal
Circuit or to commence a civil action in a United States district court expired with no
appeal having been filed and no civil action having been commenced. See Trademark
Act Section 21, 15 U.S.C. § 1071; Trademark Rule 2.145.

Cancellation No. 92053837

8
Preclusive effect of the California case
The entry of judgment in Cancellation No. 92053896 and the subsequent
cancellation of Registration No. 3633366 does not dictate that judgment
automatically be entered in this case. Under the Board’s general practice,
Petitioners would be allowed to decide whether they wish to go forward and
obtain a judgment herein with regard to their claims against Registration No,
3633366 or have the claims dismissed as moot. However, Petitioners, in
response to Respondent’s motion to dismiss, asked that the District Court’s
determination that the term URBAN HOMESTEADING is generic for the
services recited in Registration No. 3633366 be given preclusive effect. See
B&B Hardware, Inc. v. Hargis Industries, Inc., 135 S.Ct 1293, 113 USPQ2d
2045, 2053 (2015) (“When a district court, as part of its judgment, decides an
issue that overlaps with part of the TTAB's analysis, the TTAB gives preclusive
effect to the court's judgment.”). Therefore, we presume that Petitioners do not
wish to have the genericness claim against the mark URBAN HOMESTEAD
and the accompanying registration for that mark dismissed as moot and will
determine whether application of the doctrines of claim preclusion (also known
as res judicata) or issue preclusion (also known as collateral estoppel) are
warranted herein with regard to the genericness claim against that mark and
Registration No. 3633366 for that mark.7

7 Respondent’s involved Registration No. 3855377 for the mark URBAN
HOMESTEAD was not at issue in the California case. Accordingly, the California case
has no preclusive effect with regard to that registration.

Cancellation No. 92053837

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The doctrine of claim preclusion protects against relitigation of a previously
adjudicated claim between the same parties or their privies. Under that
doctrine, “a judgment on the merits in a prior suit bars a second suit involving
the same parties or their privies based on the same cause of action.” Parklane
Hosiery Company, Inc. v. Shore., 439 U.S. 322, 326 n.5 (1979). Neither
Petitioners nor any of their privies were parties to the California case.
Accordingly, the doctrine of claim preclusion is inapplicable in this case.
Turning to whether the doctrine of issue preclusion (also known as
collateral estoppel) is applicable with regard to the genericness of the mark
URBAN HOMESTEADING in connection with the identified services in
involved Registration No. 3633366 based on the California case, such doctrine
can bar relitigation of the same issue in a second action. See Mayer/Berkshire
Corp. v. Berkshire Fashions Inc., 424 F.3d 1229, 76 USPQ2d 1310, 1312 (Fed.
Cir. 2005). The doctrine of issue preclusion is applicable where: (1) there is an
identity of an issue in a prior proceeding, (2) the identical issue was actually
litigated, (3) the determination of the issue was necessary to the judgment in
the prior proceeding, and (4) the party defending against preclusion had a full
and fair opportunity to litigate the issue in the prior proceeding. See Jet Inc. v.
Sewage Aeration Sys., 223 F.3d 1360, 55 USPQ2d 1854, 1859 (Fed. Cir. 2000).
There is an identity of issue between the California case and the above-
captioned proceeding. That is, both cases involve the issue of whether the term
URBAN HOMESTEADING is generic for the services recited in involved
Cancellation No. 92053837

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Registration No. 3633366. That genericness issue was actually litigated in the
briefing of, and decision on, the motion for summary judgment, and the District
Court’s decision on that issue was “adequately deliberated and firm.” Dana v.
E.S. Originals, Inc., 342 F.3d 1320, 68 USPQ2d 1138, 1140 (Fed. Cir. 2003).
The determination of the issue of genericness was necessary to the November
5, 2015 decision in which the District Court granted summary judgment on the
genericness claim. Respondent had a full and fair opportunity to litigate the
issue of genericness in opposing the motion for summary judgment in the
California case. The court set forth its findings of fact and conclusions of law
in fully reasoned opinions. Those orders were not preliminary in nature, but
made clear that they fully and finally resolved the matters addressed. The
court in the California case clearly considered the issue of genericness to be
conclusively decided and complete, with the remaining claims left open. See id.
Based thereon, we find that the doctrine of issue preclusion applies with regard
to the genericness claim against the term URBAN HOMESTEADING for the
identified services in Registration No. 3633366. Because the remaining claims
in the California case were later dismissed by stipulation of the parties without
having been actually litigated, the doctrine of issue preclusion is inapplicable
thereto. Petitioners’ request that the District Court’s decision in the California
case on the motion for summary judgment on the genericness claim is therefore
granted, and we hereby enter judgment on Petitioners’ genericness claim with
Cancellation No. 92053837

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regard to the term URBAN HOMESTEADING as used in connection with the
services recited in Registration No. 3633366.
In view of such entry, we decline to consider the remaining claims regarding
Registration No. 3633366. Multisorb Tech., Inc. v. Pactiv Corp., 109 USPQ2d
1170, 1171 (TTAB 2013); TBMP § 102.01. We will consider Petitioners’
summary judgment motion with regard only to the alleged genericness of the
mark URBAN HOMESTEAD as used in connection with the services recited
in Registration No. 3855377.
Motion for summary judgment
The Board notes initially that all of the excerpts of the discovery depositions
of Jules Dervaes, Justin Dervaes, Anais Dervaes, and Jordanne Dervaes
submitted by Petitioners were filed under seal and have been designated as
confidential.8 Because the records of Board proceedings are intended to be
public, parties must limit their designation of information as confidential to
that information which is genuinely confidential, such as customer names and
sales and advertising figures.9 See Trademark Rule 2.27(d). The Board must

8 Respondent included as exhibits to the declaration of Jules Dervaes six DVDs of
online and television media coverage of Respondent’s activities, some in foreign
languages. The Board accepts exhibits on DVD when recorded sound and video files
cannot be adequately transcribed and submitted as exhibits through ESTTA or
regular mail. See Hunter Indus., Inc. v. Toro Co., 110 USPQ2d 1651, 1654 n.5 (TTAB
2014). However, Board proceedings are conducted in English. See Productos Lacteos
Tocumbo S.A. de C.V. v. Paleteria La Michoacana Inc., 98 USPQ2d 1921, 1928 (TTAB
2011). Accordingly, we have not considered media coverage that is not in English and
is not accompanied by an English translation. See id.

9 Excessive designation of information as confidential complicates the record, and the
information at issue is frequently improperly designated as confidential. See General
Mills Inc. v. Fage Dairy Processing Indus. SA, 100 USPQ2d 1584, 1591 n.4 (TTAB
Cancellation No. 92053837

12
discuss the record, unless there is an overriding need for confidentiality, so
that the parties and a reviewing court will know the basis of the Board's
decision. Therefore, in rendering this decision, we will not be bound by
Petitioners’ designations and, in this opinion, we will treat only testimony and
evidence that is clearly of a private nature or commercially sensitive as
confidential. See Couch/Braunsdorf Affinity, Inc. v. 12 Interactive, LLC, 110
USPQ2d 1458, 1460-61 (TTAB 2014).
On July 29, 2014, Petitioners filed a supplement to the motion for summary
judgment, wherein they submitted additional evidence from the New York
Times that was published after the filing of the motion. Because that
supplement is in contravention of Trademark Rule 2.127(a), which limits a
movant to a brief and a reply brief in support of a motion, it has received no
further consideration.
Summary judgment is an appropriate method of disposing of cases in which
there are no genuine issues of material fact in dispute, thus leaving the case to
be resolved as a matter of law. See Fed. R. Civ. P. 56(c). The party moving for
summary judgment has the initial burden of demonstrating that there is no
genuine dispute as to any material fact remaining for trial and that it is
entitled to judgment as a matter of law. See Celotex Corp. v. Catrett, 477 U.S.
317 (1987); Sweats Fashions Inc. v. Pannill Knitting Co. Inc., 833 F.2d 1560, 4

2011), judgment set aside on other grounds, 110 USPQ2d 1679 (TTAB 2014) (non-
precedential).

Cancellation No. 92053837

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USPQ2d 1793 (Fed. Cir. 1987). The nonmoving party must be given the benefit
of all reasonable doubt as to whether genuine disputes of material fact exist,
and the evidentiary record on summary judgment, and all inferences to be
drawn from the undisputed facts, must be viewed in the light most favorable
to the nonmoving party. See Opryland USA, Inc. v. Great Am. Music Show,
Inc., 970 F.2d 847, 23 USPQ2d 1471 (Fed. Cir. 1992).
When the moving party's motion is supported by evidence sufficient to
indicate that there is no genuine issue of material fact, and that the moving
party is entitled to judgment, the burden shifts to the nonmoving party to
demonstrate the existence of specific genuinely-disputed facts that must be
resolved at trial. The nonmoving party may not rest on the mere allegations of
its pleadings and assertions of counsel, but must designate specific portions of
the record or produce additional evidence showing the existence of a genuine
issue of material fact for trial. In general, to establish the existence of disputed
facts requiring trial, the nonmoving party “must point to an evidentiary
conflict created on the record at least by a counterstatement of facts set forth
in detail in an affidavit by a knowledgeable affiant.” Octocom Sys. Inc. v.
Houston Computer Servs. Inc., 918 F.2d 937, 941, 16 USPQ2d 1783, 1786 (Fed.
Cir. 1990).
To prevail in this proceeding, Petitioners must establish not only a valid
ground for denying the registration sought, but must also establish that there
is no genuine issue of material fact as to their standing. See, e.g., Lipton Indus.,
Cancellation No. 92053837

14
Inc. v. Ralston Purina Co., 670 F.2d 1024, 213 USPQ 185 (CCPA 1982). As
evidence in support of their standing, Petitioners submitted an advertisement
for Coyne’s and Knutzen’s book The Urban Homestead, which indicates that it
was published by Process Media (84 TTABVUE 538); a February 14, 2011 e-
mail from Jules Dervaes of Respondent to “Process Media/The Urban
Homestead,” wherein he instructs Petitioners not to use the term “urban
homestead” except in reference to Respondent’s products or services (84
TTABVUE 540-41); and Adam Parfrey of Process Media’s February 16, 2011
e-mail response thereto (84 TTABVUE 539).10 In addition, Petitioners have
submitted a series of news articles concerning the parties’ dispute (84
TTABVUE 178-292 and 296-342). Based on Petitioners’ evidence of Coyne’s
and Knutzen’s authorship, and Process Media’s publication, of The Urban
Homestead and the e-mail exchange between Parfrey and Jules Dervaes, the
Board finds that all Petitioners have met their initial burden of establishing
that there is no genuine dispute as to any material fact regarding their
standing to maintain this proceeding. That is, Petitioners have met their initial
burden of establishing that each of them has a real interest, i.e., a direct and
personal stake, in the outcome of this proceeding and that each of them has a
reasonable basis for its belief that it would be damaged by the continued
registration of the mark URBAN HOMESTEAD. See Empresa Cubana del
Tabaco v. General Cigar Co., 111 USPQ2d 1058, 1062 (Fed. Cir. 2014); Lipton

10 Petitioners assert that these documents were produced in discovery. See
Trademark Rule 2.127(e)(2).
Cancellation No. 92053837

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Indus., Inc., 213 USPQ at 189; Alcatraz Media Inc. v. Chesapeake Marine Tours
Inc., 107 USPQ2d 1750, 1760-61 (TTAB 2013). Respondent, in its brief in
response, does not argue that Petitioners lack standing to maintain this
proceeding. Based on the foregoing, we find that there is no genuine dispute
that Petitioners have standing to maintain this proceeding.
Regarding the alleged genericness of the term “urban homestead,” a generic
term “is the common descriptive name of a class of goods or services.” H.
Marvin Ginn Corp. v. Int'l Ass'n of Fire Chiefs, Inc., 782 F.2d 987, 228 USPQ
528, 530 (Fed. Cir. 1986). Generic terms are incapable of being source
indicators and are therefore unregistrable on both the Principal Register under
Trademark Act Section 2(f), 15 U.S.C. § 1052(f), and the Supplemental
Register.11 See Princeton Vanguard, LLC v. Frito-Lay N. Am., Inc., 786 F.3d
960, 114 USPQ2d 1827, 1830 (Fed. Cir. 2015); In re Reed Elsevier Props. Inc.,
482 F.3d 1376, 82 USPQ2d 1378 (Fed. Cir. 2007) (LAWYERS.COM found
generic and unregistrable on the Supplemental Register); H. Marvin Ginn
Corp., 228 USPQ at 530. A determination of genericness with regard to a multi-
word term is based on the challenged term as a whole and not upon the
individual words in that term. See Princeton Vanguard, LLC, 114 USPQ2d at
1830-31.

11 By contrast, a term that is merely descriptive, but not generic, that has become
distinctive of an applicant's goods and/or services is registrable on the Principal
Register under Trademark Act Section 2(f).

Cancellation No. 92053837

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“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.” H. Marvin Ginn, 228 USPQ at 530.
The public’s perception is the primary consideration in determining whether a
term is generic. Loglan Inst. Inc. v. Logical Language Group Inc., 902 F.2d
1038, 22 USPQ2d 1531, 1533 (Fed. Cir. 1992); Magic Wand Inc. v. RDB Inc.,
940 F.2d 638, 19 USPQ2d 1551, 1552-53 (Fed. Cir. 1991). Evidence of the
public's understanding of a term may be obtained from any competent source,
including testimony, surveys, dictionaries, trade journals, newspapers and
other publications. Loglan Inst. Inc., 22 USPQ2d at 1533.
There are two steps in so determining: (1) What is the genus of goods or
services at issue?; and (2) Is the term sought to be registered or retained on the
register understood by the relevant public primarily to refer to that genus of
goods or services? See H. Marvin Ginn Corp., 228 USPQ at 531-32. The Board
has often held that a term that names the “central focus” or “key aspect” of
services is generic for the services themselves, and the Board's principal
reviewing Court has approved this approach. E.g., In re Cordua Rests., Inc.,
823 F.3d 594, 118 USPQ2d 1632, 1637-38 (Fed. Cir. 2016) (affirming the
Board’s finding that CHURRASCOS is generic for restaurants for which
churrasco steaks are a key characteristic or feature); In re Hotels.com LP, 573
F.3d 1300, 91 USPQ2d 1532, 1533-34 (Fed. Cir. 2009) (approving Board's
finding that the word “hotels” identifies the “central focus” of online lodging
Cancellation No. 92053837

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information and reservation services, rendering the mark HOTELS.COM
generic). A term is incapable of appropriation as a trademark where it is
generic for the subject matter of the services at issue rather than the services
themselves (e.g., education, training, research, etc.). See In re Indus. Relations
Counselors, Inc., 224 USPQ 309, 310 (TTAB 1984) (INDUSTRIAL
RELATIONS COUNSELORS, INC. incapable of functioning as a mark for
conducting seminars and research in the field of industrial relations); In re
Harcourt Brace Jovanich, Inc., 222 USPQ 820 (TTAB 1984) (LAW AND
BUSINESS held incapable as a mark for educational seminars on that subject
although not an apt name for the service of presenting seminars or training
courses); In re Seats, Inc., 221 UPSQ 1207 (TTAB 1984) (SEATS for ticket
reservation and issuance services held incapable although a common name for
the subject matter of the services rather than the services themselves). When
a registered term is generic for one or more of the goods or services identified
in a particular class, that class may be cancelled in its entirety. See In re
Analog Devices Inc., 6 USPQ2d 1808 (TTAB 1988). The issue of whether a term
is generic is determined based on facts as they exist at the time registrability
is being considered. Cf. Target Brands Inc. v. Hughes, 85 USPQ2d 1676, 1681
(TTAB 2007) (distinctiveness determined at the time issue is under
consideration).
With regard to the first step of our inquiry, the genus of services at issue is
determined by Respondent's chosen recitation of services in the involved
Cancellation No. 92053837

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registration, i.e., “Educational services, namely, conducting informal programs
in the fields of sustainable living, organic foods and gardening, homesteading,
the environment, and conservation, using on-line activities and interactive
exhibits; entertainment services, namely, providing a web site featuring
photographs and audio and video recordings featuring instruction and current
events reporting on sustainable living, organic foods and gardening, the
environment, and conservation; on-line journals, namely, blogs featuring the
subjects of sustainable living, organic foods and gardening, the environment,
and conservation.” See Magic Wand Inc., 19 USPQ2d at 1552. For purposes of
this motion, we will focus on websites providing information on sustainable
living, organic foods and gardening. The relevant public consists of members
of the general public who are actual or potential purchasers of those services.
See Magic Wand Inc., 19 USPQ2d at 1553.
Petitioners rely on generic use of the term “urban homestead” by
Respondent and persons associated with Respondent on various websites,
including:
(1) An excerpt from Respondent’s website urbanhomestead.org,
accessed March 16, 2011, where the following definition of the
term “urban homestead” is set forth:12
n. 1 a suburban or city home in which residents
practice self-sufficiency through home food
production and storage.
n. 2 the home and garden of a person or family
engaging in sustainable small-scale agriculture and
related activities designed to reduce environmental
impact and increase self-sufficiency.

12 This excerpt was removed from Respondent’s website in 2011. 85 TTABVUE 162.
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n. 3 A name describing the home of a person or
family living by principals [sic] of low-impact
sustainable self-sufficiency through activities such
as gardening for food production, cottage industry,
extensive recycling, and generally simple living.
USAGE IN A SENTENCE ‘My neighbors’ urban
homestead is so productive, they’re able to live
entirely on food they grow themselves.’
85 TTABVUE 169 (emphasis added). The definition was
submitted as an exhibit to the discovery deposition of Jordanne
Dervaes, who wrote the definition.

(2) An excerpt from julesdervaes.com, accessed March 12, 2012,
which features a transcript of an interview of Jules Dervaes by
Yvonne Maffei. In that interview, Maffei asked Dervaes to
“describe ... what exactly is an urban homestead” (emphasis
added). Dervaes responded:
A suburban or city home on a fraction of an acre
where an individual or family lives by principles of
low-impact, sustainable self-sufficiency through
activities such as gardening for food production and
preservation, cottage industry, extensive recycling,
and generally simple living-including conservation
measures and an old-fashioned DIY self-reliance.
82 TTABVUE 106.

(3) A June 15, 2009 entry from julesdervaes.com, accessed
September 27, 2011, entitled “10 Elements of Urban
Homesteading.” That entry includes the following (emphasis in
original, except for bold underlined text, which is added):
While these 10 factors make up the ‘ideal’ urban
homestead, it should be understood that individual
circumstances vary greatly and that many of these
factors take years to implement fully. Therefore, any
urban homestead SHOULD be a work in progress.
1. Grow your own FOOD on your city lot.
More than 50% of diet, organically, on an urban lot
(approx. less than half an acre") with visually
appealing landscaping. *Depends on square footage
of house, location, and climate zone.
2. Use alternative ENERGY sources.
E.g., solar, wind, in conjunction with energy
efficiency and conservation measures to reduce
usage.
Cancellation No. 92053837

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3. Use alternative FUELS &
TRANSPORTATION.
E.g., bio-fuels and/or alternative methods of
transportation (bicycle, walk, public).
4. Keep farm ANIMALS for manure and food.
Practice animal husbandry.
5. Practice WASTE REDUCTION.
Use it up, wear it out, make it do, do without, compost
it, re-purpose it.
6. Reclaim GREYWATER and collect
RAINWATER.
Practice water conservation and recovery.
7. Live SIMPLY.
...in the manner of past eras. Develop back-to-basics
homemaking skills, including food preservation and
preparation.
8. Do the work YOURSELF.
Learn to do home and vehicle maintenance, repairs
and basic construction.
9. Work at HOME.
Earn a living from the land or hand work done at
home. Develop a homebased economy.
10. Be a good NEIGHBOR.
Be conscious and considerate of your surroundings
— ask yourself "Would I want to live next to me?"
Offer a helping hand for free. Urban homesteading is
a community-based way of life, not a business.
82 TTABVUE 180.
(4) An excerpt from the Facebook page of Jordanne Dervaes,
accessed September 22, 2011, in which she urges that people use
the term “urban homestead” “with pride” and encourages the
use of that term “in the public domain.” 85 TTABVUE 173
(emphasis added).

(5) An excerpt from the August 15, 2008 entry of the PATH TO
FREEDOM blog, accessed June 9, 2011, wherein Anais Dervaes
states as follows (emphasis added):
Starting in the mid 1980's, the Dervaes family has
through hard work and effort transformed our
ordinary city lot into a viable urban homestead.
Where [we] not only grow over 90% of our produce,
but have citified farm animal[s], brew our own fuel
and incorporate many alternative energy, waste and
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21
water reclamation practices, and appropriate
technologies.
82 TTABVUE 70.

(6) An excerpt from julesdervaes.com, accessed September 27,
2011, which provides “[t]opic [e]xamples” of presentations and
workshops given by Jules Dervaes, and states as follows
(emphasis added): “Since 1983, Jules Dervaes and his family have
been living a protest against corporate control of the food supply
by working and living of their urban homestead. They now grow
over 6,000 pounds of produce annually on a one fifth acre
residential lot in Pasadena, CA (1/10 acre garden).” 82 TTABVUE
95.

(7) An excerpt from julesdervaes.com, accessed June 6, 2011,
which reprints an April 14, 2010 (unspecified city) Daily News
feature on the Dervaes family, which includes the following
statement: “Jules refers to the place as an urban homestead
and the project as the Path to Freedom.” (emphasis added)

(8) An excerpt from the website urbanhomesteading.com,
accessed March 12, 2012, which includes the following passage in
the profile of Anais Dervaes (emphasis added): “She loves
traipsing around the urban homestead in aprons and barefeet
and taking pictures of all the homestead happenings!” 82
TTABVUE 102.

(9) Excerpts of the PATH TO FREEDOM blog from the website
urbanhomestead.org/journal, which include the phrase “THE
ORIGINAL MODERN URBAN HOMESTEAD” in the heading
thereof. 81 TTABVUE 783-865, 1038-43; 82 TTABVUE 2-7
(emphasis added).

A party’s own generic use of a term is strong evidence of genericness. See Turtle
Wax Inc. v. Blue Coral Inc., 2 USPQ2d 1534, 1536 (TTAB 1987).
Petitioners’ evidence regarding the relevant public’s understanding of the
term URBAN HOMESTEAD in connection with the services at issue also
includes the following:
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(1) An excerpt from The Integral Urban House: Self-Reliant
Living in the City by Helga Olkowski, Tom Javits, and the
Farallones Institute staff (1979), which refers to “an urban
homestead chicken-fish-garden [manure removal] system” used
in connection with egg-laying hens in a “small chicken house the
size of a one-car garage.” 81 TTABVUE 712 (emphasis added).

(2) A November/December 1976 article from the archives of
Mother Earth News (online at www.motherearthnews.com),
accessed May 24, 2011, entitled “The Integral Urban House,”
which refers to the Farallones Institute’s Project of converting “a
Victorian mansion into an urban homestead” where residents
“grow their own fruits and vegetables, raise chickens, rabbits, and
fish, recycle 90% of their wastes, solar heat their hot water, and
conduct a variety of alternative technology experiments ... all on
a 1/8-acre city lot!”13 84 TTABVUE 388-93 (emphasis added).

(3) A March/April 1985 article from the archives of Mother Earth
News, accessed May 18, 2011, entitled “Urban Homesteading in
Florida,” which features a “tiny urban homestead” near Tampa
Bay. 84 TTABVUE 385-87.14

13 Petitioners submitted a declaration of Nikkole Gadsden, a paralegal for Petitioners’
attorney, through which Petitioners make of record the results of a June 2, 2014
search of the Westlaw ALLNEWS database that Ms. Gadsden conducted for the terms
“urban homestead” and “urban homesteading” spanning the time period from 1973 to
the present. 81 TTABVUE 29-687. Such search resulted in 2,658 hits for those terms.
Ms. Gadsden avers that, of those hits, 43 mention activities of Respondent or Dervaes
family members in connection with those terms, 2,615 do not mention either
Respondent or Dervaes family members. Ms. Gadsden further avers that, of those
2,615 hits, 740 discuss sustainable living activities practiced or promoted by others,
1,755 discuss affordable housing programs that may or may not involve sustainable
living, and the remaining 120 “occurred in a different or unclear context.” Petitioners
also submitted a declaration of Christopher J. Kox, a librarian and researcher at the
University of California at Berkeley, who conducted searches of the printed Readers’
Guide to Periodical Literature and various databases for the term “urban
homesteading” and submitted copies of his search reports. 82 TTABVUE 35-55.
Because the search results provide little or no context of the use of the terms at issue
on the webpages linked to the search reports, they are of little value in assessing the
consumer public perception of the term “urban homestead” in connection with the
recited services. See In re Bayer AG, 82 USPQ2d 1828, 1833 (Fed. Cir. 2007).
14 The article includes the following:
Nowadays, here on our tiny urban homestead only a block from
Tampa Bay, we come just about as close to self-reliance as is possible in
a city. The two original gardens have been joined by an herb plot,
grapevines, two wildly productive fig trees, and three varieties of
Florida apple trees (which are actually imports from Israel). We have a
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(4) A May/June 1985 article from the archives of Mother Earth
News, accessed June 21, 2012, entitled “How to Live Well on Two
City Acres,” which describes living in an “urban homestead” at
an “80-year-old house” where “down in the basement and out in
the backyard, ... much of the food needed by several families is
grown through cooperative effort.”15 84 TTABVUE 394-97
(emphasis added).

(5) An excerpt from the website urban-homesteading.com,
accessed September 19, 2011, which includes the subheadings
“Cooking and Eating on the Urban Homestead” and “Raising
Your Own Animals.” 84 TTABVUE 49-51 (emphasis added).

(6) an excerpt from the website urban-homestead.net, accessed
September 16, 2011, entitled “Urban Homestead: Farming in
the Backyard.” 84 TTABVUE 68-69 (emphasis added).

(7) An excerpt from the website ehow.com, accessed June 20,
2012, which includes the headlines “Homesteading
Opportunities” and “Start an Urban Homestead.” The text
refers to the Dervaes family as an example of transforming a city
house on a city lot into a “working, urban microfarm[] that can
create a sustainable living environment for the people who live
there.” 84 TTABVUE 73-76 (emphasis added).

small banana grove in the side yard ... and maverick papayas pop up
from time to time all over the property.
(emphasis added)

15 The article includes the following:
Two acres that extend behind the house sport vegetable gardens, a
pond, grapevines and blackberry bushes, a huge compost pile, dwarf
fruit trees, and a woodlot. ‘We, the families in the houses on either side
of us, and another family who lives down the street bought this land
cooperatively,’ Mrs. Bender says as she points to the gardens from the
back porch swing. ‘Then we all bought our houses, along with small
plots for our own backyards, back from the cooperative, so that each
family actually owns its own property. The rest of the land, though, is
still owned cooperatively.’

Aside from four large gardens (each is spacious enough to feed a family
of four), the main focal point in the neatly kept acreage is the pond.
‘that's where I raise African tilapia,’ Mrs. Bender, who is director
of environmental research at Morehouse College, explains.

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(8) An excerpt from the website everyday-simple-living.com,
accessed June 20, 2012, which under the headline “Urban
Homesteading” refers to “[r]aising animals on an urban
homestead.” 84 TTABVUE 93-95 (emphasis added). The text of
the article states as follows:
Raising animals on an urban homestead is
definitely more than some people want to take on.
But for those who are willing to give it a go - its
rewards are many. Fresh eggs from your own
chickens! Fresh milk from your own goats! Fresh
honey from your own bees! Good stuff.

(9) An article from portlandtribune.com, created on June 11, 2014
and accessed July 16, 2014, entitled “Find ideas for building your
urban homestead.” The article refers to the Oregon City
Farmers Market’s Householding Fair, where readers are advised
that “[i]f you’re looking for ideas for creating an urban
homestead on your city lot, check out booths with information
on chickens, beekeeping, goats, preserving food, composting,
growing food, worm bins, green cleaners, recycling, repurposing
and disaster-preparedness.” 84 TTABVUE 109-112 (emphasis
added).

(10) An excerpt from holisticlivingschool.org, accessed August 23,
2011, wherein the Florida School of Holistic Living offers a series
of workshops, classes, and hikes known as the 2009 Urban
Homestead Series, including “Organic Gardening 101,” “Worm
Composting 101,” and “Introduction to Canning: Preserving
Food,” which are intended “to provide a guidebook for urban living
in a sustainable way.” This excerpt indicates that such series is
guided by Coyne and Knutzen’s book The Urban Homestead. 84
TTABVUE 142-45 (emphasis added).

(11) An excerpt from ledameredith.net, accessed April 14, 2011,
entitled “Leda’s Urban Homestead,” which offers “Classes &
Events with Leda,” including “Easy to Grow Vegetables,”
“Growing Food in the Shade,” and “Urban Foraging.” 84
TTABVUE 149-53 (emphasis added).

(12) An excerpt from continue.utah.edu, accessed August 23,
2011, wherein The University of Utah Continuing Education
offers “Urban Homestead Classes with Lifelong Learning,”
through which customers may “[g]et hands-on training in a wide
Cancellation No. 92053837

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range of backyard gardening and city farming skills, from raising
chickens and bee keeping to garden design and selling your own
produce.” (84 TTABVUE 154-55).

Petitioners’ evidence indicates, prima facie, that there is no genuine dispute
that the general public understands the term “urban homestead” as referring
to the recited “sustainable living, organic foods and gardening,” in city
environments; and that third parties make generic use of that term on websites
that provide information on “sustainable living, organic foods and gardening,”
in city environments. That evidence persuasively shows use of the term “urban
homestead” as an apt identifier of the activities in question by persons other
than the parties to this proceeding and persons who received correspondence
from Respondent in which Respondent asserted its trademark rights in that
term. As such, the evidence shows that the relevant public understands that
term as identifying the subject matter of Respondent’s websites. Although
Jordanne Dervaes contends in her discovery deposition that her
aforementioned posted definition of the term “urban homesteading” was
merely something that people who accessed Respondent’s website “could have
fun reading” (85 TTABVUE 162), the example of usage of that term provided
as part of that definition is entirely consistent with third-party use of the term.
Based on the evidence of record as a whole (see W. Florida Seafood Inc. v. Jet
Rests. Inc., 31 F.3d 1122, 31 USPQ2d 1660, 1663 (Fed. Cir. 1994)), we find that
Petitioners have met their initial burden of establishing that there is no
Cancellation No. 92053837

26
genuine dispute as to any material fact that the term “urban homestead” is a
generic term for Respondent’s websites.
The burden now shifts to Respondent to demonstrate the existence of any
genuine dispute of material fact that must be resolved at trial. We note initially
that although Respondent, through the declaration of Jules Dervaes, has
included a list of print and online publications and other media coverage in
which Respondent has been featured (94 TTABVUE 61-91), merely listing a
publication or other media coverage is insufficient to make that publication or
media coverage of record.16 See Calypso Tech. Inc. v. Calypso Capital Mgmt.
LP, 100 USPQ2d 1213, 1219 (TTAB 2011).
In its brief in response, Respondent correctly notes that a registration for a
mark on the Principal Register is entitled to a prima facie presumption of
validity. See Trademark Act Section 7(b), 15 U.S.C. § 1057(b). However, a
registration for a mark that has become generic for the relevant goods and/or
services can be cancelled. See Trademark Act Section 14(3), 15 U.S.C. §
1064(3).
Respondent asserts that the term “urban homestead” is not generic because
it survived “arduous and demanding” process of trademark examination. 92
TTABVUE 12-13. However, determinations made by examining attorneys are

16 Respondent submitted evidence that its publication “Elements Of The Urban
Homestead” was registered for copyright with the Library of Congress on June 22,
2009 (94 TTABVUE 52). However, “[t]he title of a single creative work is, of necessity,
descriptive of the work and does not function as a trademark.” Mattel Inc. v. Brainy
Baby Co., 101 USPQ2d 1140, 1142 (TTAB 2011).
Cancellation No. 92053837

27
not binding on the Board and have no preclusive or precedential value. See In
re Nett Designs Inc., 236 F.3d 1339, 57 USPQ2d 1564 (Fed. Cir. 2001).
Even if, as alleged, Respondent conducted its due diligence and applied to
register the marks in good faith, so applying does not preclude a finding of
genericness. Cf. Lebanon Seaboard Corp. v. R&R Turf Supply Inc., 101
USPQ2d 1826, 1834 (TTAB 2012) (good faith adoption of a mark does not
preclude a finding of likelihood of confusion because it is expected that
applicants are acting in good faith). Even if Respondent were the first, or even
the sole, user of a generic term or phrase, that does not entitle Respondent to
register such a term or phrase as a mark. See In re Nat’l Shooting Sports
Found., Inc., 219 USPQ 1019 (TTAB 1983). A term may become generic after
it is registered. See Trademark Act Section 14(3), 15 U.S.C. § 1064(3).
While Jules Dervaes states in correspondence to third-party users of “urban
homestead” and in his declaration that other terms such as “modern
homesteading,” “urban sustainability projects” (84 TTABVUE 540), “urban
farming,” “urban gardening,” and “urban agriculture” (94 TTABVUE 8) are
available to identify their activities, it is well settled that there can be more
than one generic term for particular services. Roselux Chemical Co., Inc. v.
Parsons Ammonia Co., Inc., 299 F.2d 855, 132 USPQ 627, 632 (CCPA 1962).
Through the declaration of Jules Dervaes, Respondent introduced evidence
that the term “urban homestead” is also used to refer to “housing
rehabilitation/renewal” in city buildings. 94 TTABVUE 5, 22-51. However, the
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28
fact that a term may have other meanings in different contexts is not
controlling on the issue of descriptiveness and, by extension, genericness.17 See
In re Bright-Crest, Ltd., 204 USPQ 591, 593 (TTAB 1979).
Respondent’s lengthy argument that the term “urban homestead” is
somehow suggestive is incorrect.18 The involved registration includes a claim
of acquired distinctiveness under Trademark Act Section 2(f), 15 U.S.C. §
1052(f). Because the registration is based on acquired distinctiveness under
Section 2(f), the statute accepts the registered mark’s lack of inherent
distinctiveness as an established fact. See Yamaha Int’l Corp. v. Hoshino Gakki
Co. Ltd., 6 USPQ2d 1001, 1005 (Fed. Cir. 1988).
The DVDs that Respondent submitted as exhibits to the declaration of Jules
Dervaes reinforce the public perception of “urban homestead” as a generic term
for “sustainable living, organic foods and gardening, [and] homesteading” in
city environments. In the DVD excerpt of the August 18, 2009 Sundance
Channel program Big Ideas for a Small Planet, Jules Dervaes refers to himself
as the “founder of an urban homestead.” In an April 20, 2008 excerpt from
nytimes.com, Jules Dervaes states that “this is where I live, my home, and

17 A generic term is the “ultimate in descriptiveness.” H. Marvin Ginn Corp., 228
USPQ at 530.

18 Even if we assume, as Respondent argues, that the word “homestead” is most closely
associated with the Homestead Act of 1862, and that such word is defined under the
California Code of Civil Procedure, any determination regarding the genericness of
the phrase “urban homestead” is based on the perception of the the phrase as a whole,
and not only its component parts, by the relevant public. See Princeton Vanguard,
LLC, 114 USPQ2d at 1830-31.
Cancellation No. 92053837

29
we’ve turned it into an urban homestead.” In the excerpt from a May 7, 2010
Food Network program, Private Chefs of Beverly Hills, one of the participants
states in reference to Respondent, that “we have some clients who run what’s
called an urban homestead, which means they grow their own produce and
raise their own animals.” In the identification bar across the bottom of the
screen on a June 15, 2008 CNN feature on the Dervaes family, each member
of the family is identified as an “URBAN HOMESTEADER.” Likewise, in the
July 22, 2004 Los Angeles Times article that was submitted as an exhibit to
the declaration of Jules Dervaes, the author states that “Dervaes, like many of
the most committed greenies, has given up his job to devote himself to running
an urban homestead.” 94 TTABVUE 55.
Respondent asserts that entry of summary judgment is inappropriate here
because Petitioners did not support their motion for summary judgment with
a survey. However, “a survey is neither required nor expected in a Board
proceeding. Most Board cases involve only indirect evidence of consumer
perception.” Anheuser-Busch, LLC v. Innvopak Sys. Pty Ltd., 115 USPQ2d
1816, 1832 n.25 (TTAB 2015). Based on the foregoing, we find that Respondent
has failed to rebut Petitioners’ prima facie showing that there is no genuine
dispute of material fact as to the genericness of the term “urban homestead”
for Respondent’s identified services.
Because the evidence of record makes clear that there is no genuine dispute
that the public perceives the term “urban homestead” as the generic name of
Cancellation No. 92053837

30
the subject matter of respondent’s services, we find that there is no genuine
dispute as to any material fact that such wording is generic for the services at
issue. In view thereof, Petitioners’ motion for summary judgment on their
genericness claim is granted. Because we have entered judgment on the
genericness claim against both registrations involved in this proceeding, we
decline to reach Petitioners’ remaining claims herein.
The petition to cancel is hereby sustained, and judgment is hereby entered
against Respondent on the ground that the involved marks URBAN
HOMESTEADING and URBAN HOMESTEAD are generic for the services
recited in the registrations therefor. As noted supra, Registration No. 3633366
has already been cancelled. Registration No. 3855377 will be cancelled in due
course.