Linholm Corp.

Trademark Trial and Appeal Board

Feb 28, 2008

No. 76435325 (T.T.A.B. Feb. 28, 2008)

Mailed: February 28, 2008

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Linholm Corp.
________

Serial No. 76435325
_______

John R. Posthumus of Greenberg Traurig LLP for Linholm
Corp.

Barbara Rutland, Trademark Examining Attorney, Law Office
101 (Ronald R. Sussman, Managing Attorney).
_______

Before Bucher, Grendel and Cataldo,
Administrative Trademark Judges.

Opinion by Cataldo, Administrative Trademark Judge:

Linholm Corp. filed an application to register on the
Principal Register the proposed mark THE PREGNANCY CALENDAR
in typed or standard character form for the following
goods: “calendar which is a 40-week guide to pregnancy,
including prenatal care and fetal development” in
International Class 16.1

1 Serial No. 76435325 was filed on July 29, 2002, alleging first
use as of December 1, 1987 and use in commerce as of December 18,
1987, and with a claim of ownership of prior Registration No.
1522590.
THIS OPINION IS NOT A
PRECEDENT OF
THE T.T.A.B.
Ser No. 76435325
2
The trademark examining attorney refused registration
on the ground that the proposed mark is merely descriptive
under Section 2(e)(1) of the Trademark Act, 15 U.S.C.
§1052(e)(1). Applicant amended its application to seek
registration under Section 2(f) of the Trademark Act, 15
U.S.C. §1052(f) in order to traverse the refusal. After
the examining attorney refused registration on the ground
that applicant failed to make a sufficient showing that its
proposed mark had acquired distinctiveness under Section
2(f), applicant amended its application to seek
registration on the Supplemental Register. The examining
attorney then refused registration under Section 23 of the
Trademark Act, 15 U.S.C. §1091, on the ground that
applicant’s mark is incapable of identifying applicant’s
goods and distinguishing them from those of others. When
the refusal was made final, applicant appealed. Applicant
and the examining attorney filed briefs on the issue under
appeal.
Applicant contends its proposed mark is not generic
for its goods and is appropriate for registration on the
Supplemental Register. More specifically, applicant argues
that the genus of goods at issue in its application is not
pregnancy calendars as argued by the examining attorney,
but rather should be more broadly identified as calendars
Ser No. 76435325
3
(brief p. 4-5). Applicant further argues that the
examining attorney has not shown that the relevant public
uses “pregnancy calendar” to refer to the genus of goods
under its proposed mark (Id. at 5-7). Applicant argues in
addition that the evidence of record does not support the
refusal to register, but rather demonstrates that THE
PREGNANCY CALENDAR is capable of functioning as a source
identifier for its recited goods (Id. at 7-8).
In support of its position, applicant has made of
record third-party advertisements for its goods retrieved
from Internet web pages. Applicant submits these materials
to support its contention that THE PREGNANCY CALENDAR
points uniquely to applicant as the source thereof.
Excerpts from these web pages follow:

Pregnancy Calendars
Pregnancy calendars are designed to help
expecting mothers have peace of mind over their
40 weeks. It’s a place where they can keep up
with how their baby is developing and what
conditions and feelings are normal.
A pregnancy calendar is a calendar based on the
pregnancy term – not on the calendar year. It’s
your guide to pregnancy from conception to the
birth of your baby. Along the way you’ll learn
about the many exciting changes taking place in
your body, the month to month development of your
unborn baby….
Your pregnancy calendar can also be used as a
diary of your thoughts and experiences, to record
your prenatal appointments and other information,
as a sourcebook to answer questions about
Ser No. 76435325
4
pregnancy and a keepsake to compare with future
pregnancies.
www.pregnancy--calendars.com

The Pregnancy Calendar #11413
More than a calendar, it’s packed with week-by-
week information about pregnancy and fetal
development. A calendar is a must for keeping
track of prenatal appointments, but this one also
provides a wealth of information and tips, such
as what to pack for the hospital. Use it to
record pregnancy milestones — such as the day you
feel that first little kick — and it will become
a keepsake diary to look back on.
www.babyproofingplus.com/item 1204.htm

Russ Berrie The Pregnancy Calendar
This popular best-selling calendar lets mothers-
to-be know what to expect when they’re expecting.
Featuring a 40-week guide to prenatal care, it
also follows the baby’s fetal development month-
by-month with useful information pertaining to
pregnancy. Includes 96 colorful stickers to mark
things like baby showers, doctor appointments,
last day of work, and so on.
The Pregnancy Calendar is a calendar based on the
pregnancy term--not on the calendar year. It’s
your guide to pregnancy from conception to the
birth of your baby. Along the way you’ll learn
about: The many exciting changes taking place in
your body; the month-to-month development of your
unborn baby; the importance of prenatal care and
what the experts say; warning signs during
pregnancy and true versus false labor; how to
calculate your expected due date.
You’ll also be able to use this calendar as a:
Diary of your personal thoughts and experiences;
Record of your prenatal appointments and other
information; Sourcebook to answer your questions
about pregnancy; Keepsake to compare with future
pregnancies.
www.tableandhome.com/prodeehfd

Ser No. 76435325
5
The examining attorney maintains that applicant’s
proposed mark is a generic designation for its goods. In
particular, the examining attorney argues that applicant’s
goods are pregnancy calendars and that the relevant
consuming public refers to applicant’s goods as such (brief
unnumbered p. 6-8). The examining attorney argues that, as
a result, applicant’s proposed mark is incapable of
functioning as a source identifier for its goods. In
support of the refusal, the examining attorney has made of
record dictionary definitions of “pregnancy” and
“calendar.” According to these definitions, “pregnancy”
may be defined as follows:
1. a. the condition of being pregnant: a test
for pregnancy. b. An instance of being
pregnant: Her second pregnancy was easy. c.
The period during which one is pregnant: the
first trimester of pregnancy.
2. The quality or condition of being rich in
significance, import, or implication.
3. Creativity; inventiveness.2

“Calendar may be defined as follows:
1. Any of various systems of reckoning time in
which the beginning, length, and divisions of
a year are defined.
2. A table showing the months, weeks, and days
in at least one specific year.
3. A schedule of events.
4. An ordered list of matters to be considered:
a calendar of courts cases; the bills on a
legislative calendar.

2 The American Heritage Dictionary of the English Language,
(Third Ed. 1992).
Ser No. 76435325
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5. Chiefly British. A catalogue of a
university.3

The examining attorney further has made of record articles
and advertisements retrieved from the Lexis/Nexis computer
database as well as Internet web pages. Excerpts from
these articles and web pages follow (emphasis added):

Other features include age-specific parenting
advice, prenatal testing information, a week-by-
week pregnancy calendar, pregnancy myths and
tales, relationship issues and other helpful tips
for new parents.
Pensacola News Journal (Pensacola, FL)
February 23, 2003

The Gerasimchiks try to stock items that cater to
all ages and tastes, including a pregnancy
calendar for expectant mothers, butterfly-shaped
suncatchers, outdoor decorative flags, plush
animals and picture frames.
Sun-Sentinal (Fort Lauderdale, FL)
May 3, 2002

A pregnancy calendar is a chronological depiction
of changes in a pregnant woman and the
embryo/fetus during the 40-week course of
pregnancy.
Pregnancy calendars usually describe development
and growth of the fetus and changes in the
mother’s body at weekly intervals. The calendar
is calculated based upon the date of the woman’s
last menstrual period (LMP) and include the
predicted date of birth (due date), sometimes
referred to as the EDC, or estimated date of
confinement.
www.medterms.com;

3 Id.
Ser No. 76435325
7
The Interactive Pregnancy Calendar will build a
day-by-day customized calendar detailing the
development of a baby from before conception to
birth. The pregnancy calendar should be seen as
a general guide: every pregnancy is unique and
some babies develop faster or slower than
others….Create your personalized pregnancy
calendar….
www.parentsplace.com;

Congratulations! Pregnancy, whether you’re
planning for it or are already there, is an
exciting time and a great opportunity to learn
about your child’s growth and development. But
with so much pregnancy information available in
books, in magazines, and on Web sites, how can
you hope to cover it all before giving birth?
We’ve made it easy for you to get all the
pregnancy info you need in one place. Our
illustrated pregnancy calendar is a detailed
guide to all the changes taking place in your
baby – and in you! Each week of pregnancy
includes a description of your baby’s
development, as well as an explanation of the
changes taking place in your body. You’ll also
find important medical info that will help keep
you and your baby healthy.
http://kidshealth.org/parent/pregnancy_calendar;

Looking for a great interactive pregnancy
calendar? Try ours! Not only can you track your
pregnancy with our informative calendar, but
you can also choose how often – daily, weekly,
etc.
www.babymed.com;

A pregnancy calendar…and much more!
Hooray! You are going to have a baby! For the
next 40 weeks (three trimesters), something
wonderful will be happening to you. A little
baby boy or girl will be growing inside your
tummy. During your pregnancy, your body will be
experiencing many changes. And, so you can
anticipate and understand the development of your
Ser No. 76435325
8
baby, While the Stork Waits® Pregnancy Calendar
will list just some of the changes that will be
occurring each trimester.
www.thestorkwaits.com;

Create your own personalized pregnancy calendar
and record milestones daily on our colorful
calendar pages. These pages can be used during
pregnancy and after. Our blank pages were
specially designed with you in mind to record
important details and symptoms concerning your
blessed event.
www.surebaby.com;

Use our pregnancy calendar to find out how your
baby is growing and how to cope with pregnancy
symptoms.
www.babycenter.com;

Track this week’s developments in your pregnancy
with personalized pregnancy calendar and also get
an estimated due date.
www.homeandfamilynetwork.com;

Learn about this week’s developments in your
pregnancy with Americanbaby’s week-by-week
pregnancy calendar. The pregnancy calendar will
guide you through pregnancy right up until it’s
time to give birth. The pregnancy calendar
features information about your baby and your
body while you are pregnant.
www.americanbaby.com;

Now you can discover exactly how your body is
adapting and how your baby is growing and
developing week by week during your pregnancy
with our week by week pregnancy calendar. The
pregnancy calendar will also go through the
symptoms your body will be experiencing, how
the hormone levels are affecting your body, when
sleeping may start to become difficult and so on.
www.pregnancy-info.net; and
Ser No. 76435325
9

Our Week by week pregnancy calendar will take you
through the next 9 months of your life as you
experience all the changes which are occurring to
you, look at how your baby is developing at that
stage and what nutritional value you should be
getting.
www.pregnancycalendars.net.

A mark is a generic name if it refers to the class,
genus or category of goods and/or services on or in
connection with which it is used. See In re Dial-A-
Mattress Operating Corp., 240 F.3d 1341, 57 USPQ2d 1807
(Fed. Cir. 2001), citing H. Marvin Ginn Corp. v.
International Association of Fire Chiefs, Inc., 782 F.2d
987, 228 USPQ 528 (Fed. Cir. 1986). The test for
determining whether a mark is generic is its primary
significance to the relevant public. See Section 14(3) of
the Act. See also In re American Fertility Society, 188
F.3d 1341, 51 USPQ2d 1832 (Fed. Cir. 1999); Magic Wand Inc.
v. RDB Inc., 940 F.2d 638, 19 USPQ2d 1551 (Fed. Cir. 1991);
and H. Marvin Ginn Corp. v. International Association of
Fire Chiefs, Inc., supra. The examining attorney has the
burden of establishing by clear evidence that a mark is
generic and thus unregistrable. See In re Merrill Lynch,
Pierce, Fenner and Smith, Inc., 828 F.2d 1567, 4 USPQ2d
1141 (Fed. Cir. 1987). Evidence of the relevant public’s
Ser No. 76435325
10
understanding of a term may be obtained from any competent
source, including testimony, surveys, dictionaries, trade
journals, newspapers, and other publications. See In re
Northland Aluminum Products, Inc., 777 F.2d 1556, 227 USPQ
961 (Fed. Cir. 1985).
In the case of In re American Fertility Society,
supra, our primary reviewing court stated that if the USPTO
can prove “(1) the public understands the individual terms
to be generic for a genus of goods and species; and (2) the
public understands the joining of the individual terms into
one compound word to lend no additional meaning to the
term, then the PTO has proven that the general public would
understand the compound term to refer primarily to the
genus of goods or services described by the individual
terms.” (Id. at 1837.)
In the case of In re Dial-A-Mattress Operating Corp.,
supra, 1-888-M-A-T-R-E-S-S for “telephone shop-at-home
retail services in the field of mattresses,” the court
further clarified the test as follows (Id. at 1810):
Where a term is a “compound word” (such as
“Screenwipe”), the Director may satisfy his
burden of proving it generic by producing
evidence that each of the constituent words is
generic, and that “the separate words joined to
form a compound have a meaning identical to the
meaning common usage would ascribe to those words
as a compound.” In re Gould Paper Corp., 834
F.2d 1017, 1018, 5 USPQ2d 1110, 1110(Fed. Cir.
Ser No. 76435325
11
1987). However, where the proposed mark is a
phrase (such as “Society for Reproductive
Medicine”), the board “cannot simply cite
definitions and generic uses of the constituent
terms of a mark”; it must conduct an inquiry into
“the meaning of the disputed phrase as a whole.”
In re The Am. Fertility Soc'y, 188 F.3d at 1347,
51 USPQ2d at 1836. The In re Gould test is
applicable only to “compound terms formed by the
union of words” where the public understands the
individual terms to be generic for a genus of
goods or services, and the joining of the
individual terms into one compound word lends “no
additional meaning to the term.” Id. at 1348-49,
51 USPQ2d at 1837.

The court concluded that “1-888-M-A-T-R-E-S-S,” as a
mnemonic formed by the union of a series of numbers and a
word, bears closer conceptual resemblance to a phrase than a
compound word, and the court reiterated that the PTO must
produce evidence of the meaning the relevant purchasing
public accords to the proposed mnemonic mark “as a whole.”
In concluding that there was not substantial evidence that
the term is generic, the court added that the term is not
literally a genus or class name nor does it “immediately and
unequivocally” describe the service at issue.
We find that, in this case, THE PREGNANCY CALENDAR is
more analogous to the phrase considered by the court in
American Fertility than it is to the compound word
considered in Gould. That is to say, unlike the term
SCREENWIPE contemplated by the Federal Circuit in In re
Gould, supra, THE PREGNANCY CALENDAR appears to be a phrase
Ser No. 76435325
12
comprising its constituent words. Thus, dictionary
definitions alone cannot support a refusal to register the
proposed mark. However, we need not determine whether
definitions of the constituent terms would be sufficient in
view of the fact that evidence made of record by the
examining attorney establishes that the wording “pregnancy
calendar” is the name of a class of goods. Specifically,
articles and advertisements made of record by the examining
attorney clearly establish that a “pregnancy calendar” is a
calendar used to note, track, and record significant events
occurring during the 40-weeks of pregnancy. Furthermore,
the materials made of record by the examining attorney do
not point to applicant, or to any other single entity, as
the source of the “pregnancy calendars” discussed therein.
Rather, it seems that each “pregnancy calendar” from among
a myriad of online websites is as varied as the number of
sources.
In addition, applicant has failed to introduce
evidence sufficient to rebut the examining attorney’s
evidence of genericness. Instead, applicant merely relies
upon screenshots from commercial Internet websites
advertising its goods under its proposed THE PREGNANCY
CALENDAR mark. Such evidence submitted by applicant in
this case is insufficient to rebut the examining attorney’s
Ser No. 76435325
13
strong prima facie case of genericness. Cf. In re American
Online, Inc., 77 USPQ2d 1618 (TTAB 2006). Accordingly, the
record is sufficient to establish that the relevant public
would find THE PREGNANCY CALENDAR a generic term denoting
applicant’s identified 40-week calendars used as a guide to
pregnancy.
We are not persuaded by applicant’s argument that the
examining attorney has too narrowly defined the genus or
class of goods at issue herein. Applicant’s reliance upon
J. Thomas McCarthy, McCarthy on Trademarks §12:10 (2007) in
support of its position that the genus of goods should be
defined as “calendars” because “generic names are nouns and
descriptive terms are adjectives” (brief, p. 5) is
misplaced. To the contrary, Professor McCarthy states,
“this ‘part of speech’ test does not accurately describe
the case law results.” J. Thomas McCarthy, McCarthy on
Trademarks §12:10 (2007), citing to Convenient Food Mart,
Inc. v. 6-Twelve Convenient Mart, Inc., 690 F. Supp. 1457,
8 USPQ2d 1353 (D. Md. 1988) aff’d without op., 870 F.2d
654, 10 USPQ2d 2037 (4th Cir. 1989) (“The noun/adjective
test, which [plaintiff] advocates, is an oversimplified
approximation to the species/genus distinction.” Even
though “convenience store” is a noun, the adjective
“convenient” used with “store” is also a generic name.);
Ser No. 76435325
14
and Mil-Mar Shoe Co. v. Shonac Corp., 75 F.3d 1153, 37
USPQ2d 1633 (7th Cir. 1996) (“An easy ‘noun versus
adjective’ test to signify a mark as either generic or
descriptive, respectively, does not, however, adequately
characterize the law of this circuit, nor would such a
simplistic approach adequately embody fundamental
principles of trademark law.”).
Professor McCarthy goes on to state, “The Trademark
Board has said that a term which does not directly name a
product but names the most important purpose of the product
is a type of “generic adjective” which is a generic name.
Applying this rule, “Perma Press” was held to be a name for
a type of garment and as well as a generic name for a stain
remover specifically designed for perma press garments.”
Id., citing to In re Reckitt & Coleman, Inc., 18 USPQ2d
1389 (TTAB 1991) (a generic name of a product is also a
generic name of a cleaning preparation designed to clean
that product). “Similarly, the Board held that ‘attic’ was
a generic adjective for automatic sprinklers used in attics
because ‘the term ATTIC directly names the most important
or central aspect or purpose of applicant’s goods…this term
is generic and should be freely available for use by
competitors.’” Id., citing to In re Central Sprinkler Co.,
49 USPQ2d 1194, (TTAB 1998); and Micro Motion Inc. v.
Ser No. 76435325
15
Danfoss A/S, 49 USPQ2d 1628 (TTAB 1998) (“massflo” is a
generic noun when used as the name of a measurement taken
by mass flowmeters and as a generic adjective when used
with the mass flowmeters that measure mass flow of
liquids). Thus, we find no support for applicant’s
contention that the examining attorney’s definition of the
genus or class of goods as “pregnancy calendars” is
incorrect.
Nor are we persuaded by applicant’s contention that
the examining attorney’s evidence of genericness is
insufficient because such evidence fails to include the
proposed mark’s constituent term “THE.” As noted by the
examining attorney, the word “the” is merely a definite
article without source indicating significance to the mark.
See In re G.D. Searle & Co. 143 USPQ 220 (TTAB 1964),
aff’d, 360 F.2d 650, 149 USPQ 619 (CCPA 1966). Applicant
cites to no authority for its position that the presence of
“THE” in applicant’s proposed mark THE PREGNANCY CALENDAR
imbues the term with trademark significance in the face of
the examining attorney’s strong showing that “pregnancy
calendar” is a generic term for its goods. As stated in In
re G.D. Searle & Co., supra:
If we were to give any weight to applicant’s
arguments concerning the “unique” effect created
by the utilization of the article “THE” in
Ser No. 76435325
16
association with the mark “PILL” and by the use
of quotation marks around the unitary phrase, it
would seem to follow that an automobile
manufacturer could register the designation “THE
AUTOMOBILE” or an appliance manufacturer the
phrase “THE REFRIGERATOR.”

Id. at 222-23. See also In re The Computer Store, 211 USPQ
72 (TTAB 1981).
In view of the foregoing, we conclude that the examining
attorney has met the substantial burden of establishing that
THE PREGNANCY CALENDAR is incapable of identifying and
distinguishing the source of the identified goods.
Decision: The refusal under Section 23 of the Act on
the ground that the proposed mark is generic is affirmed.