Oakton Press, Inc.

Trademark Trial and Appeal Board

Jul 19, 2011

No. 77221836 (T.T.A.B. Jul. 19, 2011)

Hearing Mailed:
April 5, 2011 July 19, 2011

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Oakton Press, Inc.
________

Serial No. 77221836
_______

Ken Oliveira of Odin, Feldman & Pittleman, P.C. for Oakton
Press, Inc.

Steven W. Jackson, Trademark Examining Attorney, Law Office
107 (J. Leslie Bishop, Managing Attorney).
_______

Before Quinn, Bergsman and Wolfson,
Administrative Trademark Judges.

Opinion by Bergsman, Administrative Trademark Judge:

Oakton Press, Inc. (“applicant”) seeks to register the
mark CONSUMERAFFAIRS.COM on the Principal Register, in
standard character form, for “business investigations and
business information services in the field of business and
trade practices for protecting responsible business and the
public against abusive business practices and for
establishing and maintaining legitimate advertising and
merchandising practices,” in Class 35. Applicant claimed
first use of its mark anywhere and first use of the mark in
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Serial No. 77221836
2
commerce at least as early as December 1, 1998. Also,
applicant disclaimed the exclusive right to use “.COM.”
Applicant’s specimen of use is a webpage featuring
links for, inter alia, consumer news, recalls and scam
alerts. Applicant’s webpage provides that “we open our
pages to consumers just like you, reporting your experience
with products and services, while our reporters, editors
and resident experts provide news and information that can
help you be a better informed consumer.”
The Trademark Examining Attorney refused to register
applicant’s mark under Section 2(e)(1) of the Trademark Act
of 1946, 15 U.S.C. §1052(e)(1), on the ground that
applicant’s mark is merely descriptive. According to the
Examining Attorney, “[t]he words ‘consumer’ and ‘affairs’
in combination with ‘.com’ clearly convey to users
information about the subject matter and feature of the
services. The applicant’s services provide users with a
website featuring public matters of business, such as
providing investigations and information on unfair trade
practices, for consumers, i.e., consumer affairs.”1
While maintaining the position that its mark is not
merely descriptive, applicant requested that

1 The Examining Attorney’s Brief, unnumbered p. 5.
Serial No. 77221836
3
CONSUMERAFFAIRS.COM be allowed to register on the Principal
Register under Section 2(f) or, in the alternative, on the
Supplemental Register. Applicant claimed that
CONSUMERAFFAIRS.COM has become distinctive through its
substantially exclusive and continuous use of the mark for
at least the five years preceding the filing of its
declaration of acquired distinctiveness. The Examining
Attorney continued the refusal under Section 2(e)(1),
denied registration under Section 2(f), and issued a
refusal under Section 23(c) on the ground that applicant’s
mark is generic and, therefore, not registrable on the
Supplemental Register.
Preliminary Issue
At the outset, we are compelled to make some
observations regarding the prosecution of this application
by the examining attorney. First, the examining attorney
submitted the same evidence multiple times. For example,
he submitted the same dictionary definitions in the October
4, 2007, November 26, 2008 and July 16, 2009 Office
Actions. Suffice it to say, the definitions do not become
more probative with repetition. The examining attorney
also submitted different excerpts from applicant’s website
in the October 4, 2007, November 26, 2008 and July 16, 2009
Office Actions, including two separate excerpts in the July
Serial No. 77221836
4
16, 2009 Office Action. The better practice is for the
examining attorney to submit all the relevant excerpts from
a website at one time rather than piecemeal.2 Finally, in
the Office Actions, the examining attorney should identify
the evidentiary websites and specifically explain their
probative value. For example, if the examining attorney
has attached numerous websites, he/she may identify three
of the most relevant websites in the Office Action and
explain why those websites are probative of his/her
position. In this case, the examining attorney has not
pointed out, even in its brief, the evidence that he
believes is most probative of his position. It is not very
helpful when an examining attorney or an applicant submits
hundreds of pages of evidence in the hope that the Board
wades through it to find something relevant.
Evidence
The Examining Attorney submitted the following
evidence to demonstrate that CONSUMERAFFAIRS.COM is generic
and/or merely descriptive when used in connection with
“business investigations and business information services
in the field of business and trade practices for protecting

2 When appropriate, the examining attorney may explain that
he/she introduced a second excerpt from a website previously made
of record because additional probative evidence was found in a
later search that was not available initially.
Serial No. 77221836
5
responsible business and the public against abusive
business practices and for establishing and maintaining
legitimate advertising and merchandising practices”:
1. The definition of the word “affairs” from the
dictionary of MSN.ENCARTA (Encarta.msn.com) meaning “public
matters of business: public, government, or professional
business or activities: affairs of state; consumer
affairs.”3
2. The definition of “consumer” from the dictionary
of MSN.ENCARTA meaning “buyer: a buyer of goods or
services.”4
3. An excerpt from applicant’s website.5
About ConsumersAffairs.com

ConsumerAffairs.Com is a consumer news
and advocacy site … The site includes
consumer news, recall information and
tens of thousands of pages of consumer
complaints, comments and compliments.

A second excerpt from applicant’s website provides the

following:6

ConsumerAffairs.com is a private, non-
governmental entity that empowers
consumers by providing a forum for
their companies and a means for them to
be contacted by lawyers if their
complaints have legal merit.

3 October 4, 2007 Office Action.
4 Id.
5 Id.
6 November 26, 2008 Office Action.
Serial No. 77221836
6
A third excerpt from applicant’s website providing a
“Consumer Comment form” for consumer complaints for review
by attorneys and possible publication by news media.7
4. The Free Dictionary (thefreedictionary.com)
redirected a search for “Consumer Affairs” to “Consumer
Protection.”8 The entry provides the following:
Consumer protection laws are federal
and state statutes governing sales and
credit practices involving consumer
goods. Such statutes prohibit and
regulate deceptive or unconscionable
advertising and sales practices,
product quality, credit financing and
reporting, debt collection, leases, and
other aspects of consumer transactions.

5. Numerous excerpts from the websites of various
departments of consumer affairs (e.g., California
Department of Consumer Affairs, New York City Department of
Consumer Affairs and the New Jersey Division of Consumer
Affairs).9 The URL path for the New Jersey Division of
Consumer Affairs is njconsumeraffairs.gov.
The Alabama consumer affairs website (ago.state.al.us)
provides the following information:
The Attorney General’s Office of
Consumer Affairs provides three primary
services for the State of Alabama and
its residents: (1) serves as a
mediator of consumers’ complaints that

7 July 16, 2009 Office Action.
8 November 26, 2008 and July 16, 2009 Office Actions.
9 Id.
Serial No. 77221836
7
relate to a retail transaction; (2)
investigates allegations of fraud or
illegal practices by a business which
may violate state or certain federal
laws; and (3) offers information and
consumer education to the public about
how to avoid becoming a victim of
fraud.

The Palm Beach County, Florida Division of Consumer
Affairs10 website indicates that the Division “assists
residents and visitors with advice and information about
unfair, fraudulent or deceptive practices of businesses and
landlords.”
The Montgomery County, Pennsylvania Department of
Consumer Affairs11 website states that the County provides
“free assistance and education to protect Montgomery County
consumers against economic losses resulting from unethical
business practices in the marketplace.”
The South Carolina Department of Consumer Affairs
website notes that the Department “has broad powers and
responsibilities to accept all types of complaints dealing
with any consumer transaction arising out of the
production, promotion or sale of consumer goods and
services.”

10 At pbcgov.com/publicsafety/consumeraffairs/fastfacts.htm.
11 At consumeraffairs.montcopa.org.
Serial No. 77221836
8
A search summary from a GOOGLE search engine search
for “consumer affairs” retrieving links to the Cleveland,
Ohio Department of Consumer Affairs12 and the District of
Columbia Committee on Public Services and Consumer Affairs13
which both include the term “consumeraffairs” in their URL
path.14 Likewise, the Middlesex County, New Jersey
Department of Consumer Affairs15 and the Suffolk, County,
New York Office of Consumer Affairs use the term
“consumeraffairs” in their URL path.16
6. An excerpt from the website of the California
State University at Long Beach, Department of Family &
Consumer Affairs describing the “Consumer Affairs” program
(csulb.edu/colleges/chhs/department/fcs/program/
consumeraffiars.htm).17 The website describes the “Consumer
Affairs” program as follows:
Our program is one of the leading
undergraduate programs in the field.
It offers interdisciplinary study of
the financial, legislative,
psychological, sociological, and
cultural factors involved in
consumerism.

12 At city.cleveland.oh.us/government/departments/conaffairs/
consumeraffairsind.html.
13 At dccouncil.us/public servicesandconsumeraffairs.
14 We are not relying on the text of the search summaries from the
GOOGLE search. As indicated above, the links show that the term
“consumeraffairs” is used in the URL path.
15 co.middlesex.nj.us/consumeraffairs/file.asp.
16 co.suffolk.ny.us/departments/…/consumeraffairs.asp.
17 November 26, 2008 Office Action.
Serial No. 77221836
9
Areas covered in Consumer Affairs are
Consumer Advocacy and Protection,
Financial Management, and Housing. In
addition, the course work in Consumer
Affairs is complemented by minors in
several areas including Business
Management, Economics and Marketing.

7. An excerpt from an article in the February 1,
1987 issue of the St. Petersburg Times with the headline
“Consumer affairs office can offer help, assistance.”18 The
article explains that the Hillsborough County Office of
Consumer Affairs “is a clearinghouse for consumer
complaints stemming from a broad range of controversies
with businesses and merchants.”
8. A column in the Cleveland.com website by Sheryl
Harris is entitled “Consumer Affairs” and it promotes
itself as “[a] weekly column about consumer affairs.”19 It
uses the term “consumeraffairs” in its URL path.20
Applicant did not submit any evidence.
Whether CONSUMERAFFAIRS.COM is generic?
When a proposed mark is refused registration as being
a generic term, the examining attorney has the burden of
proving genericness by "clear evidence" thereof. See In re
Hotels.com, 573 F.3d 1300, 91 USPQ2d 1532, 1533 (Fed. Cir.

18 July 16, 2009 Office Action.
19 July 16, 2009 Office Action.
20 cleveland.com/consumeraffairs.
Serial No. 77221836
10
2009); In re Merrill Lynch, Pierce, Fenner & Smith, Inc.,
828 F.2d 1567, 4 USPQ2d 1141, 1143 (Fed. Cir. 1987); and In
re Gould Paper Corp., 834 F.2d 1017, 5 USPQ2d 1110, 1111
(Fed. Cir. 1987).
The critical issue is to determine whether the record
shows that members of the relevant public primarily use or
understand the term sought to be registered to refer to the
category or class of goods in question. H. Marvin Ginn
Corp. v. International Ass’n of Fire Chiefs, Inc.,
782 F.2d 987, 228 USPQ 528, 530 (Fed. Cir. 1986); In re
Women's Publishing Co. Inc., 23 USPQ2d 1876, 1877 (TTAB
1992). Making this determination “involves a two-step
inquiry: First, what is the genus of goods or services at
issue? Second, is the term sought to be registered ...
understood by the relevant public primarily to refer to
that genus of goods or services?” Ginn, 228 USPQ at 530.
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. See In re Northland Aluminum Products, Inc.,
777 F.2d 1556, 227 USPQ 961, 963 (Fed. Cir. 1985); Merrill
Lynch, 4 USPQ2d at 1143.
Finally, where, as here, the mark is a compound term,
the examining attorney may establish that the term is
Serial No. 77221836
11
generic by producing evidence that each of the constituent
words is generic, and that the separate words retain their
generic significance when joined to form a compound term.
In re Gould Paper Corp., 834 F.2d 1017, 5 USPQ2d 1110,
1111-1112 (Fed. Cir. 1987) (SCREENWIPE held generic as
applied to premoistened antistatic cloths for cleaning
computer and television screens); see also In re
Steelbuilding.com, 415 F.3d 1293, 75 USPQ2d 1420, 1421
(Fed. Cir. 2005) (“Even if each one of the constituent
words in a combination is generic, the combination is not
generic unless the entire formulation does not add any
meaning to the otherwise generic mark”); TMEP
§1209.01(c)(i)(7th ed. 2010).
We begin by finding that the genus of the services at
issue in this case is adequately defined by applicant’s
description of services, namely, “business investigations
and business information services in the field of business
and trade practices for protecting responsible business and
the public against abusive business practices and for
establishing and maintaining legitimate advertising and
merchandising practices.” Magic Wand Inc. v. RDB Inc., 940
F.2d 638, 19 USPQ2d 1551, 1552 (Fed. Cir. 1991) (“[A]
proper genericness inquiry focuses on the description of
Serial No. 77221836
12
[goods or] services set forth in the [application or]
certificate of registration”).
As best we understand applicant’s argument as to why
CONSUMERAFFAIRS.COM is not generic, applicant, relying on
In re Steelbuilding.com, contends that in determining the
genus of applicant’s services, the examining attorney did
not consider all of the activities encompassed by
applicant’s services and, therefore, improperly identified
the genus of the services. Applicant argued that its
services include the following activities:
1. The ability for visitors to review articles
dealing with the business dealings of various companies and
industries;
2. Information on product recalls;
3. Ability for visitors to post complaints about
companies or products;
4. The ability for visitors to review articles and
postings about various “scams” in a variety of industries
and through a variety of mediums;
5. Legal articles on lemon laws and consumer law
suits;
6. Interstate agency contact lists for the reporting
of consumer abuses; and
Serial No. 77221836
13
7. Providing information in different areas/subject
matters dealing with consumer reports.21
In Steelbuilding.com, the Federal Circuit found that
there was an ambiguity in the description of services and
it looked to applicant’s website for clarification.
75 USPQ2d at 1422. When the description of services is
unclear, it is improper to simply consider the description
of services in a vacuum when there is extrinsic evidence
showing that the description of services has a specific
meaning. Cf. In re Trackmobile Inc., 15 USPQ2d 1152, 1154
(TTAB 1990).
In this case, applicant’s argument is based on the
false premise that applicant’s description of services is
ambiguous. We find no ambiguity in applicant’s description
of services. Also, applicant maintains that the genus of
services identified by the examining attorney during the
prosecution of the application (i.e., consumer affairs)
does not encompass all of the activities offered by
applicant and, therefore, the genus of the services, does
not include the above-noted activities. We disagree. We
adopted applicant’s description of services as the genus of
the services. Because applicant’s description of services
should identify the activities identified by the mark,

21 Applicant’s Brief, pp. 8-9; Applicant’s Reply Brief, p. 4.
Serial No. 77221836
14
applicant should not be heard to complain that the
description of services does not encompass all the
activities for which registration is sought. Moreover, we
find that the seven activities identified by applicant fall
within the penumbra of “business investigations and
business information services in the field of business and
trade practices for protecting responsible business and the
public against abusive business practices and for
establishing and maintaining legitimate advertising and
merchandising practices.”
Because Section 7(b) of the Lanham Act bestows upon
the owner of a registration the presumption of use of a
mark for all the services identified in a registration, the
question of registrability must be determined by
considering any services falling within the literal scope
of an identification of services, and not merely the
particular activities an applicant may be marketing at the
time when registrability is determined. In re Reed
Elsevier Properties, Inc., 77 USPQ2d 1649, 1654 (TTAB
2005), aff’d, 482 F.3d 1376, 82 USPQ2d 1378 (Fed. Cir.
2007). Accordingly, we find that “business investigations
and business information services in the field of business
and trade practices for protecting responsible business and
the public against abusive business practices and for
Serial No. 77221836
15
establishing and maintaining legitimate advertising and
merchandising practices” encompass the seven activities
applicant claims to comprise its services. In other words,
while the broad category of services in the present case
may be the business investigations and information
services, there is a narrower category of services within
that broad category comprising the seven activities
identified by applicant. See In re Wm. B. Coleman Co., 93
USPQ2d 2019 (TTAB 2010) (lighting fixtures is a generic
term for electric candles); In re Reed Elsevier Properties,
Inc., 77 USPQ2d at 1656 (“the genus of services is
providing a web site with a database of information
covering the identified topics of law, legal news and legal
services and that includes information about lawyers and
information from lawyers”); In re CyberFinancial.Net Inc.,
65 USPQ2d 1789 (TTAB 2002) (BONDS.COM is generic for
“providing information regarding financial products and
services via a global computer network and providing
electronic commerce services via a global computer network
… with respect to taxable and tax exempt debt instruments”
because the services encompass information about bonds); In
re Web Communications, 49 USPQ2d 1478, 1479 (TTAB 1998)
(consulting services include assisting customers in
communications through the Internet); In re Analog Devices,
Serial No. 77221836
16
Inc., 6 USPQ2d 1808, 1810 (TTAB 1988), aff’d, 871 F.2d
1097, 10 USPQ2d 1879 (Fed. Cir. 1989) (unpublished)
(registration is properly refused if the subject matter for
registration is generic of any one of the goods for which
registration is sought); Cf. In re Stereotaxis Inc., 429
F.3d 1039, 77 USPQ2d 1087, 1089 (Fed. Cir. 2005), quoting,
Application of Richardson Ink Co., 511 F.2d 559, 185 USPQ
46, 48 (CCPA 1975) (“Our predecessor court...has stated
that registration should be refused if the mark is
descriptive of any of the goods for which registration is
sought”).
We now turn to the second inquiry: the public’s
understanding of the term. As noted above, the evidentiary
burden of establishing that a term is generic rests with
the USPTO and the showing must be based on clear evidence.
Merrill Lynch, 4 USPQ2d at 1143. Based on the record
described above, we find that there is clear evidence to
support a finding that the relevant public, when it
considers CONSUMERAFFAIRS.COM, readily understands that
term as identifying a category of business investigation
and information service to prevent abusive practices and to
promote legitimate business practices; in short, consumer
business trade practices.
Serial No. 77221836
17
The evidence discussed above (e.g., the websites from
various departments of consumer affairs) establishes that
the term “consumer affairs” is understood to mean consumer
business practices. The dictionary entry from MSN.ENCARTA
specifically references “consumer affairs” in its
definition of the word “affairs,” thus indicating that
“consumer affairs” is a recognized term used in connection
with “public matters of business.” “Public matters of
business” encompasses applicant’s services in the field of
consumer business trade practices.
The excerpt from the website of the South Carolina
Department of Consumer Affairs is illustrative of how
consumers will perceive the term “consumer affairs.” This
website indicates that the Department of Consumer Affairs
“has broad powers and responsibilities to accept all types
of complaints dealing with any consumer transaction arising
out of the production, promotion or sale of consumer goods
and services.” In other words, consumer business trade
practices.
The article from the St. Petersburg Times describes
the Office of Consumer Affairs as “a clearinghouse for
consumer complaints stemming from a broad range of
controversies with businesses and merchants.”
Serial No. 77221836
18
Applicant’s specimen of record indicates that its
services encompass consumer business trade practices.
Applicant’s specimen is a webpage featuring links for,
inter alia, consumer news, recalls and scam alerts, and it
provides that consumers may report their experience with
products and services to applicant and applicant’s
reporters, editors and resident experts will provide news
and information that can help readers/subscribers to be
informed consumers.
With respect to the fact that the mark sought to be
registered is a compound term, we note that applicant
displays its mark in a logo format shown below

and it also uses its mark in text as “ConsumerAffairs.com.”
Thus, applicant is displaying its mark in a manner that
highlights the combination of two separate and distinct
words: “consumer” and “affairs.” As displayed by
applicant, the compound term sought to be registered
retains the meaning of the separate words. In other words,
the meaning and commercial impression of the compound term
“consumeraffairs” is the same as the separate words
“consumer affairs.” In this regard, the evidence also
shows that many government agencies use the composite term
Serial No. 77221836
19
“consumeraffairs” as part of their URL path (e.g.,
njconsumeraffairs.gov) for consumer affairs websites.
While we acknowledge that a URL path may not have any
spaces, many of the consumer affair websites use
“consumer_affairs” or “consumer&affairs” in the URL path
thereby indicating that there are alternatives to the use
of “consumeraffairs.” Thus, the third-party uses of the
term “consumeraffairs” is probative to show that some state
departments of consumer affairs use “consumeraffairs” as a
synonym for “consumer affairs.”
Finally, with respect to the “.com” element of the
compound mark, we find that it simply refers to the
abbreviation designating a commercial organization in the
internet address. The addition of “.com” does not make the
entire mark incongruous, nor does it change the meaning of
the entire mark. In other words, the addition of “.com”
does not add to the distinctiveness of the mark as a whole.
In this regard, we note that applicant disclaimed the
exclusive right to use “.Com.” Accordingly, based on the
evidence of record, we find that the term
CONSUMERAFFAIRS.COM is no more than the sum of its
constituent parts (i.e., a combination of the terms
“Consumer,” “Affairs,” and “.com”). The individual words
“Consumer,” “Affairs,” and “.Com” retain their generic
Serial No. 77221836
20
meanings because the compression of the three terms is not
incongruous and does not evoke a unique commercial
impression.
We also note that there is no evidence that
CONSUMERAFFAIRS.COM has another meaning or would be
perceived as anything other than a reference to consumer
business trade practices.
It is clear from the evidence that the term
CONSUMERAFFAIRS.COM would be recognized as the combination
of the words “Consumer,” “Affairs,” and “.Com” and that
this would be readily apparent to any purchaser,
prospective purchaser or user of applicant’s services.
Therefore, the combination, or “telescoping,” of the terms
is immaterial to the issue before us and applicant’s
compound version of the generic terms does not compel a
different result.
In view of the foregoing, we find that the term
CONSUMERAFFAIRS.COM is generic when used in connection with
“business investigations and business information services
in the field of business and trade practices for protecting
responsible business and the public against abusive
business practices and for establishing and maintaining
legitimate advertising and merchandising practices.”
Serial No. 77221836
21
Because the term CONSUMERAFFAIRS.COM is generic when
used in connection with those services, it is not
registrable on the Supplemental Register or on the
Principal Register under the provisions of Section 2(f).
Mere Descriptiveness
Implicit in our holding that the evidence before us
establishes that CONSUMERAFFAIRS.COM is generic for
applicant’s services is a holding that CONSUMERAFFAIRS.COM
is at least merely descriptive of applicant’s services
under Section 2(e)(1). “The generic name of a thing is in
fact the ultimate in descriptiveness.” H. Marvin Ginn
Corp., 228 USPQ at 530.
Acquired Distinctiveness
For the sake of completeness, we now turn to the issue
of whether applicant’s mark has acquired distinctiveness.
In finding that the designation CONSUMERAFFAIRS.COM is
incapable of being a source identifier for applicant’s
services, we have considered all of the evidence touching
on the public perception of this designation, including the
evidence of acquired distinctiveness. As to acquired
distinctiveness, applicant has the burden to establish a
prima facie case of acquired distinctiveness. See Yamaha
International Corp. v. Hoshino Gakki Co., Ltd., 840 F.2d
1572, 6 USPQ2d 1001, 1006 (Fed. Cir. 1988).
Serial No. 77221836
22
The issue here is the achievement of distinctiveness,
and the evidence falls far short of establishing this.
Applicant asserts that CONSUMERAFFAIRS.COM has acquired
distinctiveness on the basis of its substantially exclusive
and continuous use of that mark for the five years
preceding its declaration of acquired distinctiveness.22
Notably, the record contains no direct or circumstantial
evidence that the relevant classes of purchasers of
applicant’s services view CONSUMERAFFAIRS.COM as a
distinctive source indicator for applicant’s services. For
example, applicant has not submitted any evidence regarding
the extent of its sales, advertising, market share, or
renown in the field.
Where, as here, if the mark is highly descriptive of
the services named in the application, the statement of
five years’ use alone is insufficient to establish acquired
distinctiveness. See In re Gray Inc., 3 USPQ2d 1558, 1559
(TTAB 1987) (“[T]o support registration of PROTECTIVE
EQUIPMENT [for burglar and fire alarms and burglar and fire
alarm surveillance services] on the Principal Register a
showing considerably stronger than a prima facie statement
of five years’ substantially exclusive use is required”);
In re Quatomatic, Inc., 185 USPQ 59, 60-61 (TTAB 1974)

22 Applicant’s Brief, p. 15.
Serial No. 77221836
23
(considering the nature of the term STRIPPERS for treatment
of wooden and metallic elements and products in order to
remove existing finishes therefrom a declaration of
distinctiveness based on use alone is not persuasive); In
re Hayes, 154 USPQ 493, 494 (TTAB 1967) (depending on the
nature of the mark involved, the mere length of time an
applicant may have had exclusive use of the term is not
necessarily determinative of its right to register). Cf.
In re Synergistics Research Corp., 218 USPQ 165 (TTAB 1983)
(applicant’s declaration of five years’ use held sufficient
to support registrability under §2(f) of BALL DARTS for
equipment sold as a unit for playing a target game, in view
of lack of evidence that the term is highly descriptive
(e.g., no dictionary evidence of any meaning of BALL DARTS
and no evidence of use of the term by competitors or the
public)).
Accordingly, even if the designation
CONSUMERAFFAIRS.COM were found to be not generic, but
merely descriptive, given the highly descriptive nature of
the designation CONSUMERAFFAIRS.COM, we would need to see a
great deal more evidence (especially in the form of direct
evidence from customers) than what applicant has submitted
in order to find that the designation has become
Serial No. 77221836
24
distinctive of applicant’s services. That is to say, the
greater the degree of descriptiveness, the greater the
evidentiary burden on the user to establish acquired
distinctiveness. See In re Bongrain International Corp.,
894 F.2d 1316, 1317 n.4, 13 USPQ2d 1727, 1728 n.4 (Fed.
Cir. 1990); Yamaha Int'l. Corp. v. Hoshino Gakki Co., 6
USPQ2d at 1005. The sufficiency of the evidence offered to
prove acquired distinctiveness should be evaluated in light
of the nature of the designation. Highly descriptive
terms, for example, are less likely to be perceived as
trademarks and more likely to be useful to competing
sellers than are less descriptive terms. More substantial
evidence of acquired distinctiveness thus will ordinarily
be required to establish that such terms truly function as
source-indicators.
Decision: The refusal under Section 23(c) of the
Trademark Act of 1946 on the ground that the proposed mark
is generic is affirmed; the refusal under Section 2(e)(1)
of the Trademark Act on the ground that the mark is merely
descriptive and that the Section 2(f) showing is
insufficient is likewise affirmed.