ROC USA, LLC

Trademark Trial and Appeal Board

Dec 10, 2010

No. 77044525 (T.T.A.B. Dec. 10, 2010)

Hearing: Mailed:
July 13, 2010 December 10, 2010
jtw

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re ROC USA, LLC
________

Serial Nos. 77044525 & 77059988
_______

Ashlyn J. Lembree for ROC USA, LLC.

Brian Neville, Trademark Examining Attorney, Law Office 114
(K. Margaret Le, Managing Attorney).
_______

Before Grendel, Walsh and Ritchie, Administrative Trademark
Judges.

Opinion by Walsh, Administrative Trademark Judge:

ROC USA, LLC (applicant) has appealed refusals in the
two applications referenced above. The Board will decide
both appeals in this opinion because the applications
involve the same marks and the appeals present the same
issue. The records in the two applications are essentially
the same. For consistency we will refer to the record and
briefs in Application Serial No. 77044525.
In the first application (Serial No. 77044525),
applicant seeks to register the mark ROC USA in standard
THIS OPINION
IS NOT A PRECEDENT OF
THE T.T.A.B.
Serial No. 77044525 & 77059988
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characters on the Principal Register for services
identified as: “Providing business management consulting
in the field of manufactured home communities; business
management assistance; business management consulting;
business management organization; professional business
consulting; business information; business expertise;
manufactured housing community management assistance;
market studies; market research; economic forecasts; cost
price analysis; promotion of partnerships between resident
owned communities and community organizers, trainers,
primary lenders, and sub debt lenders for lending in
manufactured housing communities; advertising; issuing and
updating of advertising texts for others,” in International
Class 35 and “Educational services, namely, teaching in the
field of resident ownership of manufactured housing
communities and lending practices; training seminars for
community development practitioners, lenders, and
homeowners” in International Class 41. The application was
filed on November 15, 2006, and claims first use of the
mark anywhere and first use in commerce on September 11,
2006. The application includes a disclaimer of “USA” and a
claim of acquired distinctiveness under Trademark Act
Section 2(f).
In the second application (Serial No. 77059988),
Serial No. 77044525 & 77059988
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applicant also seeks to register the mark ROC USA in
standard characters on the Principal Register for services
identified as: “Capital investment consultation;
underwriting assistance relating to financing resident
owned manufactured housing communities; financial services,
namely, financial consultation, analysis, and planning;
asset administration and management services for private,
institutional, and business clients; intermediary services,
credit enhancement and direct lending to Community
Development Financial Institutions and resident owned
communities” in International Class 36. The application
was filed on December 8, 2006, and claims first use of the
mark anywhere and first use in commerce on November 8,
2006. The application includes a disclaimer of “USA” and a
claim of acquired distinctiveness under Trademark Act
Section 2(f).
In both applications, the Examining Attorney has
issued final refusals under Trademark Act Section 2(e)(2)
on the grounds that the mark is geographically descriptive
of the identified services. Specifically, the Examining
Attorney found USA geographically descriptive of the
services and ROC merely descriptive of the services, and
therefore, insufficient to render the mark distinctive.
The Examining Attorney has also rejected applicant’s claim
Serial No. 77044525 & 77059988
4
of acquired distinctiveness in both applications.
Applicant appealed. Both applicant and the Examining
Attorney have filed briefs and presented arguments in an
oral hearing before the Board. We affirm the refusals
under Section 2(e)(2) but find the claim of acquired
distinctiveness sufficient to overcome the refusals in both
applications.
The 2(e)(2) Refusal
There is no serious dispute as to the meaning of USA
or that USA is geographically descriptive of the services.
Applicant has disclaimed “USA.” The focus is on whether
the presence of ROC in the mark is sufficient to render the
entire mark registrable on the Principal Register with or
without a showing of acquired distinctiveness. Applicant
and the Examining Attorney vigorously dispute whether or
not ROC is highly descriptive, merely descriptive or
inherently distinctive. Ultimately, the crucial question
is whether the entire mark, ROC USA, is either merely
descriptive or highly descriptive and, if it is either,
whether applicant’s claim of acquired distinctiveness is
sufficient.
The Examining Attorney’s argument rests on the premise
that ROC is an abbreviation or acronym which the relevant
public understands to mean “resident-owned community” and
Serial No. 77044525 & 77059988
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that the identified services all relate to resident-owned
communities. More particularly, the Examining Attorney
asserts that a resident-owned community is “… a
manufactured/mobile home or RV [recreation vehicle]
development that is incorporated and operated as a not-for-
profit co-operative.” Examining Attorney’s Brief at 5.
To support his position, the Examining Attorney relies
primarily on evidence from sources which list acronyms or
abbreviations and from websites where ROC is used as
shorthand for resident-owned communities.
First, the Examining Attorney presented evidence from
ABBREVIATIONS.COM showing an entry connecting “ROC” to
“resident owned community.” The Examining Attorney also
provided evidence from several websites, including the
following:
residentownedcommunties.com, which states, “This
directory lists over 110 ROC communities that
have a website.”;

joe.org, which initially states, “Each of these
cooperatively owned parks, known as “Resident-
owned Communities” (ROC’s), formed a self-
governing corporation to govern their park.”
(The site, which provides detailed information
about the organization and operation of such
communities, then proceeds to use ROC repeatedly
as shorthand for resident-owned community.);

palmharbormarketing.com, which states, “I'm
putting together a directory of ‘resident-owned’
manufactured home/mobile home communities, which
includes links to the parks websites. If you
Serial No. 77044525 & 77059988
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have or know of a ‘roc’ with a website which you
would like to be included, please email me the
name and url.”;

monroe-giordano, which initially provides a list
of abbreviations used in its real estate
listings, including a reference to “Resident-
Owned Community” as “ROC”;

mota-nh.org, which includes a report on resident-
owned communities and related subjects and refers
to “… the second ROC Leadership Program.” (The
site also refers to applicant: “After 15 years
of leading the Loan Fund’s Manufactured Housing
Park Program, Paul Bradley will be moving on to
focus his efforts on the development of ROC USA,
a national organization working with
practitioners from other states to further
develop the ROC system and help others to
organize to purchase their communities.”);

Shaesveniker.com, which reports on legislative
developments related to resident-owned
communities and related topics using ROC to refer
to resident-owned communities;

tcpalm.com, which includes Q & As regarding
resident-owned communities and consistently uses
ROC to refer to resident-owned communities; and

mhoo-osta.com, which states, “Also, a third park
in McMinnville, is in the early phases of
purchasing their park using a Limited Equity ROC
approach.”

Attachments to Examining Attorney’s Office Action dated
February 11, 2009.1

1 In both the brief and the earlier Office action the Examining
Attorney provides quotes from several of these websites without
identifying the particular source of each quote. The Examining
Attorney simply directs applicant and the Board to the voluminous
attachments to the office action. When citing evidence, the
Examining Attorney should indicate the precise source.
Serial No. 77044525 & 77059988
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The Examining Attorney also argues that evidence
applicant provided further supports his position, in
particular, evidence showing third-party uses of ROC which
applicant submitted with its response of November 21, 2008.
The uses are consistent with the examples we noted above.
To determine whether USA, or any other term, is
primarily geographically descriptive we must consider: (1)
whether the primary significance of USA is as the name of a
place which is generally known; and (2) whether the
relevant public would associate the goods or services of
applicant with the place named, that is, whether the public
would believe that the goods or services come from the
place named. In re Societe Generale des Eaux Minerales de
Vittel S.A., 824 F.2d 957, 3 USPQ2d 1450, 1452 (Fed. Cir.
1987); In re JT Tobacconists, 59 USPQ2d 1080, 1081 (TTAB
2001). As we stated, in this case there is no real dispute
regarding the USA component of the mark. Applicant has
disclaimed USA. We dismiss out of hand applicant’s brief
argument that USA is too broad to convey an association
between the services and the place named. Applicant cites
no authority for the proposition; nor can we find any. In
re Compagnie Generale Maritime, 993 F.2d 841, 26 USPQ2d
1652, 1655 (Fed. Cir. 1993). Therefore, we proceed on the
basis that USA is primarily geographically descriptive.
Serial No. 77044525 & 77059988
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Thus, we must focus our analysis on ROC to determine
whether it is descriptive to whatever degree and whether it
is insufficient to remove the mark from the prohibition of
Section 2(e)(2).
Applicant argues that the mark is not primarily
geographically descriptive primarily because the evidence
does not establish that that the relevant public
understands ROC, as used in the mark, to denote a resident-
owned community. Applicant argues that, for the purposes
of a refusal under Section 2(e)(2), the Examining Attorney
must show that ROC is either highly descriptive or generic
to find the entire mark primarily geographically
descriptive.
At the outset, we reject applicant’s argument that the
Examining Attorney must show that ROC is either highly
descriptive or generic, not just merely descriptive, to
support the refusal. While the cases applicant cites, such
as, In re Mankovitz, 90 USPQ2d 1246 (TTAB 2009) and cases
cited in that opinion, involve situations where the term
combined with the geographical term was either highly
descriptive or generic, we do not read the cases as
limiting Section 2(e)(2) refusals to such situations.
Rather, we must view the mark in its entirety to determine
whether the combination of terms renders the mark
Serial No. 77044525 & 77059988
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registrable. Consequently, we proceed to consider whether
ROC is merely descriptive.
A term is merely descriptive of goods or services
within the meaning of Section 2(e)(1) if it forthwith
conveys an immediate idea of an ingredient, quality,
characteristic, feature, function, purpose or use of the
goods or services. See, e.g., In re Gyulay, 820 F.2d 1216,
3 USPQ2d 1009, 1009 (Fed. Cir. 1987); and In re Abcor
Development Corp., 588 F.2d 811, 200 USPQ 215, 217-18 (CCPA
1978).
A term need not immediately convey an idea of each and
every specific feature of the applicant’s goods or services
in order to be considered merely descriptive; it is enough
that the term describes one significant attribute or
function of the goods or services. See In re MBNA America
Bank N.A., 340 F.3d 1328, 67 USPQ2d 1778 (Fed. Cir. 2003)
(MONTANA SERIES and PHILADELPHIA CARD held merely
descriptive of credit card services featuring credit cards
depicting scenes or subject matter of, or relating to the
state of Montana or the city of Philadelphia); In re Busch
Entertainment Corp., 60 USPQ2d 1130 (TTAB 2000) (EGYPT held
merely descriptive of amusement park services; namely an
area within an amusement park).
Serial No. 77044525 & 77059988
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Whether a term is merely descriptive is determined not
in the abstract, but in relation to the goods or services
identified in the application, and the possible
significance that the term would have to the average
purchaser or user of the goods or services. In re Polo
International Inc., 51 USPQ2d 1061, 1062 (TTAB 1999); and
In re Bright-Crest, Ltd., 204 USPQ 591, 593 (TTAB 1979).
The question whether a mark is merely descriptive is not
determined by asking whether one can guess from the mark
what the goods or services might be, but rather by asking,
when the mark is seen in connection with the goods or
services, whether it immediately conveys information about
their nature. See In re Patent & Trademark Services Inc.,
49 USPQ2d 1537, 1539 (TTAB 1998).
In this case, we must consider whether ROC, an
abbreviation or acronym, is merely descriptive of the
identified services. The mere fact that resident-owned
community, the phrase from which ROC is derived, is merely
descriptive is not dispositive. See In re Uniform Product
Code Council, Inc., 202 USPQ 618 (TTAB 1979).
Based on the entire record we conclude that ROC is
merely descriptive of the identified services, that is,
that the relevant public would understand ROC as a
reference to resident-owned communities when viewing ROC in
Serial No. 77044525 & 77059988
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applicant’s mark, as applied to the identified services.
All of the services in both applications relate to
resident-owned communities.
Furthermore, we conclude that the entire mark, ROC
USA, is primarily geographically descriptive of the
identified services. There is nothing about the
combination of ROC and USA which renders the entire mark
inherently distinctive. Both ROC and USA describe
something significant about the identified services. There
is no incongruity about the combination even though each
component describes a different aspect of the services,
that is, the nature of the services and the geographical
origin and scope of the services. Also, the services are
specialized and directed to a distinct segment of the
public, those concerned with the establishment and
administration of resident-owned communities or “resident
ownership of manufactured housing communities.” This fact
reinforces the conclusion that the relevant public would
understand the meaning of both ROC and ROC USA.
For the record we reject applicant’s argument that the
designation of “rock” as a “pseudo mark” in the USPTO data
base provides evidence that ROC conveys a double entendre.
The pseudo mark field in the USPTO data base serves a
purely administrative purpose to facilitate searching
Serial No. 77044525 & 77059988
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generally. It is in no way probative of how the relevant
public would perceive this mark. Furthermore, there is no
evidence indicating that the relevant public would perceive
ROC, as used here, as rock. On the contrary, the argument
is, at best, a stretch.
We also reject applicant’s argument that the frequent
use of resident-owned community followed by ROC in a
parenthetical indicates that the relevant public would not
understand the meaning of ROC without this guidance. This
usually happens at the outset in each of the examples of
use. In this case, this practice simply reflects a process
whereby the publication is educating the relevant public as
to the meaning, again a rather narrowly defined relevant
public which is likely to learn the meaning readily.
Furthermore, we reject applicant’s arguments based on
third-party registrations which appear to include ROC as an
abbreviation for some phrase other than resident-owned
community. In re Nett Designs Inc., 236 F.3d 1339, 57
USPQ2d 1564 (Fed. Cir. 2001). This evidence is not
probative of how the relevant public would perceive ROC
when used as an abbreviation for resident-owned community.
In concluding that the entire mark is primarily
geographically descriptive, we hasten to add that we reject
the Examining Attorney’s characterization of the entire
Serial No. 77044525 & 77059988
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mark as highly descriptive. In this regard we note that
the mark consists of two abbreviations, again, one
describing the nature of the services and the other the
geographical origin and scope. There is no evidence that
anyone else uses this combination, nor would we expect to
find such evidence, again, in view of the rather narrow,
specialized nature of the field.
Acquired Distinctiveness
The applicant bears the burden of establishing
acquired distinctiveness. Yamaha Intl. Corp. v. Hoshino
Gakki Co. Ltd., 840 F.2d 1572, 6 USPQ2d 1001, 1004-1008
(Fed. Cir. 1988); In re Packaging Specialists, Inc., 221
USPQ 917, 919 (TTAB 1984) (“‘Packaging Specialists, Inc.’
is highly descriptive of distributorship services for
packaging material and equipment, contract packaging
services, and design services for design of packages.”).
The type and amount of evidence required to show
acquired distinctiveness depends upon the circumstances of
the case. In re Gammon Reel, Inc., 227 USPQ 729, 730 (TTAB
1985). In a case where the mark is highly descriptive, the
applicant faces a heavier burden. In re Packaging
Specialists, Inc., 221 USPQ at 919. As we noted above,
this is far from such a case.
Serial No. 77044525 & 77059988
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Applicant filed most of its evidence of acquired
distinctiveness with its response of November 21, 2008.
The evidence consists of 55 exhibits, including principally
affidavits and copies of excerpts from numerous media
sources. Applicant provided the following affidavits or
declarations: Neill G. Goslin of Development for Self-Help
(North Carolina); Ishbel Dickens of Columbia Legal Services
(Washington State); John VanLandingham of Lane County Legal
Aid and Advocacy Center (Oregon); and Carolyn Carter of the
National Consumer Law Center (Massachusetts).
The affidavits reflect an awareness of applicant and a
recognition of ROC USA as a source indicator for
applicant’s services as a result of applicant’s actions as
a national leader in the establishment and development of
resident-owned communities as a response to housing needs,
particularly on behalf of those in need of affordable
housing. Among other things, the affidavits indicate that
applicant has conducted national conferences which have
contributed to the recognition of ROC USA as a source
indicator.
Applicant also provided letters from the Ford
Foundation evidencing a grant of $5,000,000 in 2007 to ROC
USA to conduct its activities. This award, and subsequent
activities and publicity related to the award reflected in
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the media, indicate that the Ford Foundation support has
bolstered recognition of ROC USA.
The bulk of the remaining evidence consists of media
use of ROC USA from a wide variety of sources, both local
and national, and from some general-circulation sources, as
well as many specialized publications in relevant fields.
The geographical range extends from New Hampshire and
greater New England, to Pennsylvania, Maryland, Delaware,
North Carolina, Minnesota, North Dakota, South Dakota,
Iowa, Texas, Arkansas, Oregon, Washington, California, and
other states. The types of sources include newsletters
issued by groups in the legal, real estate and financial
services field, all concerned with resident ownership of
manufactured housing communities. The evidence also
includes scholarly reports concerning resident ownership of
manufactured housing communities, and other materials from
organizations as diverse as the Philadelphia Federal
Reserve Bank and the Manufactured Home Owners Association
of America.
Applicant also provides evidence that it placed
limited advertising in the MHI (Manufactured Housing
Institute) newsletter.
The principal reasons the Examining Attorney offers
for rejecting applicant’s claim of acquired distinctiveness
Serial No. 77044525 & 77059988
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are the fact that the evidence covers only about two years,
the limited amount of advertising, and his contention that
the entire mark is highly descriptive.
We must view the evidence of acquired distinctiveness
in light of the circumstances in these cases. We find two
circumstances in these cases significant in this regard.
First, the fact that the mark is not highly descriptive is
important. Secondly, the fact that the services, as
identified, are targeted to a narrow field, those
interested in resident ownership of manufactured housing
communities.
The record shows that those with an interest in
resident ownership of manufactured housing communities
includes a segment of the legal, real estate and financial
services professions and more generally those concerned
with the development of affordable housing.
When we view the evidence of acquired distinctiveness
in light of the circumstances present here, we find that
applicant’s activities and public exposure of its mark over
the relevant two-year period are sufficient to allow us to
conclude that applicant has met its burden to establish
that ROC USA has come to identify applicant as the source
of the identified services in the minds of the relevant
public.
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When we consider the totality of the circumstances,
the fact that applicant has used the mark for only two
years is not controlling. Cf. In re McDonald's Corp., 199
USPQ 490 (TTAB 1978). Furthermore, the specialized
services applicant provides under the mark are not like
goods or services which would be offered to the general
consuming public. Consequently, we would not expect to see
applicant’s mark advertised in the same manner as a mark
for consumer goods. Most importantly, the evidence does
show that applicant’s activities to date have been
sufficient to establish recognition of its mark in the
minds of the relevant public.
Decision: In both applications, we reverse the
refusals under Section 2(e)(2) based on the sufficiency of
applicant’s claim of acquired distinctiveness under Section
2(f).