Ryan M. Wiederstein

Trademark Trial and Appeal Board

Mar 14, 2013

No. 85193002 (T.T.A.B. Mar. 14, 2013)

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB

Mailed:
March 14, 2013

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

In re Ryan M. Wiederstein
_____

Serial No. 85193002
_____

Timothy J. Zarley of Zarley Law Firm, P.L.C. for Ryan M. Wiederstein.

Saima Makhdoom, Trademark Examining Attorney, Law Office 101 (Ronald R.
Sussman, Managing Attorney).
_____

Before Zervas, Cataldo, and Gorowitz, Administrative Trademark Judges.

Opinion by Gorowitz, Administrative Trademark Judge:
Applicant has appealed the final refusal to register the term PRIME LEASE
on the Supplemental Register for “residential property management services,
namely, listing, leasing, brokerage, and management of residential properties and
financing of same” pursuant to Section 23(c) of the Trademark Act on the ground
that the term is not capable of distinguishing applicant’s services, i.e., it is generic.1

1 Application Serial Number 85193002 was filed on the Principal Register on December 8,
2010 based on Section 1(a) of the Trademark Act. In response to a descriptiveness refusal
under Section 2(e)(1), applicant disclaimed the word “Lease” and on May 19, 2011,
applicant requested registration on the Supplemental Register.
Serial No. 85193002

2

Whether a particular term is generic, and therefore cannot be a trademark or
service mark, is a question of fact. In re Hotels.com LP, 573 F.3d 1300, 91 USPQ2d
1532, 1533 (Fed. Cir. 2009). When a proposed mark is refused registration as
generic, the examining attorney has the burden of proving genericness by “clear
evidence” thereof. Id. See also 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 in determining whether a term is generic 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
Corp. v. International Ass'n of Fire Chiefs, Inc., 782 F.2d 987, 228 USPQ 528, 530
(Fed. Cir. 1986). 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 dictionaries, trade
journals, newspapers and other publications. See In re Merrill Lynch, 828 F2d
1567, 4 USPQ2d 1141, 1143 (Fed. Cir. 1987); and In re Northland Aluminum
Products, Inc., 777 F.2d 1556, 227 USPQ 961, 963 (Fed. Cir. 1985).
As seen by the excerpted examples, the evidence submitted by the examining
attorney establishes the meaning of the term “prime lease”:
• “The prime lease references the lease agreement
and jargon with the primary tenant as challenging
Serial No. 85193002

3

those that may be contained in any subleases.
Real-Estate-Base - (www.real-estate-base.com) –
Office Action dated March 16, 2011;

• Non-Stabilized Prime Lease … “A prime lease is
given to you as the primary tenant or primary lease
holder.” “Types of Leases,” Manhattanapts.com –
(www.manhattanapts.com) - Office Action dated
March 16, 2011;

• “Subleases are often documented by simple forms
specifying the premises, gross rental rate, security
deposit and duration of the sublease, but then
address other issues by incorporating the other
terms of the prime lease into the sublease.”
“Subleases-Part II,” Frascona, Joiner, et. al website
- (www.frascona.com) - Office Action dated March
16, 2011;

• The Prime Lease – “For a subtenant, the most
important legal service a lawyer can provide is
review of … the prime lease.” “Subleasing,
There’s More To It Than You Might Think,”
McQuireWoods website - (www.mcquirewoods.com)
- Office Action dated March 16, 2011;

• “Black Letter in all jurisdictions provides that a
subtenant’s estate under a sublease depends
entirely for its existence and continuation upon the
estate created by the prime lease.” Schaffer,
Brent C. Sublease and Assignment Deskbook, pg.
144 Office Action dated April 26, 2011; and

• “Benjamin James agents are dealmakers.
Whether securing prime leases for qualified
tenants ---“ Benjamin James Real Estate’s Blog –
(www.benjaminjamesreaestate.wordpress.com) -
Office Action dated April 26, 2011.

The dictionary definitions and articles establish that the term PRIME
LEASE is a term of art that refers primarily to a type of lease which may be used in
Serial No. 85193002

4

residential leasing. Leasing residential properties is encompassed within
applicant’s identification. Thus, we find that the proper genus of applicant’s
services is “residential property leasing services involving prime lease transactions.”
See In re Analog Devices Inc., 6 USPQ2d 1808, 1810 (TTAB 1988) [If a term is
generic for some but not all of the services identified in an application, registration
will be refused for all of the services in such registration.].
The next question that must be answered 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.
Applicant defined the predominant group of consumers of its services as
homeowners and tenants. (Appeal Brief, p. 5). The examining attorney does not
dispute this and we agree that the purchasers are as applicant states.
Although much of the examining attorney’s evidence consists of definitions of
‘prime lease” from real estate and legal dictionaries, applicant’s specimen of use,
which is a brochure that is clearly intended for homeowners intending to lease their
properties, establishes that applicant expects that homeowners and tenants seeking
applicant’s services understand this term too, and define it as provided in the
dictionaries of record. See the following passages from applicant’s specimen of use:
• WB Listings will preserve your equity and take care of your
family’s home. Once the Prime Lease is signed, we promise
to…

• Prime Lease Review and Offer: WB Listings will
review the application and you will be provided
with a Prime Lease offer, which includes the
Serial No. 85193002

5

terms and cash amount that you will collect
immediately.
• Sign your Prime lease and receive your check!
Further evidence can be found on applicant’s website,2 which discusses
applicant’s services as follows:
• The WB Listings Prime Lease is a hassle free way
for you to rent your home quickly… You: - Lease
your home to WB Listings.
• The Prime Lease option is an easy way to rent
your property and get a large sum of cash up front.
• If you are interested in receiving a quote for a
Prime Lease, please call our offices…
“The Board has held that a term which is the generic name of a particular
category of goods is likewise generic for any services which are directed to or
focused on that class of goods.” In re CyberFinancial.Net Inc. , 65 USPQ2d 1789,
1791 (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]; See also In re A La Vieille Russie Inc., 60 USPQ2d 1895
(TTAB 2001) [RUSSIANART generic for particular field or type of art and also for
dealership services directed to that field]; In re Log Cabin Homes Ltd., 52 USPQ2d
1206 (TTAB 1999) [because LOG CABIN HOMES is generic for a particular type of
building, it is also generic for architectural design services directed to that type of

2 Exhibit to response to Office action dated November 16, 2011.
Serial No. 85193002

6

building, and for retail outlets featuring kits for construction of that type of
building]; In re Web Communications, 49 USPQ2d 1478 (TTAB 1998) [because WEB
COMMUNICATIONS is generic for publication and communication via the World
Wide Web, it is also generic for consulting services directed to assisting customers
in setting up their own Web sites for such publication and communication]; and In
re Harcourt Brace Jovanovich, Inc., 222 USPQ 820 (TTAB 1984) [LAW &
BUSINESS incapable of distinguishing applicant's services of arranging and
conducting seminars in the field of business law].
The evidence discussed above establishes that the term PRIME LEASE is
understood by the relevant public primarily to refer to leases used in residential
property leasing services. In view thereof, and because PRIME LEASE is a generic
term for a type of lease, the term is generic for services which are directed to or
focused on those goods.
In arriving at our conclusion, we are not persuaded by applicant’s contention
that PRIME LEASE is not the name that the relevant public uses to refer to the
genus of applicant’s services. The test is not only whether the relevant public would
itself use the term to describe the genus, but also whether the relevant public would
understand the term to be generic. See H. Marvin Ginn, 782 F.2d at 990 (describing
the test as whether the term is “understood by the relevant public primarily to refer
to [the appropriate] genus of goods or services”). Thus, the correct inquiry is
whether the relevant public would understand the term PRIME LEASE to be
Serial No. 85193002

7

generic. See: In re 1800Mattress.com IP LLC, 586 F.3d 1359, 92 USPQ2d 1682,
1685 (Fed. Cir. 2009).
Based on the record, we find that the term PRIME LEASE is generic for
involving prime lease transactions which are contained within the leasing of
residential properties and, thus, not registrable on the Supplemental Register.
Accordingly, the term PRIME LEASE is not registrable for applicant’s
services.
Decision: The refusal to register is affirmed.