Soundprint Guestbooks, Inc.v.Miss Design Berry, Inc.

Trademark Trial and Appeal Board

Nov 18, 2019

92064343 (T.T.A.B. Nov. 18, 2019)

Mailed: November 18, 2019

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

Soundprint Guestbooks, Inc.
v.
Miss Design Berry, Inc.
_____

Cancellation No. 92064343
_____

Brent D. Sausser of Sausser Summers, PC for Soundprint Guestbooks, Inc.

Scott M. Thomas of Thomas Law Firm PLLC for Miss Design Berry, Inc.
_____

Before Bergsman, Ritchie and Goodman, Administrative Trademark Judges.

Opinion by Bergsman, Administrative Trademark Judge:

Miss Design Berry, Inc. (Respondent) is the owner of Supplemental Registration
No. 5019553 for the mark GUEST BOOK ALTERNATIVE (in standard character
form) for “art prints; graphic art prints,” in Class 16.1
Soundprint Guestbook, Inc. (Petitioner) filed a petition to cancel Respondent’s
registration on the ground that GUEST BOOK ALTERNATIVE is generic when used
in connection with art prints and graphic art prints. Section 23(c) of the Trademark

1 Registered August 9, 2016.
This Opinion Is Not a
Precedent of the TTAB
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Act, 15 U.S.C. § 1091(c).2 In addition, Petitioner alleged that GUEST BOOK
ALTERNATIVE “fails to function as a trademark to indicate the source of
Respondent’s goods and distinguish them from others” because “it is a statement that
would ordinarily be used in business or in the particular industry or trade as
informational matter.” Sections 1, 2 and 45 of the Trademark Act, 15 U.S.C. §§ 1051-
52 and 1127.3
Respondent, in its Answer, denied the essential allegations in the Amended
Petition for Cancellation.
I. The Record
The record includes the pleadings and, by operation of Trademark Rule 2.122(b),
37 C.F.R. § 2.122(b), Respondent’s registration file.4 The parties introduced the
testimony and evidence listed below:
A. Petitioner’s testimony and evidence
1. Notice of reliance on Respondent’s responses to Petitioner’s
interrogatories;5

2 Amended Petition to Cancel ¶¶10-11 (14 TTABVUE 8).
3 Amended Petition to Cancel ¶¶14-15 (14 TTABVUE 9).
4 Because the Respondent’s registration file is automatically of record, Petitioner did not have
to submit a copy of it via a notice of reliance. 26 TTABVUE 58-66.
5 26 TTABVUE 11-32. Petitioner sought to introduce Respondent’s responses to Petitioner’s
request for production of documents through a notice of reliance. 26 TTABVUE 33-50.
“However, a party that has obtained documents from another party through disclosure or
under Fed. R. Civ. P. 34 may not make the produced documents of record by notice of reliance
alone, except to the extent that they are admissible by notice of reliance under 37 C.F.R. §
2.122(e) (as official records; or as printed publications, such as books and periodicals,
available to the general public in libraries or of general circulation among members of the
public or that segment of the public which is relevant under an issue in the proceeding; or
Internet documents); or unless the documents have been authenticated by an admission or
stipulation from the producing party.” TRADEMARK TRIAL AND APPEAL BOARD MANUAL OF
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2. Notice of reliance on dictionary definitions of the terms “guest book”
and “alternative”;6
3. Notice of reliance on the prosecution history for Registration No.
4832768 for the AC ALTERNATIVE;7
4. Notice of reliance on the prosecution history for Registration No.
4556874 for the ENA EARTH’S NATURAL ALTERNATIVE;8
5. Notice of reliance on copies of Respondent’s webpages posted on the
ETSY.com website;9
6. Notice of reliance on copies of third-party websites using the term
“Guest Book Alternative”;10
7. Testimony declaration of Eric Wang, Petitioner’s co-owner;11

PROCEDURE (TBMP) § 704.11 ( 2019); see also Syndicat Des Proprietaires Viticulteurs De
Chateauneuf-Du-Pape v. Pasquier DesVignes, 107 USPQ2d 1930, 1932 n.7 (TTAB 2013)
(documents produced in response to a request for production of documents may not be
introduced under notice of reliance); ShutEmDown Sports Inc. v. Lacy,102 USPQ2d 1036 at
n.8 (TTAB 2012) (produced documents cannot be introduced by notice of reliance alone); Nike
Inc. v. Maher, 100 USPQ2d 1018, 1020-21 n.2 (TTAB 2011) (produced documents not
considered because not admissible under notice of reliance).
If no documents exist which are responsive to a document request, a party’s response that no
documents exist may be made of record. TBMP § 704.11; see also City Nat’l Bank v. OPGI
Mgmt. GP Inc./Gestion OPGI Inc., 106 USPQ2d 1668, 1674n.10 (TTAB 2013) (responses to
document production requests are admissible solely for purposes of showing that a party has
stated that there are no responsive documents); ShutEmDown Sports, 102 USPQ2d 1036 n.7
(TTAB 2012) (written responses to document requests indicating that no documents exist
may be submitted by notice of reliance). Accordingly, we consider the Respondent’s responses
to Petitioner’s request for production of documents only to the extent that Respondent states
that it does not have any responsive documents.
6 26 TTABVUE 52-56.
7 26 TTABVUE 68-108.
8 26 TTABVUE 110-147.
9 26 TTABVUE 149-164.
10 26 TTABVUE 166-214.
11 27 TTABVUE.
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8. Testimony declaration of Ellen McCaleb, owner of the Etsy shop
Headwaters Studio;12 and
9. Notice of reliance on Respondent’s responses to Petitioner’s request
for admissions Nos. 4 and 8.13
B. Respondent’s testimony and evidence.
Respondent introduced the testimony declaration of Kirstin Berry, Respondent’s
owner.14
In its brief, Respondent stated that it introduced the following items:15
1. Domain registration for guestbookalternative.com;

2. Screenshots of guestbookalternative.com website with Respondent’s mark in
composite format prominently featured in website header followed by ™
symbol;

3. Screenshots of Etsy storefront with Respondent’s trademark in composite
format prominently featured in website header followed by ™ symbol;

4. Screenshots of various internet profiles with trademark featured in standard
characters;

5. Specimen of Use approved by USPTO Examining Attorney;

6. Respondent’s USPTO Supplemental Trademark Registration;

7. Screenshots of non-guest book related products sold under the mark Guest
Book Alternative;

8. Redacted product sales receipt issued to customer in 2011; and

12 28 TTABVUE.
13 29 TTABVUE. Respondent answered Petitioner’s request for admission No. 8 by stating,
that it did not recall. “[U]nlike an admission (or a failure to respond which constitutes an
admission), the denial of a request for admission establishes neither the truth nor the falsity
of the assertion, but rather leaves the matter for proof at trial. Cf. Fed. R. Civ. P. 36(b).” Life
Zone Inc. v. Middleman Grp. Inc., 87 USPQ2d 1953, 1957 n.10 (TTAB 2008). Accordingly, we
will not consider Respondent’s response to admission request No. 8.
14 30 TTABVUE.
15 Respondent’s Brief, p. 5 (34 TTABVUE 6).
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9. Representative sample of USPTO TESS database results showing at least 80
similar trademarks including the word ALTERNATIVE followed (or
preceded) by a descriptive noun, each have source-indicating qualities and a
history of registration on the Supplemental Registrar.

Although Respondent introduced these documents as part of its cross-motion for
summary judgment,16 Respondent did not introduce them into the record during its
assigned testimony period. Petitioner filed a motion to strike the evidence referred to
by Respondent on the ground that Respondent did not properly introduce the
evidence.17
Trademark Rule 2.121(a), 37 C.F.R. § 2.121(a) provides, in pertinent part, that
“No testimony shall be taken or evidence presented except during the times assigned,
unless by stipulation of the parties approved by the Board, or upon motion granted
by the Board, or by order of the Board.” See also Baseball Am. Inc. v. Powerplay
Sports, 71 USPQ2d 1844, 1846 n.8 (TTAB 2004) (documentary evidence submitted
outside assigned testimony period given no consideration); M-Tek Inc. v. CVP Sys.
Inc., 17 USPQ2d 1070, 1072 (TTAB 1990) (untimely deposition stricken).
As noted in footnote 3 of the Board’s May 17, 2018 Order denying the motions for
summary judgment:
The parties should note that all evidence submitted in
support of and in opposition to the motions for summary
judgment is of record only for consideration of the motions.
Any such evidence to be considered in final hearing must
be properly introduced in evidence during the appropriate
trial periods. See Levi Strauss & Co. v. Josephs Sportswear

16 20 TTABVUE 8-35.
17 35 TTABVUE 11.
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Inc., 28 USPQ2d 1464 (TTAB 1993); Pet Inc. v. Bassetti,
219 USPQ 911 (TTAB 1983).18
Although Respondent’s summary judgment evidence forms part of the proceedings in
this cancellation, the evidence is part of the evidentiary record only if Respondent
properly introduced it during its assigned trial period. See Levi Strauss & Co., 28
USPQ at 1465 n.2.
Petitioner’s motion to strike Respondent’s evidence is granted. We will not
consider the evidence Respondent filed in support of its motion for summary
judgment but failed to reintroduce during its assigned testimony period.
II. Standing
Standing is a threshold issue that must be proven by a plaintiff in every inter
partes case. To establish standing in an opposition or cancellation proceeding, a
plaintiff must show “both a ‘real interest’ in the proceedings as well as a ‘reasonable
basis’ for its belief of damage.” Empresa Cubana Del Tabaco v. Gen. Cigar Co.,
753 F.3d 1270, 111 USPQ2d 1058, 1062 (Fed. Cir. 2014) (quoting ShutEmDown
Sports, 102 USPQ2d at 1041); Ritchie v. Simpson, 170 F.3d 1092, 50 USPQ2d 1023,
1025 (Fed. Cir. 1999); Lipton Indus., Inc. v. Ralston Purina Co., 670 F.2d 1024, 213
USPQ 185, 189 (CCPA 1982). The Court of Appeals for the Federal Circuit has
enunciated a liberal threshold for determining standing in Board proceedings. Ritchie
v. Simpson, 50 USPQ2d at 1030.

18 23 TTTABVUE 8.
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When challenging a term as generic, a plaintiff may establish standing by showing
that it is engaged in the sale of goods that are the same as or related to those covered
by the challenged mark. See Eastman Kodak Co. v. Bell & Howell Document Mgmt.
Prods. Co., 23 USPQ2d 1878, 1879 (TTAB 1992), aff’d, 994 F.2d 1569, 26 USPQ2d
1912 (Fed. Cir. 1993); Binney & Smith Inc. v. Magic Marker Indus., Inc., 222 USPQ
1003, 1010 (TTAB 1984).
Eric Wang, Petitioner’s co-owner, testified that Petitioner sells “wedding,
birthday, and party products, namely, guest books, photo prints, cake toppers, and
party favors”19 and that Petitioner uses “the phrase ‘Guest Book Alternative’ as a
description to describe [Petitioner’s] products as an alternative to traditional guest
books for weddings, baby showers, birthdays, anniversaries and corporate events.”20
Because Respondent registered GUEST BOOK ALTERNATIVE, Petitioner “had to
change [Petitioner’s] listings and key words to avoid violation of the trademark. This
has caused both [Petitioner’s] views and sales to drop and prevented [Petitioner] from
being discovered by more potential customers [through the Internet].”21 There is no
doubt that Petitioner is selling some of the same goods as those covered by the
challenged mark. Petitioner and Respondent are competitors. Petitioner has a
legitimate interest in preventing Respondent from gaining an alleged unfair

19 Wang Testimony Decl. ¶1 (27 TTABVUE 4).
20 Id. at ¶2 (27 TTABVUE 4-5).
21 Id. at ¶3 (27 TTABVUE 5).
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competitive advantage by registering a purportedly generic term for art prints and
graphic art prints. Petitioner has established its standing.
Respondent, in its brief, does not contest that Petitioner has standing.
Where a plaintiff has proven standing as to at least one properly pleaded ground,
it has established standing for any other legally sufficient ground. See, e.g., Coach
Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1727-28
(Fed. Cir. 2012) (“[O]nce an opposer meets the requirements for standing, it can rely
on any of the statutory grounds for opposition set forth in 15 U.S.C. § 1052.”);
Petróleos Mexicanos v. Intermix S.A., 97 USPQ2d 1403, 1405 (TTAB 2010).
III. Whether GUEST BOOK ALTERNATIVE is generic?
A designation is generic if it refers to the class or category of goods or services on
or in connection with which it is used. In re Dial-A-Mattress Operating Corp., 240
F.3d 1341, 57 USPQ2d 1807 (Fed. Cir. 2001) (citing H. Marvin Ginn Corp. v. Int’l
Ass’n of Fire Chiefs, Inc., 782 F.2d 987, 228 USPQ 528 (Fed. Cir. 1986). “[A] term
[also] is generic if the relevant public understands the term to refer to part of the
claimed genus of goods or services, even if the public does not understand the term to
refer to the broad genus as a whole.” In re Cordua Rests., Inc., 823 F.3d 594, 118
USPQ2d 1632, 1638 (Fed. Cir. 2016) (“[T]he term ‘pizzeria’ would be generic for
restaurant services, even though the public understands the term to refer to a
particular sub-group or type of restaurant rather than to all restaurants”).
In a cancellation proceeding, it is Petitioner’s burden to prove that GUEST BOOK
ALERNATIVE is generic by a preponderance of the evidence. See Frito-Lay N. Am.
v. Princeton Vanguard, LLC, 124 USPQ2d 1184, 1187 (TTAB 2017) (citing Princeton
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Vanguard, LLC v. Frito-Lay N. Am., Inc., 786 F.3d 960, 114 USPQ2d 1827, 1830 (Fed.
Cir. 2015)). “The critical issue in genericness cases is whether members of the
relevant public primarily use or understand the term … to refer to the genus of goods
or services in question.” Royal Crown, 127 USPQ2d at 1046 (quoting Marvin Ginn,
228 USPQ at 530); Princeton Vanguard, 114 USPQ2d at 1830.
The Federal Circuit has set forth a two-step inquiry to determine whether a mark
is generic: First, what is the genus (category or class) 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? Marvin Ginn, 228 USPQ at 530.
The perception of the relevant public is the chief consideration in determining
whether a term is generic. See Princeton Vanguard, LLC v. Frito-Lay N. Am., Inc.,
114 USPQ2d at 1833. The Board may obtain evidence of the public’s understanding
of a term from “any competent source, such as consumer surveys, dictionaries,
newspapers and other publications.” Id. at 1830 (quoting In re Northland Aluminum
Prods., Inc., 777 F.2d 1556, 227 USPQ 961, 963 (Fed. Cir. 1985)). “[A] term can be
generic for a genus of goods or services if the relevant public … understands the term
to refer to a key aspect of that genus.” Royal Crown, 127 USPQ2d at 1046 (quoting In
re Cordua Rests., Inc., 823 F.3d 594, 118 USPQ2d 1632, 1637 (Fed. Cir. 2016)).
With respect to the first part of the Marvin Ginn inquiry, the genus may be defined
by the goods or services identified in the application. See In re Reed Elsevier Props.
Inc., 482 F.3d 1376, 82 USPQ2d 1378, 1380 (Fed. Cir. 2007); Magic Wand Inc. v. RDB
Inc., 940 F.2d 638, 19 USPQ2d 1551, 1552 (Fed. Cir. 1991) (a proper genericness
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inquiry focuses on the identification set forth in the application or certificate of
registration). Respondent, in its brief, agrees that the description of goods in the
registration defines the genus.22
Petitioner, however, contends that the genus should be “guest books for special
occasions in a non-traditional format, including art prints and graphic art prints used
for that purpose.”23 Petitioner bases its contention on the evidence of record,
discussed below, specifically Respondent’s advertising that it sells guest book
alternatives. For example, on Respondent’s webpage posted on the ETSY.com
website, Respondent explains the meaning of the term “alternative guest book.”
What is an alternative guest book?
It is a print designed with a “guest signature spots” for each
of your guests to sign at the wedding and then can be hung
in your home afterwards. Instead of a traditional book that
guests sign in.24
In another ETSY.com webpage, Respondent sends the following advertising message
reproduced below:
Our couple portrait guest book alternative captures the
love and well wishes of your wedding guests in a fun, new
way. Unlike a traditional guest book, guests sign this large
print instead of a book. Afterwards, you can hang it in your
home as a keepsake.25
We find that the Petitioner more accurately describes the genus: “guest books for
special occasions in a non-traditional format, including art prints and graphic art

22 Respondent’s Brief, p. 8 (34 TTABVUE 9).
23 Petitioner’s Brief, p. 19 (33 TTABVUE 20).
24 26 TTABVUE 149.
25 26 TTABVUE 152.
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prints used for that purpose.” See In re DNI Holdings Ltd., 77 USPQ2d 1435, 1437-
38 (TTAB 2005) (the proposition that “a proper genericness inquiry focuses on the
description of services set forth in the certificate of registration” is based on premise
that recitation of services accurately reflects actual conditions of use of involved
term); see also Reed Elsevier Properties., 82 USPQ2d at 1380 (affirming the Board’s
finding that applicant’s provision of information regarding the law, legal news and
legal services necessarily includes providing information about lawyers
notwithstanding applicant's deletion of those services from its recitation); In re Katch,
LLC, 2019 USPQ2d 233842 *3 (TTAB 2019) (relying on the record to include the field
of health insurance in defining the genus).26
The second part of the Marvin Ginn inquiry requires us to consider whether
the term sought to be registered is understood by the relevant public primarily
to refer to that genus of services. The relevant public encompasses “actual [and]
potential purchasers of . . . goods or services” identified in the application or registration.
Loglan Inst. Inc. v. Logical Language Grp. Inc., 962 F.2d 1038, 22 USPQ2d 1531, 1533
(Fed. Cir. 1992) (citation omitted); Sheetz of Del., Inc. v. Doctor’s Assocs. Inc., 108
USPQ2d 1341, 1351 (TTAB 2013). Based on a review of the testimony and evidence,
the relevant public is ordinary consumers planning and celebrating special occasions.
We now turn to the manner in which the relevant consumers encounter the term
GUEST BOOK ALTERNATIVE when it is used in connection with art prints and graphic

26 Even if we consider the genus to the products in Respondent’s description of goods (art
prints and graphic art prints), our findings of fact remain the same.
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art prints to determine how they perceive the term. First, we look at the definitions
of the terms comprising the designation GUEST BOOK ALTERNATIVE:
• “Guest Book” is defined as “a book of blank pages in which guests at an event
(such as a wedding or funeral) or a place (such as an art gallery) sign their names.”27
• “Alternative” is defined, inter alia, as “not usual or traditional.”28
Thus, GUEST BOOK ALTERNATIVE means and conveys the commercial impression
of a nontraditional guest book.
Consumers encounter the term GUEST BOOK ALTERNATIVE posted on the
Internet as discussed and reproduced below.
The first page of Respondent’s specimen of use is a “screen shot of website” and
we reproduce it below:29

27 Merriam-Webster.com (26 TTABVUE 53).
28 Id. at 26 TTABVUE 55.
29 We have modified the specimen so that all the relevant parts are legible.
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Home > Couple Portrait Guest Book Alternative > Guest Book Alternative – Silhouettes with Balloons

Silhouette Guest Book Alternative
This simple and elegant guest book alternative features a
couple silhouette holding a balloon bunch. This unique
design is made for your guests to sign at your …
The second page of the specimen advertises Respondent’s “Wedding Guest Book
Alternative – Couple,” “Wedding Guest Book Alternative – Skyline Portrait,”
“Wedding Guest Book Alternative – Venue,” and “Wedding Guest Book Alternative –
Art Deco.” The example reproduced below is illustrative.
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Respondent’s webpage on the ETSY.com website is similar to its specimen. The
excerpt from Respondent’s webpage on the ETSY.com website reproduced below is
representative:30

30 26 TTABVUE 149. This webpage features Respondent’s explanation of an “alternative
guest book” discussed above.
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The three third-party uses of GUEST BOOK ALTERNATIVE reproduced below
are representative of the third-party uses introduced by Petitioner.
31

DETAILS
Wedding Guest Book Alternative
This is a unique wedding guest book. Traditional guest
books are usually forgotten after the wedding. Since they
are books they get put on the shelf and [sic] never looked
out [sic]. Our alternative guest books get signatures from
your guests straight on to a ready to hang canvas. This
creates the ultimate wedding keepsake that is ready to be
displayed on your wall.

31 26 TTABVUE 166. We have modified the webpage so that all the relevant parts are legible.
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32

Description
Make that special day even more so with this gorgeous and
unique guestbook alternative.
33

32 26 TTABVUE 169. We have modified the webpage so that all the relevant parts are legible.
33 26 TTABVUE 173.
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A search for “guest book alternative” on the ESTY.com website retrieves a
webpage displaying the term GUEST BOOK ALTERNATIVE as reproduced below:34

The webpage displays different examples of GUEST BOOK ALTERNATIVES. In
addition, Amazon.com advertises the sale of “Wedding Guest Book Alternative” by
third parties such as Ginger Ray, Cloud Keepsakes, Americanflat, and many others.35
As noted above, GUEST BOOK ALTERNATIVE is generic if the consumers who
purchase art prints or graphic art prints use or understand the term GUEST BOOK
ALTERNATIVE to refer to a genus, category, or class of guest books for special
occasions in a non-traditional format, including art prints and graphic art prints used
for that purpose. Royal Crown, 127 USPQ2d at 1046 (quoting Marvin Ginn, 228
USPQ at 530); Princeton Vanguard, 114 USPQ2d at 1830.
In making this determination, we assess the term as a whole, taking into account
the meaning of the terms that comprise it:
“An inquiry into the public’s understanding of a mark
requires consideration of the mark as a whole. Even if each
of the constituent words in a combination mark is generic,
the combination is not generic unless the entire
formulation does not add any meaning to the otherwise
generic mark.” In re Steelbuilding.com, 415 F.3d 1293,
1297 [75 USPQ2d 1420, 1421] (Fed. Cir. 2005); see In re

34 26 TTABVUE 184-193 and 210-214.
35 26 TTABVUE 194-209.
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Am. Fertility Soc’y, 188 F.3d 1341, 1347 [51 USPQ2d 1832,
1837] (Fed. Cir. 1999) (“[I]f the compound word would
plainly have no different meaning from its constituent
words, and dictionaries, or other evidentiary sources,
establish the meaning of those words to be generic, then
the compound word too has been proved generic. No
additional proof of the genericness of the compound word
is required.”).
In re 1800Mattress.com IP LLC, 586 F.3d 1359, 92 USPQ2d 1682, 1684 (Fed. Cir.
2009).
The term GUEST BOOK ALTERNATIVE identifies a class of guest books,
namely, the subclass of nontraditional guest books that include art prints and graphic
art prints. The record shows that the components of the term GUEST BOOK
ALTERNATIVE retain their original, separate meanings when used together. The
combination of the term “Guest Book” with “Alternative” does not create a new
meaning or engender a different commercial impression. See Princeton Vanguard,
114 USPQ2d at 1832 (a proposed mark is generic if “it can be shown that the ‘public
understands the individual terms to be generic,’ and the joining of those terms into
one compound word provides no additional meaning.”); In re Gould Paper Corp.,
834 F.2d 1017, 5 USPQ2d 1110, 1112 (Fed. Cir. 1987) (the words “screen” and “wipe”
are “generic in the compound as individually, and the compound thus created is itself
generic.”); In re Mecca Grade Growers, LLC, 125 USPQ2d 1950, 1959 (TTAB 2018).
The record further includes many third-party uses of “Guest Book Alternative” as a
whole, including the CanvasVows, My Little Red Wren, and Little Orchard Craft
websites reproduced above, as well as the excerpts from the ETSY.com and
AMAZON.com websites.
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In opposition to Petitioner’s evidence, Respondent argues that it has spent
approximately one million dollars in advertising to help it generate over three million
dollars in sales.36 In other words, by virtue of Respondent’s advertising and sales, the
term GUEST BOOK ALTERNATIVE has acquired distinctiveness and functions as
a trademark. However, the registration of a designation that is generic is absolutely
barred for reasons of public policy, and no amount of evidence of acquired
distinctiveness (i.e., commercial success) will suffice to establish a proprietary or legal
right in such a designation sufficient to support registration. See Northland
Aluminum Prods., 27 USPQ at 964; Abercrombie & Fitch Co. v. Hunting World, Inc.,
537 F.2d 4, 189 USPQ 759, 764-65 (2d Cir. 1976); In re Soccer Sport Supply Co., Inc.,
507 F.2d 1400, 184 USPQ 345, 347 n.3 (CCPA 1975); In re Int’l Business Machines
Corp., 81 USPQ2d 1677, 1684 (TTAB 2006); In re Analog Devices, Inc., 6 USPQ2d
1808, 1809 (TTAB 1988), aff’d 871 F.2d 1097, 10 USPQ2d 1879 (Fed. Cir. 1989).
The [Trademark] Act provides for the cancellation of a
registered mark if at any time it “becomes the common
descriptive name of an article or substance,” § 14(c). This
means that even proof of secondary meaning, by virtue of
which some “merely descriptive” marks may be registered,
cannot transform a generic term into a subject for
trademark. As explained in J. Kohnstam, Ltd. v. Louis
Marx and Company, 280 F.2d 437, 440, 47 CCPA 1080
(1960), no matter how much money and effort the user of a
generic term has poured into promoting the sale of its
merchandise and what success it has achieved in securing
public identification, it cannot deprive competing
manufacturers of the product of the right to call an article

36 Respondent’s Brief, p. 9 (34 TTABVUE 10). In response to Petitioner’s interrogatory No.
19 (advertising expenditures for each calendar year), Respondent answered $75,000. In
Response to Petitioner’s interrogatory No. 20 (sales for each calendar year), Respondent
Answered $400,000. 26 TTABVUE 19-20 and 24.
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by its name. See, accord, Application of Preformed Line
Products Co., 323 F.2d 1007, 51 CCPA 775 (1963); Weiss
Noodle Co. v. Golden Cracknel and Specialty Co., 290 F.2d
845, 48 CCPA 1004 (1961); Application of Searle & Co., 360
F.2d 650, 53 CCPA 1192 (1966). We have recently had
occasion to apply this doctrine of the impossibility of
achieving trademark protection for a generic term, CES
Publishing Corp. v. St. Regis Publications, Inc., 531 F.2d
11 (1975).
Abercrombie & Fitch, 189 USPQ at 764.
Respondent also argues that it makes proper use of the ™ and ® symbols.37
Evidence of proper trademark use does not create a mixed record that overcomes
Petitioner’s evidence that GUEST BOOK ALTERNATIVE is generic. See Int’l
Business Machines, 81 USPQ2d at 1684. It would be easy for Respondent to ensure
that its web site and promotional materials regarding its products, properly use the
term GUEST BOOK ALTERNATIVE as a technical trademark. However, in this
case, there is no evidence that Respondent uses either trademark symbol or makes
proper trademark use of GUEST BOOK ALTERNATIVE. For example, Respondent’s
specimen of use, reproduced above, does not use GUEST BOOK ALTERNATIVE as
a trademark, nor does Respondent make proper technical trademark use on its
webpage posted on the ETSY.com website. The term is used simply to convey that the

37 Respondent’s Brief, p. 9 (34 TTABVUE 10). The presence of the letters “TM” or the federal
registration symbol ® cannot transform an otherwise unregistrable designation into a
registrable mark. See, e.g., In re Crystal Geyser Water Co., 85 USPQ2d 1374, 1379 n.4 (TTAB
2007) (“use of the TM designation does not in itself elevate descriptive matter to a trademark”
for purposes of determining acquired distinctiveness); In re Active Ankle Sys. Inc., 83 USPQ2d
1532, 1538 n.5 (TTAB 2007); In re Remington Prods. Inc., 3 USPQ2d 1714, 1715 (TTAB 1987);
In re Anchor Hocking Corp., 223 USPQ 85, 88 (TTAB 1984); In re Minnetonka, Inc., 212 USPQ
772, 779 n.12 (TTAB 1981). Whether a term performs the function of a trademark depends
on its manner of use and the probable impact of that use on customers. In re Moody's Investors
Serv. Inc., 13 USPQ2d 2043, 2047 (TTAB 1989).
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product is a nontraditional guest book (e.g., “Guest Book Alternative – Silhouettes
with Balloons.”). Respondent states in its specimen:
Silhouette Guest Book Alternative
This simple and elegant guest book alternative features a
couple silhouette holding a balloon bunch. This unique
design is made for your guests to sign at your …
Respondent argues that the Examining Attorney held that GUEST BOOK
ALTERNATIVE was merely descriptive and not generic. The EA even suggested the
supplemental register.38 However, the Board must decide each case on its own merits.
In re Owens-Corning Fiberglas Corp., 774 F.2d 1116, 227 USPQ 417, 424
(Fed.Cir.1985). The USPTO’s allowance of Respondent’s registration does not bind
the Board. In re Nett Designs, Inc., 236 F.3d 1339, 57 USPQ2d 1564, 1566 (Fed. Cir.
2001).
Finally, Respondent contends that GUEST BOOK ALTERNATIVE is not generic
because there are other terms available to describe nontraditional guest books that
may include art prints or graphic art prints.39 However, there can be more than one
generic term for a particular genus of goods. Any term that the relevant public
understands to refer to the genus is generic. In re Sun Oil Co. , 426 F.2d 401, 165
USPQ 718, 719 (CCPA 1970) (Rich, J., concurring) (“All of the generic names for a
product belong in the public domain”); Roselux Chem. Co., Inc. v. Parsons Ammonia
Co., Inc., 299 F.2d 855 , 132 USPQ 627, 632 (CCPA 1962) (a product may have more

38 Respondent’s Brief, pp. 9-10 (34 TTABVUE 10-11).
39 Respondent’s Brief, p. 10 (34 TTABVUE 11).
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than one common descriptive name); In re Women’s Publ’g Co. Inc., 23 USPQ2d 1876,
1877 (TTAB 1992).
As noted above, the critical issue in genericness cases is whether members of the
relevant public primarily use or understand the term sought to be registered to refer
to the genus (category or class) of the goods. In this regard, competitors’ use of the
term GUEST BOOK ALTERNATIVE, as we have in this case, is evidence that a term
may be generic. See BellSouth Corp. v. DataNational Corp., 60 F.3d 1565, 35 USPQ2d
1554, 1558 (Fed. Cir. 1995).
[E]vidence of competitors’ use of particular words as the
name of their goods or services, is . . . persuasive evidence
that those words would be perceived by purchasers as a
generic designation for the goods or services.
Phillip Morris Inc. v. Williamson Tobacco Corp., 230 USPQ 172, 176 (TTAB 1986).
Petitioner’s evidence establishes competitor use of the term GUEST BOOK
ALTERNATIVE in a generic manner for guest books for special occasions in a non-
traditional format, including art prints and graphic art prints used for that purpose.
We find that GUEST BOOK ALTERNATIVE is generic when used in connection
with art prints and graphic art prints. Because GUEST BOOK ALTERNATIVE is
generic, it does not meet the statutory definition of a mark because it is incapable of
denoting a unique source. In re Merrill Lynch, Pierce, Fenner, & Smith, Inc., 828 F.2d
1567, 4 USPQQ2d 1141, 1142 (Fed. Cir. 1987) (“Generic terms, by definition
incapable of indicating source, are the antithesis of trademarks, and can never attain
trademark status.”). Therefore, GUEST BOOK ALTERNATIVE does not function as
a trademark. Goodyear’s Rubber Mfg. Co. v. Goodyear Rubber Co., 128 U.S. 598, 603
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(1888) (names of articles cannot be adopted as trademarks); Roux Labs., Inc. v.
Clairol, Inc., 427 F.2d 823, 166 USPQ 34, 39 (CCPA 1970) (a generic term is the
antithesis of a trademark); In re Bonnie Keller Collections Ltd., 6 USPQ2d 1224, 1227
(TTAB 1987) (“a generic term is incapable of functioning as a trademark.”);
RESTATEMENT THIRD, UNFAIR COMPETITION § 15, comment a (1995) (“Generic
designations are not subject to appropriation as trademarks at common law and are
ineligible for registration under state and federal trademark statutes.”).
Decision: The petition to cancel Registration No. 5019553 for the mark GUEST
BOOK ALTERNATIVE for “art prints; graphic art prints” is granted. Registration
No. 5019553 will be cancelled in due course.