Spark Networks plcv.JewishAmericanSingles.com, Inc.

Trademark Trial and Appeal Board

May 30, 2008

No. 91165925 (T.T.A.B. May. 30, 2008)

Mailed:
May 30, 2008

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
______

Spark Networks plc
v.
JewishAmericanSingles.com, Inc.
_____

Opposition No. 91165925
to application Serial No. 78460372
filed on August 2, 2004; and,
Counterclaim to cancel Registration No. 2608475
_____

Victor T. Fu of Richardson & Patel LLP for Spark Networks
plc.

Matthew Schwartz for JewishAmericanSingles.com, Inc.
______

Before Quinn, Rogers and Bergsman, Administrative Trademark
Judges.

Opinion by Bergsman, Administrative Trademark Judge:

JewishAmericanSingles.com, Inc. filed a use based
application for the mark JEWISHAMERICANSINGLES.com and
design, shown below, for services ultimately identified as
“on-line dating and social networking services,” in Class
45. Applicant disclaimed the exclusive right to use
JEWISHAMERICANSINGLES.

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Opposition No. 91165925
2
Spark Networks plc opposed the registration of
applicant’s mark on the ground of priority of use and
likelihood of confusion under Section 2(d) of the Trademark
Act of 1946, 15 U.S.C. §1052(d). Specifically, opposer
alleged that applicant’s mark JEWISHAMERICANSINGLES.com and
design for “on-line dating and social networking services”
is likely to cause confusion with opposer’s registered mark
AMERICAN SINGLES for “computer services, namely, providing a
web site for facilitating the introduction of individuals,”
in Class 42.1
Applicant denied the salient allegations in the notice
of opposition and filed a counterclaim to cancel opposer’s
pleaded registration. As grounds for the counterclaim,
applicant alleged that opposer’s mark “is at least merely
descriptive, geographically descriptive or geographically
misdescriptive of the population to whom the services in
Registration No. 2,608,475 are directed.” Opposer denied
the essential allegations in the counterclaim to cancel.
On May 25, 2007, opposer filed a withdrawal of its
opposition with prejudice. The opposition was dismissed
with prejudice in the Board’s August 10, 2007 order.
However, applicant elected to continue to prosecute the
counterclaim to cancel opposer’s pleaded registration.

1 Registration No. 2608475, issued August 20, 2002.
Opposition No. 91165925
3
The Record
By operation of Trademark Rule 2.122, 37 CFR §2.122,
the record includes the pleadings and the registration file
for opposer’s mark. The record also includes the following
testimony and evidence:
A. Applicant’s Evidence, as plaintiff in the counterclaim.

Applicant filed a notice of reliance on the following
items:
1. Opposer’s supplemental responses to applicant’s
first set of interrogatories;
2. Opposer’s supplemental responses and objections to
applicant’s requests for admission; and,
3. Opposer’s responses and objections to applicant’s
supplemental interrogatories.2
Applicant also sought to introduce an excerpt from
opposer’s web site, namely, opposer’s application form for a
user of its computer services to complete (i.e., opposer’s
client application form). Trademark Rule 2.120(e), 37 CFR
§2.120(e), provides that printed publications, such as books
and periodicals, available to the general public in
libraries or in general circulation, may be introduced into
evidence through a notice of reliance. However, there is no

2 It was unnecessary for applicant to separately proffer its
requests for admission and its supplemental interrogatories
through its notice of reliance because those documents were
encompassed by opposer’s responses.
Opposition No. 91165925
4
provision for introducing into evidence through a notice of
reliance an excerpt from a web site.
Internet evidence is not proper subject
matter for introduction by notice of
reliance because the evidence is not
self-authenticating. As the Board has
stated in the past, the element of self-
authentication cannot be presumed to be
capable of being satisfied by
information obtained and printed out
from the Internet.

Alfacell Corp. v. Anticancer Inc., 71 USPQ2d 1301, 1302 n.3
(TTAB 2004), citing Raccioppi v. Apogee Inc., 47 USPQ2d
1368, 1370 (TTAB 1998). See also TBMP §704.08 (2nd ed. rev.
2004). Accordingly, the excerpt from opposer’s web site
comprising the opposer’s client application form has been
given no consideration.3
B. Opposer’s evidence, as defendant in the counterclaim.
Opposer introduced applicant’s answers to opposer’s
interrogatories through a notice of reliance.
Standing
The fact that opposer filed a notice of opposition
against applicant, since withdrawn, is enough to demonstrate
applicant’s interest in the counterclaim to cancel opposer’s

3 Applicant also attached a copy of this exhibit to its brief.
Opposer objected to the introduction of the photocopy of the web
site as untimely. Opposer’s objection is well taken. Exhibits
attached to briefs can be given no consideration unless they were
previously made of record during the party’s testimony period.
TBMP §704.05(b) (2nd ed. rev. 2004) and the cases cited therein.
Accordingly, opposer’s objection is sustained and the excerpt
from opposer’s web site has been given no consideration.
Opposition No. 91165925
5
pleaded registration, and therefore to establish its
standing. See Syntex (U.S.A.) Inc. v. E.R. Squibb & Sons,
Inc., 14 USPQ2d 1879, 1880 – 1881 (TTAB 1990) (opposer, the
party who originally brought the proceeding and put the
validity of its registration at issue, may not deprive
applicant of its standing by withdrawing its opposition).
Issues to be Decided
In its counterclaim to cancel opposer’s pleaded
registration, applicant alleged that opposer’s mark “is at
least merely descriptive, geographically descriptive or
geographically misdescriptive of the population to whom the
services in Registration No. 2,608,475 are directed.”
However, in its brief, applicant only argued that it sought
to cancel opposer’s registration pursuant to Section 2(e)(2)
of the Trademark Act of 1946, 15 U.S.C. §1052(e).
Specifically, applicant asserted that it “takes the position
that the above-referenced registered trademark owned by
Counter-Defendant Sparks Networks violates the
aforereferenced sections (sic) of the Trademark Act as being
geographically deceptive and deceptively misdescriptive.”4
In addition, applicant argued that “[r]egistrant’s mark is
misdescriptive and deceptive geographically in relation to
the services provided and the origin of registrant,” and
that “[r]egistrant’s mark, being deceptively misdescriptive,

4 Applicant’s Brief, p. 1.
Opposition No. 91165925
6
geographically misdescriptive and employing generic terms,
is not entitled to be registered.”5
Although applicant pleaded that the mark in opposer’s
pleaded registration is merely descriptive, it did not
present any arguments in support of that claim in its brief.
We therefore deem applicant to have waived its pleaded claim
that the mark in opposer’s pleaded registration is merely
descriptive, and we have given it no consideration. See
Corporacion Habanos S.A. v. Guantanamera Cigars Co., 86
USPQ2d 1473, 1474 n.2 (TTAB 2008); Krause v. Krause
Publications Inc., 76 USPQ2d 1904, 1906 n.2 (TTAB 2005).
To the extent that applicant has argued that the mark
in opposer’s pleaded registration is deceptively
misdescriptive pursuant to Section 2(e)(1) of the Trademark
Act of 1946, 15 U.S.C. §1052(e)(1), that is not a pleaded
claim. Moreover, applicant never sought to amend its
counterclaim to assert that opposer’s mark AMERICAN SINGLES
is deceptively misdescriptive. Because applicant may not
rely on an unpleaded claim, we must determine whether
applicant’s attempt to argue that opposer’s mark is
deceptively misdescriptive was tried by implied consent.
Implied consent to the trial of an
unpleaded issue can be found only where
the nonoffering party (1) raised no
objection to the introduction of
evidence on the issue, and (2) was

5 Applicant’s Brief, p. 4.
Opposition No. 91165925
7
fairly apprised that the evidence was
being offered in support of the issue.

TBMP §507.03(b) (2nd ed. rev. 2004). See also Fed. R. Civ.
P. 15(b).
We note that in its notice of reliance, applicant
indicated that it was introducing opposer’s client
application form “for the purpose of showing that the use of
the term ‘American’ as modifying ‘singles’ is not only a
descriptive term but in this case misdescriptive.”
Applicant also stated in its notice of reliance that it was
going to rely on opposer’s statement that it is “a citizen
of the United Kingdom” to show “that if the term ‘American’
is designed to reflect, as a descriptive term, the
citizenship of the users of the name it is in fact a
misdesignation.” Opposer did not object to the evidence in
applicant’s notice of reliance on the ground that the
evidence was being introduced to prove an unpleaded claim.
Nor did opposer object to the references in applicant’s
brief regarding whether opposer’s mark is deceptively
misdescriptive. In fact, opposer acknowledged that
applicant was seeking to cancel opposer’s pleaded
registration on the ground that the mark AMERICAN SINGLES is
“‘geographically deceptive and deceptively misdescriptive’
based on Section 2(e)(2) of the Trademark Act,” and, in
opposition to applicant’s claim that AMERICAN SINGLES is
deceptively misdescriptive, opposer argued that its mark was
Opposition No. 91165925
8
suggestive. In view thereof, we find that opposer was
fairly apprised that applicant was seeking to cancel
opposer’s pleaded registration on the ground that the mark
AMERICAN SINGLES is deceptively misdescriptive.
In contrast to the claim applicant pursued at trial,
applicant pleaded that the mark in opposer’s pleaded
registration is “geographically descriptive.” However, it
did not present any arguments in support of that claim in
its brief. We therefore deem applicant to have waived its
pleaded claim that the mark in opposer’s pleaded
registration is primarily geographically descriptive, and we
have given it no consideration. See Corporacion Habanos
S.A. v. Guantanamera Cigars Co., 86 USPQ2d at 1474 n.2;
Krause v. Krause Publications Inc., 76 USPQ2d at 1906 n.2.
In summary, we deem applicant to have waived its claims
that the mark in opposer’s pleaded registration is merely
descriptive or primarily geographically descriptive. We
find that the claim that the mark in opposer’s pleaded
registration is deceptively misdescriptive has been tried by
implied consent.6 Finally, we find that applicant’s claim

6 In reconciling the pleadings, proof, and arguments, we note
that this case has an unusual litigation history. Given that
there has been a trial by implied consent that the mark in
opposer’s pleaded registration is deceptively misdescriptive, it
seems odd that applicant would have waived its pleaded claim that
opposer’s mark is merely descriptive inasmuch as the same
essential questions and proof would apply to both claims.
Because applicant did not raise the issue of whether opposer’s
mark is merely descriptive in its brief, opposer had no reason to
address that issue. Therefore, as indicated above, we deem that
Opposition No. 91165925
9
that the mark in opposer’s pleaded registration is primarily
geographically deceptively misdescriptive has been both
pleaded and tried.
Findings of Fact
1. Opposer is a public limited company with its
principal place of business in London, England.7
Opposer also has offices in Beverly Hills, California and
Frankfort, Germany.8
2. Opposer renders online dating services through
eight (8) distinct web sites in over 236 countries.9
3. Opposer “does not require its members to provide
information concerning their religious affiliation or
national origin and several members do not voluntarily
provide such information.” Accordingly, opposer does not
know how many of its members are Americans.10
4. Opposer “caters to singles of all races,
ethnicities and interests and does not require its members
to be residents of the United States.”11

claim to have been waived even though it may have been
applicant’s best claim.
7 Notice of opposition, ¶1; opposer’s response to Interrogatory
No. 3.
8 Notice of opposition, ¶1.
9 Notice of opposition, ¶1; opposer’s response to Interrogatory
No. 3.
10 Opposer’s response to Interrogatory No. 11. See also opposer’s
response to Interrogatory No. 18.
11 Opposer’s response to request for admission No. 2. See also
opposer’s response to request for admission No. 3.
Opposition No. 91165925
10
Whether AMERICAN SINGLES Is Deceptively Misdescriptive?
The test for determining whether a mark is deceptively
misdescriptive as applied to the services involves a
determination of (1) whether the matter sought to be
registered misdescribes the services and, if so, (2) then
whether anyone is likely to believe the misrepresentation.
In re Woodward & Lothrop Inc., 4 USPQ2d 1412, 1413 (TTAB
1987); In re Quady Winery Inc., 221 USPQ 1213, 1214 (TTAB
1984).
The word “singles” is the plural form of the word
“single” which is defined as “unmarried” or “pertaining to
the unmarried state.”12 When used in connection with
opposer’s on-line dating services, the term AMERICAN SINGLES
means unmarried Americans. Opposer’s mark, therefore,
describes a group or class of consumers/members who may use
applicant’s services, and to whom applicant’s services may
be rendered. It is not a false statement. It does not
misdescribe opposer’s services. Accordingly, opposer’s mark
AMERICAN SINGLES is not deceptively misdescriptive.13

12 The Random House Dictionary of the English Language
(Unabridged), p. 1785 (2nd ed. 1987). The Board may take judicial
notice of dictionary evidence. University of Notre Dame du Lac
v. J.C. Gourmet Food Imports Co., 213 USPQ 594 (TTAB 1982),
aff’d, 703 F.2d 1372, 217 USPQ 505 (Fed. Cir. 1983).
13 We note again that although we have found opposer’s mark to be
merely descriptive, we are unable to cancel the registration.
Under the circumstances of this case, applicant waived its claim
that opposer’s mark is merely descriptive, and therefore it would
be unfair to cancel opposer’s registration on a ground that
neither party argued in its brief. When applicant argued that
opposer’s mark is deceptively misdescriptive, and not that it is
Opposition No. 91165925
11
Whether AMERICAN SINGLES Is Primarily
Geographically Deceptively Misdescriptive?

To prove that AMERICAN SINGLES for “computer services,
namely, providing a web site for facilitating the
introduction of individuals” is primarily geographically
deceptively misdescriptive, applicant must prove the
following:
1. The primary significance of AMERICAN SINGLES is a
generally known geographic location;
2. The consuming public is likely to believe that
AMERICAN SINGLES indicates the origin of the
“computer services, namely, providing a web site
for facilitating the introduction of individuals,”
when in fact the services do not come from
America; and,
3. The misrepresentation was a material factor in the
consumer’s decision.
In re California Innovations Inc., 329 F.3d 1334, 66 USPQ2d
1853, 1858 (Fed. Cir. 2003).
In this case, opposer’s mark AMERICAN SINGLES does not
primarily denote the United States as the origin of the
services because AMERICAN SINGLES does not primarily convey
geographic significance. As indicated above, the term

merely descriptive, opposer had no reason to address the
descriptiveness issue. Therefore, we cannot cancel opposer’s
registration on the ground that its mark is merely descriptive.
Opposition No. 91165925
12
AMERICAN SINGLES means unmarried Americans, not a geographic
location. See Hamilton-Brown Shoe Co. v. Wolf Brothers &
Co., 240 U.S. 251 (1916) (THE AMERICAN GIRL held not
primarily geographically descriptive for shoes); In re Jim
Crockett Promotions Inc., 5 USPQ2d 1455 (TTAB 1987) (THE
GREAT ALL AMERICAN BASH is suggestive of professional
wrestling matches, and not primarily geographically
descriptive).
Applicant argued that the primary significance of the
mark AMERICAN SINGLES is geographic because “America” is the
name of a geographic location and that the use of the
descriptive term “Singles” does not detract from the fact
that the mark as a whole is geographical.14 Applicant
relied on In re JT Tobacconists, 59 USPQ2d 1080 (TTAB 2001)
to support its argument. In that case, the Board found the
mark MINNESOTA CIGAR COMPANY for cigars, cigar cases, and
humidors to be primarily geographically descriptive because
the presence of the generic term “cigar company” did not
detract from the geographic significance of the mark. In JT
Tobacconists, the addition of the term “cigar company” did
not detract from the geographic significance of the mark
because the mark MINNESOTA CIGAR COMPANY engenders the
commercial impression of a cigar company in Minnesota. On
the other hand, the mark AMERICAN SINGLES used in connection

14 Applicant’s Brief, pp. 3-4.
Opposition No. 91165925
13
with a “computer services, namely, providing a web site for
facilitating the introduction of individuals” engenders the
commercial impression of unmarried Americans, a group or
class of people, rather than a geographic location. In
essence, the composite does not comprise a dominant term and
a less significant term. Rather it is the combination of
the two that produce a single commercial impression, and
that impression is of a particular group of people.
In view of the foregoing, we find that the primary
significance for the mark AMERICAN SINGLES for “computer
services, namely, providing a web site for facilitating the
introduction of individuals” is not a geographic location,
and therefore the mark is not primarily geographically
misdescriptive.
Decision: Applicant’s counterclaim to cancel opposer’s
pleaded registration is dismissed with prejudice.