Wet Dog Media, Inc.v.Rodale, Inc.

Trademark Trial and Appeal Board

Oct 18, 2012

No. 91193283 (T.T.A.B. Oct. 18, 2012)

Mailed: October 18, 2012

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
______

Wet Dog Media, Inc.

v.

Rodale, Inc.
_____

Opposition No. 91193283
to application Serial No. 77712754
_____

Thomas E. Toner of Innovus Law Group PLLC for Wet Dog Media,
Inc.

Kevin G. Smith and Gary D. Krugman of Sughrue Mion PLLC for
Rodale, Inc.
______

Before Wellington, Ritchie, and Adlin,
Administrative Trademark Judges.

Opinion by Wellington, Administrative Trademark Judge:

An application has been filed by Rodale, Inc. to
register the mark WOMEN’S RUNNING (in standard characters)
for the following services:
Providing a web site featuring sporting information;
providing a web site featuring information on exercise
and fitness; providing information in the field of
exercise training; providing information and
instruction in the field of athletic events; providing
information, news and commentary in the field of
sporting and athletic events and leisure activities;
providing information on physical exercise; providing
news and information in the field of athletic events
THIS OPINION IS NOT
A PRECEDENT OF
THE TTAB
Opposition No. 91193283

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and activities, sports and athletic equipment and
supplies, exercise and physical fitness, and physical
fitness training; entertainment services, namely,
providing video podcasts in the field of athletic
events and activities, sports and athletic equipment
and supplies, exercise, fitness, training, nutrition,
weight loss and motivation; providing a web site
featuring non-downloadable instructional videos in the
field of athletic events and activities, sports and
athletic equipment and supplies, exercise, fitness,
training, nutrition, weight loss and motivation in
International Class 41; and

Providing a web site featuring information on health
and nutrition; providing information on maintaining a
healthy lifestyle and losing weight; and providing news
and information in the field of nutrition and weight
loss programs in International Class 44.1

In the application, as originally filed, applicant
claimed that the mark has acquired distinctiveness “through
the applicant's substantially exclusive and continuous use
in commerce for at least the five years immediately before
the date of this statement,” under Section 2(f) of the
Trademark Act.
Wet Dog Media, Inc., opposer, has opposed registration
on the asserted grounds of non-use and failure to acquire
distinctiveness.2 Specifically, as to the non-use ground,
opposer alleges that “the term WOMEN’S RUNNING as used by
applicant, and shown in the specimen, functions as a
category heading amid a plurality of other such category

1 Application Serial No. 77712754 was filed April 13, 2009,
alleging first use anywhere and first use in commerce, for both
classes of services, on December 31, 1999.
2 Opposer also asserted abandonment and an alternative ground of
fraud. However, these grounds were not tried and opposer does
Opposition No. 91193283

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headings and does not function to distinguish Applicant’s
goods and services from those offered by others.” With
respect to acquired distinctiveness, opposer alleges that
its own “substantial use of the identical term on similar
goods and services renders Applicant’s claim of
substantially exclusive and continuous use in commerce of
the term WOMEN’S RUNNING for a least the five years
immediately before the date of the Application in error...”
Applicant, in its answer, denied the salient
allegations of the notice of opposition. Applicant also
asserted as an affirmative defense that opposer “can claim
no protectable rights in and to the WOMEN’S RUNNING mark,”
because opposer seeks registration of same mark on the
Supplemental Register via its own application (Serial No.
77524871) which has an effective filing date of May 27,
2009.
The record consists of the pleadings and the file of
the involved application. No testimony was taken by either
party. The only additional evidence of record is that
submitted by opposer via a notice of reliance, whereby it
stated its intention to rely on the following materials:
1. Printouts from the file history of (suspended)
application Serial No. 77524871;3

not pursue these grounds in its trial brief. They are therefore
waived.
3 On June 1, 2012, an assignment from opposer of the “entire
interest” in the application to Competitor Group, Inc. was
recorded with the USPTO (at reel/frame nos. 4792/0777).
Opposition No. 91193283

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2. A printout from opposer’s website
(www.womensrunning.com);

3. Printouts of twelve (12) different covers for “Women’s
Running” magazine;

4. Printouts from the file history of applicant’s now-
abandoned, application Serial No. 78491524;

5. Printouts from the file history of now-abandoned,
application Serial No. 77915131 for the mark WOMEN’S
RUNNING SERIES(owned by a third-party);

6. Printouts from the file history of applicant’s
Registration No. 2643641 for the mark RUNNER’S WORLD;

7. Printouts from the file history of applicant’s
Registration No. 3064599 for the mark WOMEN’S HEALTH;

8. Printouts from applicant’s website
www.runnersworld.com;

9. Printouts from third-party website Amazon.com
advertising subscription to “Runners World” magazine;

10. Printouts from third-party websites, Amazon.com,
Magazine DiscountCenter.com, and Magazines.com,
advertising “Women’s Running” magazine subscriptions;

11. Printouts from applicant’s Runner’s World Media Group
website;

12. Printouts from applicant’s website Runner’s World
Complete Book of Women’s Running;

13. Printouts of covers of Runner’s World books, published
by applicant; and

14. Printouts from archived website pages from applicant’s
websites, www.runnersworld.com and www.womens-
running.com.

Standing
Opposer has made of record the file history of an
application (Serial No. 77524871) that it filed for the mark
WOMEN’S RUNNING for “magazines featuring women’s sports.”
Opposition No. 91193283

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This application has been suspended by the Office because,
according to an Office action, the involved application of
this proceeding “may be cited against this application
[Serial No. 77524871] in a refusal to register under Section
2(d).”
In addition to the application filed by opposer, it
submitted numerous other materials under the notice of
reliance that it asserts are evidence of its use of the term
“women’s running” on magazines and in connection with its
website. Although these materials are limited in their
evidentiary value, applicant itself acknowledges that “on
their face” they show various websites “offering
subscriptions to Women’s Running magazine” and that one
printout “refers to Opposer as the publisher.” Brief, p.
11.
In view of the foregoing, the record establishes
opposer's standing. See Tri-Star Marketing, LLC v. Nino
Franco Spumanti S.R.L., 84 USPQ2d 1912, 1914 (TTAB
2007)(“petitioner has standing to bring the petition for
cancellation based on the fact that its application to
register [its mark] was refused registration by the office
under Section 2(d) based on a likelihood of confusion with
respondent’s previously registered mark”). See also,
Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842
Opposition No. 91193283

6
(Fed. Cir. 2000); Lipton Industries, Inc. v. Ralston Purina
Co., 670 F.2d 1024, 213 USPQ 185 (CCPA 1982).
In its brief, applicant offers a “statement of the
case” and notes that it asserted in its answer the
affirmative defense that opposer “has conceded that its
claimed mark is merely descriptive of Opposer’s goods and
has not acquired distinctiveness and that, therefore,
[opposer] cannot claim protectable trademark rights in the
WOMEN’S RUNNING mark.” Brief, p. 4. However, applicant
does not argue later in its brief how this affirmative
defense is relevant or further clarify how this otherwise
affects opposer’s claim that applicant’s mark has not
acquired distinctiveness. To the extent that the
affirmative defense is intended as an attack on opposer’s
standing, it is not well taken because opposer, at the very
least, has demonstrated an interest in using the term
“women’s running.” See Ritchie v. Simpson, 170 F.3d 1092,
50 USPQ2d 1023 (Fed. Cir. 1999); De Walt, Inc. v. Magna
Power Tool Corp., 289 F.2d 656, 129 USPQ 275, 280 (CCPA
1961) (damage presumed or inferred when the mark sought to
be registered is descriptive of the goods and opposer is one
who has a sufficient interest in using the descriptive term
in its business).
Acquired Distinctiveness
Opposition No. 91193283

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We now address opposer’s allegation that applicant’s
mark, WOMEN’S RUNNING, has not acquired distinctiveness.
The parties are in agreement and have properly set forth in
their trial briefs the evidentiary burdens in inter partes
proceedings involving claims of acquired distinctiveness.
That is, when a mark is proposed for registration under
Section 2(f) and is approved by the USPTO for publication,
as is what happened with applicant’s WOMEN’S RUNNING mark,
there is a presumption that the examining attorney found
that the applicant made a prima facie showing of acquired
distinctiveness. Yamaha International Corp. v. Hoshino
Gakki Co., 840 F.2d 1571, 6 USPQ2d 1001, 1004 (Fed. Cir.
1988). And, when the same mark is challenged in an inter
partes proceeding such as this opposition, it is the
plaintiff that has the initial burden to establish prima
facie that the applicant did not satisfy the acquired
distinctiveness requirement of Section 2(f). Id. at 1005.
The plaintiff may meet this initial burden if it produces
“sufficient evidence or argument whereby, on the entire
record then before the board, the board could conclude that
the applicant has not met its ultimate burden of showing
acquired distinctiveness.” Id. As further explained in
Yamaha, “[I]f the opposer does present its prima facie case
challenging the sufficiency of applicant’s proof of acquired
distinctiveness, the applicant may then find it necessary to
Opposition No. 91193283

8
present additional evidence and argument to rebut or
overcome the opposer’s showing.” Id. See also Duramax
Marine LLC v. R.W. Fernstrum & Co, 80 USPQ2d 1780 (TTAB
2006).
Opposer, in its brief, argues that WOMEN’S RUNNING “is
highly descriptive as applied to Applicant’s goods (sic) and
services and therefore distinctiveness cannot be shown by a
declaration of continuous and substantially exclusive use
alone”; that applicant’s use of WOMEN’S RUNNING “has not
been substantially exclusive”; and that opposer has “made a
prima facie case that applicant failed to satisfy the
acquired distinctiveness requirement of Section 2(f).”
Brief, p. 1.
Applicant argues that “based on the entire evidentiary
record before the Board in this case, the record shows, by a
preponderance of the evidence, that Applicant has
demonstrated, prima facie, that its mark has acquired
distinctiveness and Opposer has failed to present any
evidence, let alone a prima facie case of no acquired
distinctiveness, to rebut Applicant’s prima facie case of
acquired distinctiveness made to the Examining Attorney.”
Brief, p. 9 (emphasis in original). Applicant emphasizes
that opposer failed to take any testimony and argues there
are inherent limitations to the probative value of the
materials submitted by opposer via notice of reliance.
Opposition No. 91193283

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Upon review of the record and the arguments presented
in this case, we find that opposer has met its initial
burden in challenging the sufficiency of the acquired
distinctiveness evidence submitted by applicant during the
prosecution of its application. More specifically, and as
discussed below, opposer has persuasively argued and
demonstrated with evidence that applicant’s mark is so
highly descriptive of the recited services that applicant’s
declaration of substantially exclusive use of the mark is,
by itself, insufficient for purposes of establishing that
the mark has acquired distinctiveness. Furthermore, because
applicant has not submitted any additional evidence, it has
not overcome this showing by ultimately establishing that
its mark has acquired distinctiveness.
Because applicant has resorted to Section 2(f) of the
Trademark Act, the issue of whether applicant’s mark is
merely descriptive is not before us. Yamaha, 6 USPQ2d at
1005. However, the degree of descriptiveness of WOMEN’S
RUNNING as used in connection with the recited services is
relevant because such a determination has a direct bearing
on the amount of evidence necessary to show acquired
distinctiveness. Id. at 1008; see also In re Merrill Lynch,
Pierce, Fenner & Smith, Inc., 828 F.2d 1567, 4 USPQ2d 1141
(Fed. Cir. 1987). The amount and character of evidence
required to establish acquired distinctiveness depends on
Opposition No. 91193283

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the facts of each case and particularly on the nature of the
mark sought to be registered. See Roux Labs., Inc. v.
Clairol Inc., 427 F.2d 823, 829, 166 USPQ 34, 39 (CCPA
1970). In general, more evidence is required where a mark
is so highly descriptive that purchasers seeing the matter
in relation to the named goods or services would be less
likely to believe that it indicates source in any one party.
See, e.g., In re Bongrain Int'l Corp., 894 F.2d 1316, 1318,
13 USPQ2d 1727, 1729 (Fed. Cir. 1990).
We begin our analysis regarding the degree of
descriptiveness of applicant’s mark WOMEN’S RUNNING by
noting that it is comprised of two common and recognizable
words that, combined, will be easily understood by consumers
in the context of applicant’s services of providing
information in the fields of “sporting...
exercise...fitness” and “health.”4 Consumers will have no
trouble understanding that applicant’s mark is merely
describing that applicant’s information services are geared
to “women” and will focus on the sports and health activity
of “running.”
The materials submitted by opposer help underscore the
straightforward meaning of WOMEN’S RUNNING in connection

4 While hardly necessary, we take notice that “running” is
defined as “Sports -- The exercise or sport of someone who runs.”
The American Heritage Dictionary of the English Language (4th
Edition, 2000).

Opposition No. 91193283

11
with applicant’s services. Indeed, printouts from
applicant’s own RUNNER’S WORLD website show “Women’s
Running” is used alongside, in the same font, other website
“categories” such as, “Nutrition & Weight Loss/ Motivation/
Site Map/...Training Log/ High School Runner/ Beginners/
Women’s Running...” Indeed, this use of “women’s running”
may be understood as referencing a genre or group of runners
in the same manner as “beginners” or “high school runners.”
Other third-party websites demonstrate the use of the
wording “women” or “women’s” in connection with “running” to
describe the sport activity being specifically geared to
women. For example, at the Women’s National Running Series
website there is the following description:
ABOUT THE WOMEN’S NATIONAL RUNNING SERIES
The Women’s National Running Series is a series that
was developed as a celebration of Womanhood. You know
who you are: you are beautiful, strong, inspiring and
you can do anything you set your mind to do. So let us
pamper you in this half marathon series which honors
and celebrates WOMEN. This is a running weekend for
mothers, wives, daughters, sisters, friends and the men
who love them too.

Many more examples showing the descriptive nature of
the term “women’s running” in connection with sports and
health information can be found in printouts from the
Runner’s World website, Runner’s World books, and printouts
of “Women’s Running” magazine covers and advertisements
therefor. To wit,
Women’s Running Discussions
Motivation, training and fitness
Opposition No. 91193283

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advice, moral support, and more –
for women runners only!
[from Runner’s World website, emphasis in original];

Product Description
Women’s Running is the only women’s specific running
magazine. As the number of female runners exploded
over the past few years, interest in women’s-specific
running information also grew. Women’s Running covers
all aspects of running lifestyle. The Women’s Running
mission is simple; to encourage women to train
healthfully, participate in active travel, adopt
healthy nutrition habits, and to nourish their minds as
well as their bodies.
[from Amazon.com website advertisement for Women’s
Running magazine];

Runner’s World book “Complete Book of Women’s Running…
The best advice to get started, stay motivated, lose
weight, run injury-free, be safe and train for any
distance” [by author] Dagny Scott Barrios.5

We do not ignore applicant’s attack on the probative
value of materials submitted by opposer solely by notice of
reliance and without any testimony. The Board acknowledges
the limitation:
The probative value of Internet documents is limited.
They can be used to demonstrate what the documents show
on their face; however, documents obtained through the
Internet may not be used to demonstrate the truth of
what has been printed. A printout from a webpage may
have more limitations on its probative value than
traditional printed publications. A party may increase
the weight the Board will give website evidence by
submitting testimony and proof of the extent to which a
particular website has been viewed. Otherwise, the
document may not be considered to have much probative
value.

TBMP Section 704.08(b) (3rd Ed. 2012).

5 Opposer also submitted covers of other “Runner’s World” books
that, juxtaposed with the “Women’s Running” book, indicate that
the “Women’s Running” book is one of a series or genres of
running-related topics, e.g., “Trail Running,” Training Journal,”
Opposition No. 91193283

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With this in mind, and so as to be clear in our
findings, the materials submitted by opposer in its notice
of reliance do not disprove applicant’s statement that it
has enjoyed substantially exclusive use of the term “Women’s
Running” for at least five years. However, this is not
fatal. That is, opposer need not “prove” that applicant’s
declaration is false in order to prevail in this proceeding;
rather, opposer need only present “evidence or argument”
from which the Board may “reasonably conclude” that
applicant “has not met its ultimate burden of showing
acquired distinctiveness” and thus is not entitled to the
registration sought. Yamaha at 1005. Accordingly, opposer
may accomplish this by showing that applicant’s mark is so
highly descriptive that its declaration of substantially
exclusive use, taken as true, cannot by itself show the mark
has acquired distinctiveness.
We further keep in mind that we cannot make any
conclusions as to the extent of public exposure to the
materials submitted by opposer nor can we even assume that
the publications referenced in the materials were
circulated. Nevertheless, the materials are persuasive in
this proceeding because they support opposer’s argument that
“women’s running” is a term that, when viewed by consumers
in connection with the applied-for services, is highly
descriptive and thus lacks distinctiveness. Sports
Opposition No. 91193283

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Authority Michigan Inc. v. PC Authority Inc., 63 USPQ2d
1782, 1798 (TTAB 2001) (Internet materials are not evidence
of use but may have some probative value to show the meaning
of a mark). In other words, the materials corroborate the
plain meaning of the term “women’s running” and the manner
in which it can be used in connection with sports and health
information services.
Having determined that applicant’s mark is highly
descriptive as used in connection with the recited services,
we now turn to the sufficiency of the evidence in support of
applicant’s claim of acquired distinctiveness. Again,
because applicant submitted no testimony in connection with
the opposition proceeding, the only evidence that
applicant’s mark has acquired distinctiveness is its
declaration of “substantially exclusive and continuous use
in commerce for at least the five years immediately before
[April 2009]” as submitted with its application. Cold War
Museum Inc. v. Cold War Air Museum Inc., 586 F. 3d 1352, 92
USPQ2d 1626, 1629 (Fed. Cir. 2009) (“The unambiguous
language of 37 CFR 2.122(b) provides that the entire file of
the registration at issue is automatically part of the
record, without any action necessary by the parties.
Therefore, the evidence of the mark’s acquired
distinctiveness submitted during prosecution was
automatically part of the record before the Board”). In
Opposition No. 91193283

15
prior decisions involving marks deemed to be very
descriptive or otherwise non-inherently distinctive, the
Board and its primary reviewing court have not hesitated to
find that substantially exclusive use (even for periods much
longer than five years) does not by itself suffice for
purposes of demonstrating acquired distinctiveness within
the meaning of Section 2(f). See In re Gibson Guitar Corp.,
61 USPQ2d 1948, 1952 (TTAB 2001) (66 years of use). See
also In re Andes Candies, Inc., 478 F.2d 1264, 178 USPQ 156,
158 (CCPA 1973); and In re Packaging Specialists, Inc., 221
USPQ 917, 920 (TTAB 1984).
In this case, applicant’s mark is highly descriptive
and this leads us to conclude that applicant’s declaration
of substantially exclusive use, alone, is insufficient to
demonstrate that the mark has acquired distinctiveness. The
mark will clearly and immediately describe applicant’s
information services, namely, that applicant is rendering
sports and health information aimed at women and involving
the sport of running. Although the declaration was relied
upon during ex parte examination and the mark was allowed to
be published for opposition under Section 2(f), the
arguments and record in this proceeding persuade us that
applicant’s mark has not acquired distinctiveness. Opposer
has met its burden of making a prima facie showing that
Opposition No. 91193283

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applicant’s mark has not acquired distinctiveness, which
applicant has not rebutted.
We conclude that WOMEN’S RUNNING is so highly
descriptive as used in connection with the recited services
that applicant’s declaration of substantially exclusive use
for at least five years, by itself and taken as fact, does
not suffice for purposes establishing that it has acquired
distinctiveness or support registration on the Principal
Register under Section 2(f).
DECISION: The opposition is sustained, and
registration to applicant is refused.