Federal Circuit reversed decision by the Board that the term CASH MANAGEMENT ACCOUNT was generic; “[t]he evidence before the Board showed recognition in a substantial number of publications that the source of the CASH MANAGEMENT ACCOUNT was the appellant.”
How later courts described this case
- Federal Circuit reversed decision by the Board that the term CASH MANAGEMENT ACCOUNT was generic; “[t]he evidence before the Board showed recognition in a substantial number of publications that the source of the CASH MANAGEMENT ACCOUNT was the appellant.”
- “AMERICAN BAR ASSOCIATION is certainly an apt name for a national association of lawyers”
- “[A] proper genericness inquiry focuses on the description of [goods or] services set forth in the [application or] certificate of registration.”
Written by the judges who cited it.
The opinion
THIS OPINION IS A
PRECEDENT OF THE TTAB
Hearing: Mailed:
March 2, 2011 October 25, 2011
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Country Music Association, Inc.
________
Serial Nos. 78906900 and 78901341
_______
Robert A. Rosenbloum and Kristen L. Fancher of the law firm
Greenberg Traurig, and Miles J. Alexander, Jerre B. Swann,
William H. Brewster, and Charlene Marino of the law firm
Kilpatrick Stockton, LLP for Country Music Association, Inc.
Jeffrey C. Coward, Trademark Examining Attorney, Law Office 101
(Mary I. Sparrow, Managing Attorney).
_______
Before Seeherman, Cataldo, and Lykos, Administrative Trademark
Judges.
Opinion by Lykos, Administrative Trademark Judge:
Country Music Association, Inc. (“applicant”) filed an
application to register COUNTRY MUSIC ASSOCIATION as a mark for
“association services, namely, promoting country music, and
promoting the interests of country music entertainers and the
country music recording industry” in International Class 35.1
Applicant seeks to register the mark pursuant to Section 2(f) of
1
Application Serial No. 78906900, filed June 13, 2006, alleging
September 1958 as the date of first use anywhere and in commerce.
Applicant amended the recitation of services during the course of
examination.
Serial Nos. 78906900 and 78901341
the Trademark Act, 15 U.S.C. § 1052(f), asserting that it has
acquired distinctiveness as a mark. Applicant has appealed the
examining attorney’s final refusal to register the mark on the
Principal Register pursuant to Section 2(e)(1) of the Trademark
Act, 15 U.S.C. § 1052(e)(1), on the grounds that it is generic
for the identified services or, alternatively, that applicant’s
mark is merely descriptive, and that applicant has failed to
present sufficient evidence to show acquired distinctiveness
thereby making the mark registrable pursuant to Section 2(f).
Applicant also applied to register the mark displayed below
for the identical services noted above for registration on the
Principal Register pursuant to Section 2(f).2 In response to the
examining attorney’s requirement for a disclaimer of COUNTRY
MUSIC ASSOCIATION, applicant asserted a claim of acquired
distinctiveness as to this phrase. Registration has been
finally refused in light of applicant's failure to comply with
2
Application Serial No. 78901341, filed June 6, 2006, alleging 1963 as
the date of first use anywhere and in commerce. During ex parte
prosecution, applicant amended the application to seek registration
pursuant to Section 2(f).
2
Serial Nos. 78906900 and 78901341
the examining attorney's requirement for a disclaimer of the
phrase “COUNTRY MUSIC ASSOCIATION” pursuant to Trademark Act
§ 6(a), 15 U.S.C. § 1056(a), on the grounds that the phrase is
generic for applicant's services.
Applicant has appealed the examining attorney’s final
refusal to register both applications. Both applicant and the
examining attorney have filed briefs,3 and an oral hearing was
held. Because we deem the cases to have common questions of
fact and of law, and the records are largely identical, we have
consolidated the appeals. For the reasons explained below, we
reverse the refusals to register both applications.
I. Application Serial No. 78906900
A. Genericness Refusal
As a preliminary matter, we note that insofar as applicant
seeks registration of the mark COUNTRY MUSIC ASSOCIATION on the
Principal Register pursuant to Section 2(f), applicant has
effectively conceded that the mark is, at a minimum,
descriptive. See The Cold War Museum, Inc. v. Cold War Air
Museum, Inc., 586 F.3d 1352, 92 USPQ2d 1626, 1629 (“where an
applicant seeks registration on the basis of Section 2(f), the
mark’s descriptiveness is a nonissue; an applicant’s reliance on
3
Applicant filed the identical brief in both cases, which did not
specifically address the refusal based on the disclaimer requirement.
3
Serial Nos. 78906900 and 78901341
Section 2(f) during prosecution presumes that the mark is
descriptive.”).
Now we turn to our genericness analysis. A mark is a
generic name if it refers to the class or category of goods
and/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.
International Association of Fire Chiefs, Inc., 782 F.2d 987,
228 USPQ 528 (Fed. Cir. 1986)(“Marvin Ginn”). The test for
determining whether a mark is generic is its primary
significance to the relevant public. Section 14(3) of the
Trademark Act; In re American Fertility Society, 188 F.3d 1341,
51 USPQ2d 1832 (Fed. Cir. 1999); Magic Wand Inc. v. RDB Inc.,
940 F.2d 638, 19 USPQ2d 1551 (Fed. Cir. 1991); and H. Marvin
Ginn, supra.
The United States Patent and Trademark Office (USPTO) has
the burden of establishing by clear evidence that a mark is
generic and, thus, unregistrable. In re Merrill Lynch, Pierce,
Fenner and Smith, Inc., 828 F.2d 1567, 4 USPQ2d 1141 (Fed. Cir.
1987). See also In re American Fertility Society, supra; and
Magic Wand Inc. v. RDB Inc., supra. “Doubt on the issue of
genericness is resolved in favor of the applicant.” In re DNI
Holdings Ltd., 77 USPQ2d 1435, 1437 (TTAB 2005).
4
Serial Nos. 78906900 and 78901341
Our first task under Marvin Ginn is to determine, based on
the evidence of record, the genus of applicant's services. The
examining attorney maintains that the proper genus of services
is “association services related to country music.” Examining
Attorney’s Brief, p. 6. Applicant, however, maintains that the
examining attorney has defined the genus so narrowly that in
effect “any type of association would be generic for the subject
matter of the services.” Office Action Response dated February
13, 2008. Hence, applicant takes the position that the proper
genus of services is the broad category of “association
services.” Applicant’s Brief, p. 6.
In order to resolve this issue, we find instructive both
the recitation of services set forth in the application and
applicant’s own submissions describing its services. See Magic
Wand Inc. v. RDB Inc., 940 F.2d 638, 19 USPQ2d at 1552 (“[A]
proper genericness inquiry focuses on the description of [goods
or] services set forth in the [application or] certificate of
registration.”).
We find that the genus of services at issue in this case is
adequately defined by applicant's recitation of services,
specifically, “association services, namely, promoting country
music, and promoting the interests of country music entertainers
and the country music recording industry.” See e.g. In re Trek
2000 Int’l Ltd., 97 USPQ2d 1106, 1112 (TTAB 2010) (“the genus of
5
Serial Nos. 78906900 and 78901341
goods at issue in this case is adequately defined by applicant's
identification of goods…”). This is confirmed by applicant's
specimen of use (an excerpt from its web site), describing
applicant's services as ”[t]he first trade organization to ever
promote a type of music…. As a professional trade association,
CMA membership is available to those working in the Country
Music industry.”
Next, we must determine whether the designation COUNTRY
MUSIC ASSOCIATION is understood by the relevant purchasing
public primarily to refer to that genus of services. Our first
task is to define the “relevant purchasing public.” Initially,
the examining attorney took the position that the relevant
purchasing public was “all users of the global internet.” The
examining attorney has retreated from this position, and now
maintains that the relevant purchasing public in this case
consists of “people that listen to and/or are in some way
involved with country music.” Examining Attorney’s Appeal
Brief, unnumbered p. 6. Applicant affirmatively stated in its
reply brief that it accepts the examining attorney’s new
position regarding the proper definition of the “relevant
purchasing public” in this case. The Board agrees. The record
evidence in this case supports a finding that the relevant
purchasing public consists of the general public who listen to
6
Serial Nos. 78906900 and 78901341
country music and those who are associated with the country
music industry.
With this in mind, we must now ascertain whether the
designation COUNTRY MUSIC ASSOCIATION is understood by the
relevant purchasing public as primarily referring to association
services which promote country music and the interests of
professionals in the country music recording industry.
Applicant and the examining attorney do not dispute that the
mark COUNTRY MUSIC ASSOCIATION is a phrase and should be
analyzed according to the test set forth in the case of In re
American Fertility Society, supra, and further clarified in the
case of In re Dial-A-Mattress Operating Corp., supra, 57 USPQ2d
at 1810:
[W]here the proposed mark is a phrase (such as
“Society for Reproductive Medicine”), the board
“cannot simply cite definitions and generic uses of
the constituent terms of a mark”; it must conduct an
inquiry into “the meaning of the disputed phrase as a
whole.” In re The Am. Fertility Soc'y, 188 F.3d at
1347, 51 USPQ2d at 1836.
By way of illustration, the Federal Circuit provided the
following example in In re American Fertility Society:
AMERICAN BAR ASSOCIATION is certainly an apt name for
a national association of lawyers; however, it is not
used as a generic name for national associations of
lawyers (see, e.g., NATIONAL ASSOCIATION OF WOMEN
LAWYERS; FEDERAL BAR ASSOCIATION; AMERICAN HEALTH
LAWYERS ASSOCIATION; NATIONAL LAWYERS ASSOCIATION).
Id. at 1836.
7
Serial Nos. 78906900 and 78901341
We turn now to the evidence of record. Competent sources
to show the relevant purchasing public's understanding of a
contested term include purchaser testimony, consumer surveys,
dictionary definitions, trade journals, newspapers and other
publications. In re Dial-A-Mattress Operating Corp., supra; In
re Bed & Breakfast Registry, 791 F.2d 157, 160, 229 USPQ 818,
819 (Fed. Cir. 1986).
To support the position that applicant’s applied-for term
is generic, the examining attorney argues that there are
numerous “country music associations” throughout the United
States. The examining attorney relies on third-party usages of
the designation “country music association” preceded by either a
descriptive, geographical, or other term obtained from various
third-party Internet websites as well as corporate and business
listings from the LEXIS/NEXIS database. Some examples include:
1) The Lesbian and Gay Country Music Association;
2) Christian Country Music Association;
3) New York Metropolitan Country Music Association;
4) New Hampshire Country Music Association;
5) Pine Tree State Country Music Association;
6) Long Island Country Music Association;
7) NorthEast Country Music Association;
8) Young Guns Country Music Association;
9) Heart of Texas Country Music Association;
10) Greater Southern Country Music Association;
11) Utah Old Time Fiddlers & Country Music
Association;
12) Missouri Traditional Country Music Association;
13) Florida Country Music Association of Aluchua
County;
14) Tennessee Country Music Association;
15) Kentucky Country Music Association;
8
Serial Nos. 78906900 and 78901341
16) Mobile Country Music Association;
17) Colorado Country Music Association;
18) Virginia Country Music Association;
19) Georgia Country Music Association;
20) North American Country Music Association
International;
21) Central Wisconsin Country Music Association;
22) Country Music Association;
23) Garden City Country Music Association;
24) Texas Country Music Association;
25) Missouri Fiddlers & Country Music Association;
26) National Traditional Country Music Association;
27) Illinois Country Music Association;
28) Country Music Association of Rhode Island.
The examining attorney contends that unlike the evidence
presented in In re American Fertility Society, supra, the
evidence here of use of the unitary phrase “country music
association” establishes the generic nature of applicant’s mark.
As a threshold matter, we will address applicant’s
objection that Internet evidence submitted by the examining
attorney obtained from third-party websites is not a competent
source to prove genericness. Applicant’s arguments are based on
its interpretation of the Board’s prior case law, including In
re Tea & Sympathy, Inc., 88 USPQ2d 1062, 1064 n.3 (TTAB 2008).
Applicant is mistaken that such evidence is, per se, not
probative. We agree with the examining attorney that applicant
mischaracterizes the holding in the case of In re Tea. In that
case, the Board found that the examining attorney’s evidence of
truncated Google® search results for the search “pharmacy herbs”
to be of “little probative weight.” By contrast, here the
9
Serial Nos. 78906900 and 78901341
Internet evidence submitted by the examining attorney does not
consist of truncated Internet search engine results but rather
includes printouts of the web pages from each website.
To further rebut the examining attorney’s evidence,
applicant argues that many of these third-party associations
either never existed or no longer exist. This argument is based
on applicant’s inability to locate a telephone number or website
address for them. In addition, applicant criticizes the
remainder of the third-party designations submitted by the
examining attorney on the grounds that the websites are
“obscure” and not in general circulation. More specifically,
applicant asserts that traffic on the websites is de minimis
based on usage statistics obtained from the www.alexa.com
website. Applicant therefore maintains that the evidence is of
limited probative value given the lack of evidence that the
groups are widely known to the public.
Considered in the context of the record as a whole in this
case, the examining attorney's evidence of third-party use of
the phrase "Country Music Association" does not clearly
establish genericness. We note that all of the Internet and
LEXIS/NEXIS excerpts show the phrase “Country Music Association”
in initial capitalization form, which, as discussed further
below, may be indicative of use as a trade or brand name. In
addition, the evidence shows that third-party organizations use
10
Serial Nos. 78906900 and 78901341
the term “Country Music Association” in combination with other
descriptive, geographic, or other terms to designate the name of
their respective organizations. Taking into account these
points and the evidence presented by applicant which is
discussed below, we are not convinced that the examining
attorney’s evidence of use of the phrase “Country Music
Association” suffices as clear evidence that the relevant
purchasers perceive the phrase as naming the genus of the
services at issue. We are left with doubt on the issue and find
the evidence to be equally compatible with a conclusion that the
phrase is not the name of a genus of services but merely an apt
name for an association comprised of country music professionals
or promoting the country music industry. Cf. In re American
Fertility Society, 51 USPQ2d at 1836 (“AMERICAN BAR ASSOCIATION
is certainly an apt name for a national association of
lawyers”).
We also find some merit in applicant’s argument that the
examining attorney’s Internet evidence of third-party usages are
relatively obscure. Cf. Carl Karcher Enterprises Inc. v. Stars
Restaurants Corp., 35 USPQ2d 1125, 1131 (TTAB 1995) (applicant’s
evidence of third-party use of “star” word and design marks in
the restaurant field was of limited probative value due to
small, local nature of operations and geographic obscurity). To
measure the level of exposure of each Internet usage, applicant
11
Serial Nos. 78906900 and 78901341
has used the Alexa.com website to calculate the number of daily
visitors and page views. See Declaration of Charlene R. Marino,
¶¶ 28-39, filed September 3, 2009. Based on this data,
applicant concludes that the level of usage is relatively small
for each web site. The examining attorney disputes this
conclusion, pointing to the Gay & Lesbian Country Music
Association site showing over 39,000 hits as of November 10,
2006 as an illustration. The examining attorney further asserts
that even if the average number of hits for each web site
totaled only 1000, the cumulative usage of the wording by third
parties is not de minimis. By comparison, however, applicant’s
own web site received 15 million hits in 2007 alone.
Declaration of Tammy Genovese, Chief Executive Officer of
applicant (“Genovese Declaration”), ¶ 8 attached to response
filed February 13, 2008. On balance, we find that the data
obtained from the www.Alexa.com web site measuring Internet
traffic confirms the comparatively obscure nature of the third-
party usages. This is not to say that a website that receives
only hundreds or thousands of hits necessarily renders it
obscure or of limited probative value. Rather, on this record,
the comparative obscurity of the third-party uses raises doubt
about whether the relevant public will perceive the phrase as
generic or as an element of various trade names.
12
Serial Nos. 78906900 and 78901341
Further controverting the examining attorney’s evidence of
genericness, applicant has submitted two reports prepared by Dr.
David K. Barnhart, a professional linguist and lexicographer,
the first consisting of a review of dictionary usage and the
second consisting of a review of written language usage
regarding the public’s understanding of the term COUNTRY MUSIC
ASSOCIATION. See Declaration of Dr. David K. Barnhart, Appendix
A, Response to Request for Reconsideration filed January 9,
2009.
Dr. Barnhart asserts, with respect to his review of
dictionary usage, that the term “association” denotes “a
particular or proper or proprietary group.” Based on the
dictionary definitions of the terms “country,” “country music,”
and the inclusion of these terms prior to the word
“association,” Dr. Barnhart maintains that consumers would
perceive the phrase “country music association” as a brand name.
In his brief, the examining attorney criticizes Dr. Barnhart’s
conclusions, arguing that any wording added to the word
“association” does not result in a registrable mark.
We agree with the examining attorney that Dr. Barnhart’s
reasoning is flawed. First, we find his premise that the word
“association” per se denotes a proprietary group faulty.
Nothing in the dictionary definitions of “association”
considered by Dr. Barnhart suggests that the term is a brand or
13
Serial Nos. 78906900 and 78901341
proprietary name. By way of illustration, the word
“association” in the American Heritage Dictionary is defined as
“an organized body of people who have an interest, activity or
purpose in common; a society.” To then reach the conclusion
that because applicant’s mark includes the term “association,”
it must be a brand name, is devoid of foundation. As such, we
deem the conclusions reached by Dr. Barnhart based on his review
of dictionary usage to be of little or no probative value.
Next, we consider Dr. Barnhart’s second report of written
language. The sources he examined consist of the Historical New
York Times databank, LEXIS/NEXIS database, and the USPTO
database of registered marks.
First we consider the results of his review of the
Historical New York Times databank. He found that the first
time “country music association” appeared in print was 1961, and
that this reference referred to applicant. We find nothing in
the record to contradict this conclusion.
With regard to his review of the LEXIS/NEXIS database, he
found 27,919 articles which contain the phrase “country music
association.” Of those 27,919 articles, he first examined a
sample of 133 articles and found that 99% of the printed use of
the phrase “country music association” appeared in initial
capital format, the standard method for indicating trademark
significance. He then also reviewed a second sample of 185
14
Serial Nos. 78906900 and 78901341
articles and found that 99% of the printed uses of the phrase
“country music association” appeared in initial all capital
letters. He also noted that when the term “country music” was
combined with other nouns, such as “performer” or “industry,”
they appeared in lower case format. Based on the above
information, Dr. Barnhart reached the conclusion that the term
COUNTRY MUSIC ASSOCIATION was initially used as a trademark
referring to applicant, and that virtually all printed uses of
the term consist of trademark usage by applicant or refer to
applicant.
The examining attorney in his brief is critical of the
conclusions reached by Dr. Barnhart, arguing that although
capitalization of the initial letter of each word may indicate
an intent to use the phrase as a mark, it does not necessarily
follow that the phrase functions as a trademark.
We agree with Dr. Barnhart’s assumption that in the English
language, initial capitalization of a term or phrase is
generally used to designate a brand name, as opposed to a
generic term. Since almost all usages of COUNTRY MUSIC
ASSOCIATION were in initial capitalization form, we find that
this portion of his report weighs in applicant’s favor.
As to the third portion of his written language report, Dr.
Barnhart reviewed the USPTO database for marks containing the
term “association.” He concluded that the term ASSOCIATION is
15
Serial Nos. 78906900 and 78901341
an integral component in proprietary or brand names in marks
such as “AMERICAN AUTOMOBILE ASSOCIATION,” and that, by logical
extension, applicant’s mark constitutes a brand name. Barnhart
Declaration, p. 5. The examining attorney, however, contends
that these third-party registrations are of no value because
prior actions of other examining attorneys have no bearing in
this case.
We are not persuaded by the examining attorney’s position.
While the third-party registrations do not constitute evidence
of use or public familiarity of the marks shown therein, at the
very least they do demonstrate that trademark owners view the
term ASSOCIATION as part of their marks. We therefore accord
some weight to this portion of Dr. Barnhart’s written language
report.
Applicant also submitted a “Teflon” type consumer survey4
conducted by Dr. Gerald L. Ford, a partner in the marketing
research and consulting firm of Ford Bubala & Associates in
Huntington Beach, California, targeted to listeners of country
music, or as applicant asserts, the “consumers of applicant’s
efforts to promote country music as an art form.” Applicant’s
Brief, p. 16. See In re Hotels.com L.P., 87 USPQ2d 1100, 1109
4
See E.I. du Pont de Nemours and Company v. Yoshida International,
Inc., et.al., 393 F.Supp. 502, 185 USPQ 597 (E.D.N.Y. 1975), for the
description of “Teflon” consumer survey methodology.
16
Serial Nos. 78906900 and 78901341
(TTAB 2008) (applicant submitted “Teflon” type survey in an
attempt to show consumer recognition of HOTELS.COM as a brand
name). The stated objective of the survey was to measure the
relevant public’s understanding of the significance of the term
COUNTRY MUSIC ASSOCIATION. Ford Declaration, ¶ 2. The survey
sample was based on a random digit probability sample of
computer-generated phone numbers derived from all working
telephones in the continental United States and based on a
representative sample of the U.S. population. Using a double-
blind protocol, the interviewers screened for qualified survey
respondents who consisted of males and females at least 18 years
of age who listened to country western music. The interviewer
explained to the qualified survey respondents the conceptual
distinction between a “brand or proprietary name” and “common
name” using the following example: “By brand or proprietary
name, I mean a name like ‘Bank of America’ which is used by one
company or organization; by a ‘common name’ I mean a name like
‘safe deposit box’ which is used by a number of different
companies or organizations. Ford Declaration, ¶ 14.
Respondents were then asked two questions to test their ability
to distinguish brand or proprietary names from common names:
(1) Do you understand the name “National Football League” to be
a brand or proprietary name or common term? (2) Do you
understand the name “high school football” to be a brand or
17
Serial Nos. 78906900 and 78901341
proprietary name or common term? One hundred persons were
deemed qualified and interviewed after completion of the
screening process. These qualified respondents were then given
a list of terms and asked whether they were brand or common
names.
In one cell, respondents were asked whether the following
ten terms were brand or common names. The results represented
in percentages were as follows:
Brand Name Common Name Don’t Know Both
STP 74 6 19 1
Coke 92 7 -- 1
Jello 66 30 1 3
Refrigerator 9 91 -- --
Margarine 12 86 2 --
American 94 5 1 --
Airlines
Gas Station 6 94 -- --
National 93 4 2 1
Rifle
Association
Alumni 23 74 3 --
Association
In the second cell, respondents were asked, with regard to
music, whether the following were understood to be the name of a
brand or proprietary name used by one company or organization or
a common name used by a number of different companies or
18
Serial Nos. 78906900 and 78901341
organizations. The results represented in percentages were as
follows:
Brand Name Common Name Don’t Know Both
Country 85 10 5 --
Music
Association
iTunes 86 3 11 --
Bluegrass 15 77 8 --
A significant number of surveyed respondents, 85%, answered that
COUNTRY MUSIC ASSOCIATION is a brand name. Based on the survey
results, Dr. Ford concluded that the term “country music
association” is perceived by listeners of country western music
as a proprietary or brand name, and not a generic term.
The examining attorney questions Dr. Ford’s interpretation
of the survey results. First, he argues that the survey
respondents’ recognition of the wording “country music
association” as a brand name does not mean that the mark is not
generic but rather is the result of applicant’s extensive
promotion of its mark.5 Second, the examining attorney maintains
that it is impossible to distinguish whether the survey results
5
The examining attorney’s assertion is incorrect. Extensive promotion
of a mark that results in acquired distinctiveness is evidence that
may be considered with regard to the genericness inquiry. See e.g.,
In re Minnetonka Inc., 3 USPQ2d 1711 (TTAB 1987).
19
Serial Nos. 78906900 and 78901341
reflect respondent’s recognition of applicant’s mark as a brand
name for applicant’s association services or for applicant’s
annual televised award program.
As a threshold matter, we find that the methodology used in
Dr. Ford’s survey to be sound. Similar to the Teflon survey,
the respondents were capable of distinguishing between brand and
common names. In addition, the interviewers presented to
respondents brand and common names which are similar to the mark
at issue here such as “National Rifle Association” and “Alumni
Association” in testing the respondent’s ability to distinguish
such names. According to the survey results, the majority of
listeners of country western music, members of the relevant
public in this case, identified COUNTRY MUSIC ASSOCIATION as a
brand name as opposed to a common or generic designation. We
therefore find that Dr. Ford’s survey has probative value in
applicant’s favor.
As noted earlier, the Office bears the burden of proof and
genericness must be shown by clear evidence. Genericness is a
fact-intensive determination and the Board's conclusion must be
governed by the record which is presented to it. On balance we
find that the Office has not met its burden of establishing by
clear evidence that the designation COUNTRY MUSIC ASSOCIATION,
as a whole, is generic for the genus association services which
20
Serial Nos. 78906900 and 78901341
promote country music and the interests of professionals working
in the country music recording industry.
Furthermore, any doubts must be resolved in applicant's
favor. Id. Both the results of Dr. Ford’s survey showing that a
significant percentage of respondents who listen to country
western music identify applicant’s mark as a brand name and Dr.
Barnhart’s survey results showing that virtually all sampled
written usages of the phrase COUNTRY MUSIC ASSOCIATION refer to
applicant are sufficient to raise doubts regarding the
genericness of applicant’s mark. See e.g. In re Merrill Lynch,
Pierce, Fenner, and Smith Inc., 4 USPQ2d at 1143 (Federal
Circuit reversed decision by the Board that the term CASH
MANAGEMENT ACCOUNT was generic; “[t]he evidence before the Board
showed recognition in a substantial number of publications that
the source of the CASH MANAGEMENT ACCOUNT was the appellant.”)
Thus, based on the entirety of the record before us, we
have substantial doubt about whether COUNTRY MUSIC ASSOCIATION
is perceived by the relevant public as a generic name for those
services. Such doubt must be resolved in applicant’s favor and
in favor of publication of the involved marks for opposition, if
21
Serial Nos. 78906900 and 78901341
the phrase COUNTRY MUSIC ASSOCIATION be merely descriptive and
possessed of acquired distinctiveness.6
However, we do find that the term ASSOCIATION is a generic
designation for applicant’s association services. As shown by
the dictionary definitions that are of record, the word
“association” is defined as:
A group of people or organizations joined together for
a purpose. msn.encarta
An organization of persons having a common interest.
Merriam-Webster Online.
A group of people who are united in a single
organization for a particular purpose. Cambridge
Online.
Applicant's specimen of use (an excerpt from its web site)
describes applicant's services as follows:
As the first trade organization ever to promote a
type of music, CMA’s membership has grown to more
than 5,500 music industry professionals and
companies from 38 countries around the world. …
As a professional trade association, CMA
membership is available to those working in the
Country Music industry. More than 20 types of
membership are offered for every category of
industry professional, from behind-the-scenes
studio engineers, to front-of-camera artists.
The following excerpt from applicant’s web site
further explains the nature of applicant’s services:
Founded in 1958, the Country Music Association was the
first trade organization formed to promote a type of
6
In an inter partes proceeding, based on a different record, ultimate
resolution of the question of genericness might be different, but we
are limited to consideration of the record before us.
22
Serial Nos. 78906900 and 78901341
music. CMA, originally consisting of only 233
members, now has more than 6,000 organizational and
individual members in 41 countries. The objectives of
the organization are to guide and enhance the
development of Country Music throughout the world; to
demonstrate it as a viable medium to advertisers,
consumers and media; and to provide a unity of purpose
for the Country Music industry. …
Originally there were nine individual membership
categories. The current 15 categories represent all
facets of the music industry. Organizational
memberships are also available. CMA membership is
composed of those persons or organizations that are
involved in Country Music, directly and substantially.
Declaration of Kristen Fancher, counsel for applicant, dated May
14, 2007, Exhibit 2.
In addition, applicant, in the context of arguing that its
mark is merely descriptive and not generic, made of record 31
third-party registrations that issued either on the Principal
Register under Section 2(f) or on the Supplemental Register for
marks containing the word ASSOCIATION for various types of
association services (e.g. HEDGE FUND ASSOCATION, COIN LAUNDRY
ASSOCIATION, NATURAL PRODUCTS ASSOCIATION). See Applicant’s
Office Action Response filed February 13, 2008. Of the 31
registrations, only 5 did not include a disclaimer of the word
ASSOCIATION, and two of those marks began with the phrase
“ASSOCIATION FOR” or “ASSOCIATION OF.” Thus, the third-party
registrations show the Office's consistent treatment of the word
“association” as a generic term when used in connection with
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Serial Nos. 78906900 and 78901341
association services such as those identified in applicant’s
application.
These dictionary definitions, coupled with the excerpts
from applicant’s specimens and website describing the nature of
applicant’s services, as well as the third-party registrations
noted above, are sufficient to establish that the relevant
public would view ASSOCIATION as used in applicant’s mark as a
generic term denoting association services. As such, the
refusal of registration on the basis of genericness is affirmed
solely with respect to the word ASSOCIATION.
B. Acquired Distinctiveness
Although we have found that COUNTRY MUSIC ASSOCIATION is
not generic, we must consider whether it is prohibited from
registration on the ground that it is merely descriptive of
applicant’s identified services. Applicant has admitted that
the words are merely descriptive by seeking registration
pursuant to Section 2(f). Therefore, we now turn to the
question of whether applicant’s mark, COUNTRY MUSIC ASSOCIATION,
has acquired distinctiveness under Section 2(f). In his brief,
the examining attorney did not present any arguments in the
alternative regarding the sufficiency of the evidence submitted
in support of applicant's claim of acquired distinctiveness.
Rather, he merely asserts that because applicant’s mark is
generic, “no amount of purported proof that a generic term has
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Serial Nos. 78906900 and 78901341
acquired secondary meaning can transform that term into a
registrable trademark” and therefore “the quality and quantity
of evidence simply does not matter in this case.” We interpret
the examining attorney’s silence on this issue as a concession
that, if the term is not generic, the record evidence is
sufficient to show acquired distinctiveness under Section 2(f).
Cf. TMEP § 1209.02(b) (“If the examining attorney fails to
separately address the sufficiency of the §2(f) evidence, this
may be treated as a concession that the evidence would be
sufficient to establish distinctiveness if the mark is
ultimately found not to be generic.”).
That being said, we acknowledge the principles that
applicant has the burden of establishing that its mark has
become distinctive, and that the more descriptive the term, the
greater the evidentiary burden to establish acquired
distinctiveness.7 See Yamaha International Corp. v. Hoshino
Gakki Co. Ltd., 840 F.2d 1572, 6 USPQ2d 1001, 1006 (Fed. Cir.
1988); In re Bongrain International (American) Corp., 894 F.2d
1316, 13 USPQ2d 1727 (Fed. Cir. 1990). Having carefully
reviewed the evidence of record, we find that applicant's
evidence of acquired distinctiveness is sufficient to establish
a prima facie showing thereof.
7
Despite the examining attorney’s effective concession of the issue,
we must make our own assessment of applicant’s evidence.
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Serial Nos. 78906900 and 78901341
At the outset, we note applicant’s continuous use of the
mark COUNTRY MUSIC ASSOCIATION since 1958. Declaration of Tammy
Genovese, Chief Executive Officer of applicant (“Genovese
Declaration”), ¶ 4 attached to response filed February 13, 2008;
Declaration of Russell P. Beets, ¶ 6, attached to response filed
February 13, 2008. In addition, the number of individual and
organizational memberships in applicant’s association exceeds
6000. Declaration of Kristen L. Fancher (“Fancher
Declaration”), ¶ 3, attached to response filed May 14, 2007.
Applicant has also presented for over 43 years the Country Music
Association Awards recognizing professional excellence, which
from 2001-2007 had approximately 36 million television viewers
each year, and since 1972 it has sponsored the Country Music
Festival which has been annually televised since 1974. Genovese
Declaration, ¶ 10; Fancher Declaration, ¶ 7 and 8.
The record shows that in recent years applicant has
increased its promotional activities in connection with the mark
COUNTRY MUSIC ASSOICATION. For example, from 2000–2007,
applicant engaged in targeted advertising campaigns, spending
approximately $1-3 million annually on print and television ads,
trade shows, promotional events, and email campaigns. Genovese
Declaration, ¶ 5 and 7. During that same time period, applicant
earned over $92.8 million in revenues. Genovese Declaration,
¶ 8.
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Serial Nos. 78906900 and 78901341
Applicant has also made use of the Internet to promote its
mark. Applicant has expended resources to ensure that when
Internet users type the phrase “Country Music Association” into
an Internet search engine, the first hit that appears on a
search results list is a link to the home page of applicant’s
website, which displays applicant’s mark COUNTRY MUSIC
ASSOCIATION. Genovese Declaration, ¶ 8 and attachments to “Item
8 Search Engine Results.” In addition, applicant’s
www.cmaworld.com website which promotes applicant’s association
services had over 15 million hits in 2007. Genovese
Declaration, ¶ 8.
Finally, although the consumer survey conducted by Dr. Ford
was submitted in connection with the issue of genericness, the
acquired distinctiveness of the term COUNTRY MUSIC ASSOCIATION
among the relevant purchasing public can be inferred from the
results. By categorizing the term COUNTRY MUSIC ASSOCIATION as
a brand name, 85% of the respondents were saying, in effect,
that they associated the term with the product or services of
only one company.
Thus, in view of applicant's long and continuous use,
significant sales and advertising expenditures, substantial
publicity in the national media, and brand name recognition
among consumers, we find that applicant has established acquired
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Serial Nos. 78906900 and 78901341
distinctiveness of COUNTRY MUSIC ASSOCIATION as its mark for the
recited services.
II. Application Serial No. 78901341 -- Disclaimer Requirement
The examining attorney has refused to register the mark in
this companion application absent a disclaimer of the wording
COUNTRY MUSIC ASSOCIATION, arguing that this phrase is generic.
For the reasons discussed in connection with Application Serial
No. 78906900, we find that the phrase COUNTRY MUSIC ASSOCIATION
as a whole is not generic; however, the word ASSOCIATION is.
Accordingly, we affirm the refusal to the extent that the mark
may not be registered without a disclaimer of ASSOCIATION.
Decision: The refusals to register are affirmed only to the
extent that the term ASSOCIATION in both marks is generic.
Applicant is allowed until thirty (30) days from the date of
this decision to submit to the Board, in connection with each
application, a disclaimer (in proper form) of the word
“association,” in which case this decision will be set aside and
the applications will be forwarded to publication.8 See
Trademark Rule 2.142(g).
8
A proper disclaimer reads as follows: "No claim is made to the
exclusive right to use ASSOCIATION apart from the mark as shown."
28