Country Music Association, Inc.

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).

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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

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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

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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;

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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

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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

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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

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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

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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

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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

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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

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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

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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).

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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

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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

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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.

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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