In re ResponsiveAds, Inc.

• Decision Date: 30 September 2022
• Docket Number: Serial 88453313
• Parties: In re ResponsiveAds, Inc.
• Court: United States Patent and Trademark Office. United States Patent and Trademark Office, Trademark Trial and Appeal Board

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In re ResponsiveAds, Inc.

Serial No. 88453313

United States Patent and Trademark Office, Trademark Trial and Appeal Board

September 30, 2022

This Opinion is Not a Precedent of the TTAB

Joel N. Bock, Dentons U.S. LLP, for ResponsiveAds, Inc.

Christina M. Riepel, Trademark Examining Attorney, Law Office 124, Lydia Belzer, Managing Attorney.

Before Taylor, Coggins, and Johnson, Administrative Trademark Judges.

OPINION

Johnson, Administrative Trademark Judge

ResponsiveAds Inc. ("Applicant") seeks registration on the Principal Register of the proposed mark RESPONSIVEADS,^[1] in standard characters, for services ("Applicant's Services") identified as:

Advertising, marketing and promotional services relating to structuring, formatting, layout, generation, and distribution of advertising content and creatives material, namely creative marketing design services and distribution of advertising materials; creative marketing design assistance in structuring, formatting, layout, generation, and distribution of marketing, promotional and advertising materials and content; content management services, namely, database management; creative design and ideation services in the fields of promotion, marketing and advertising; ad serving, namely, placing advertisements on websites for others using specialized computer software, in International Class 35; and

Providing online non-downloadable software accessible via a browser that provides software tools for structuring, formatting, layout, generation, and delivery of content and advertising creative material; providing online non-downloadable software accessible via a browser that provides assistance in structuring, formatting, layout, generation, and delivery of marketing, promotional and advertising materials and content; providing online non-downloadable software accessible via a browser that provides software tools for managing content and advertising creative material; application service provider, namely, hosting, managing, developing, analyzing, and maintaining applications, and software of others in the fields of advertising and marketing; advertising, marketing and promotional services relating to structuring, formatting, and layout of content, namely, graphic design of marketing materials; graphic design assistance in structuring, formatting, and layout of marketing, promotional and advertising materials and content, in International Class 42.

The Trademark Examining Attorney refused registration on the ground that the proposed mark is generic for the identified services under Sections 1, 2, 3, and 45 of the Trademark Act, 15 U.S.C. §§ 1051, 1052, 1053, and 1127; and in the alternative, if not generic, the proposed mark is merely descriptive of the services under Section 2(e)(1) of the Trademark Act, 15 U.S.C. § 1052(e)(1), without having acquired distinctiveness under Section 2(f), 15 U.S.C. § 1052(f).

When the refusals were made final, Applicant appealed. The appeal has been briefed.^[2] We affirm the refusals to register.

I. Refusal of Registration under Trademark Act Sections 1, 2, 3, and 45

The Examining Attorney contends that RESPONSIVEADS is incapable of distinguishing Applicant's Services because it is generic for them. "Generally, where the matter sought to be registered identifies [services] that are a primary or central focus of the [business], we have considered the term to be generic." In re Cordua Rests. LP, 100 U.S.P.Q.2d 1227, 1231 (TTAB 2014) (citations omitted) (bracketed words in original), aff'd, 823 F.3d 594, 118 U.S.P.Q.2d 1632 (Fed. Cir. 2016).

The United States Court of Appeals for the Federal Circuit has set forth a two-step inquiry to determine whether a mark is generic:

• First, what is the genus (category or class) of goods or services at issue? H. Marvin Ginn Corp. v. Int'l Ass'n of Fire Chiefs, Inc., 782 F.2d 987, 228 U.S.P.Q. 528, 530 (Fed. Cir. 1986). The genus, in appropriate circumstances, may be defined by the services identified in the application. See, e.g., Magic Wand Inc. v. RDB Inc., 940 F.2d 638, 19 U.S.P.Q.2d 1551, 1552 (Fed. Cir. 1991) ("a proper genericness inquiry focuses on the identification set forth in the application or certificate of registration"); In re Reed Elsevier Props. Inc., 77 U.S.P.Q.2d 1649, 1653 (TTAB 2005) (quoting Magic Wand, 19 U.S.P.Q.2d at 1552), aff'd, 482 F.3d 1376, 82 U.S.P.Q.2d 1378 (Fed. Cir. 2007).

• Second, is the term sought to be registered understood by the relevant public primarily to refer to that genus of goods or services? Marvin Ginn, 228 U.S.P.Q. at 530; see also Princeton Vanguard, LLC v. Frito-Lay N. Am., Inc., 786 F.3d 960, 114 U.S.P.Q.2d 1827, 1833 (Fed. Cir. 2015) (the relevant public's perception is the principal consideration in determining whether a term is generic). The relevant public encompasses "actual [and] potential purchasers of . . . goods or services" identified in the application. Loglan Inst. Inc. v. Logical Language Grp. Inc., 962 F.2d 1038, 22 U.S.P.Q.2d 1531, 1533 (Fed. Cir. 1992) (quoting Magic Wand, 19 U.S.P.Q.2d at 1553); see Sheetz of Del., Inc. v. Doctor's Assocs. Inc., 108 U.S.P.Q.2d 1341, 1351 (TTAB 2013) (citing Magic Wand, 19 U.S.P.Q.2d at 1553).

"An inquiry into the public's understanding of a mark requires consideration of the mark as a whole." Princeton Vanguard, 114 U.S.P.Q.2d at 1831 (quoting In re Steelbuilding.com, 415 F.3d 1293, 75 U.S.P.Q.2d 1420, 1421 (Fed. Cir. 2005)). "Even if each of the constituent words in a combination mark is generic, the combination is not generic unless the entire formulation does not add any meaning to the otherwise generic [term]." In re 1800Mattress.com IP LLC, 586 F.3d 1359, 92 U.S.P.Q.2d 1682, 1684 (Fed. Cir. 2009) (quoting In re Steelbuilding.com, 75 U.S.P.Q.2d at 1421); see also Princeton Vanguard, 114 U.S.P.Q.2d at 1832.

Evidence of the relevant public's understanding of a term may be obtained from "any competent source, such as consumer surveys, dictionaries, newspapers and other publications." Princeton Vanguard, 114 U.S.P.Q.2d at 1830 (quoting In re Northland Aluminum Prods., Inc., 777 F.2d 1556, 227 U.S.P.Q. 961, 963 (Fed. Cir. 1985)).

A. Whether RESPONSIVEADS is Generic for the Recited Services

We look to the evidence of record to determine whether RESPONSIVEADS is generic for the services recited in the application.

1. Defining the Genus of RESPONSIVEADS

Here, the genus of RESPONSIVEADS is adequately defined by the services recited in the application. If the proposed mark is generic for any one of the services in the identification, registration is appropriately refused for that entire class of services. In re Katch, LLC, 2019 U.S.P.Q.2d 233842, at *10 (TTAB 2019).

2. The Relevant Public for the Services

Applicant describes the relevant public for its services not as ordinary consumers or purchasers, but as "highly sophisticated business purchasers who would not use or understand [the proposed mark] in a generic or descriptive manner relative to Applicant's services," (6 TTABVUE 8; see also Mar. 30, 2021 Response to Office Action at p. 2). The Examining Attorney contends the relevant public for Applicant's Services "includes all consumers who seek to advertise or market a product or service, including both non-professionals in the field of advertising and marketing, as well as advertising and marketing professionals." (See Examining Attorney's Brief, 8 TTABVUE 7-8). But "[t]he critical issue in genericness cases is whether members of the relevant public primarily use or understand the term to be protected to refer to the genus of goods or services in question." Marvin Ginn, 228 U.S.P.Q. at 530.

"[T]he determination of whether a mark is generic must be made in relation to the goods or services for which registration is sought, not in the abstract." In re Virtual Independent Paralegals, LLC, 2019 U.S.P.Q.2d 111512, at *2 (TTAB 2019). Since there are no restrictions or limitations to the channels of trade or classes of consumers for Applicant's Services, those services and the relevant purchasers for them may not be limited by extrinsic argument or evidence. See Remington Prods., Inc. v. N. Am. Philips Corp., 892 F.2d 1576, 13 U.S.P.Q.2d 1444, 1448 (Fed. Cir. 1990) (the mark must be considered in context, i.e., in connection with the goods); Magic Wand, 19 U.S.P.Q.2d at 1553-54 ("By the words 'relevant public' for a product sold in the marketplace, [the Trademark Clarification Act of 1984] means the relevant public which does or may purchase the goods or services in the marketplace."); see also Couch/Braunsdorf Affinity, Inc. v. 12 Interactive, LLC, 110 U.S.P.Q.2d 1458, 1463 (TTAB 2014) ("The question of registrability must be determined, in proceedings before the Board, on the basis of the services as set forth in the registrations, rather than in reference to the precise nature of the services on or in connection with which the marks are actually used or intended to be used."). Based on the services recited in the application, we find that the relevant public for RESPONSIVEADS are consumers who seek to advertise or market a product or service, including both non-professionals as well as advertising and marketing professionals.

3. Does the Relevant Public Understand RESPONSIVEADS Primarily to Refer to the Genus of Services?

Next we consider whether the relevant public understands the term RESPONSIVEADS, when used in connection with Applicant's Services, to refer to the genus of services.

A key aspect, central focus or feature, or main characteristic of a service may be generic for that service. In re Cordua Rests., 118 U.S.P.Q.2d at 1637-38 (CHURRASCOS held generic for restaurant services where term referred to a key aspect of a class of restaurants called "churrasco restaurants"...