Directory of Schools, LLC

Trademark Trial and Appeal Board

Mar 23, 2009

No. 77221668 (T.T.A.B. Mar. 23, 2009)

Mailed: March 23, 2009

UNITED STATES PATENT AND TRADEMARK OFFICE
___________

Trademark Trial and Appeal Board
___________

In re Directory of Schools, LLC
___________

Serial No. 77221668
___________

Ross B. Jones of Merrill, Arnone & Jones for Directory of
Schools, LLC.

Caryn Glasser, Trademark Examining Attorney, Law Office 108
(Andrew Lawrence, Managing Attorney).
____________

Before Quinn, Walters and Walsh, Administrative Trademark
Judges.

Opinion by Walters, Administrative Trademark Judge:

Directory of Schools, LLC has filed an application to
register on the Principal Register the standard character
mark DIRECTORY OF SCHOOLS for “providing an online directory
information service featuring information regarding
education,” in International Class 35.1 The application was
filed with a claim of acquired distinctiveness under Section

1 Serial No. 77221668, filed July 3, 2007, based on use of the mark in
commerce, alleging first use and use in commerce as of December 18,
2001.
THIS OPINION
IS NOT A PRECEDENT OF
THE TTAB
Serial No. 77221668
2
2(f) and it includes a disclaimer of DIRECTORY apart from
the mark as a whole.
The examining attorney has issued a final refusal to
register, under Section 2(e)(1) of the Trademark Act, 15
U.S.C. §§1052(e)(1), on the ground that DIRECTORY OF SCHOOLS
is merely descriptive in connection with the identified
services and applicant’s attempt to overcome the
descriptiveness refusal with a claim of acquired
distinctiveness does not suffice.2
Applicant has appealed. Both applicant and the
examining attorney have filed briefs. We affirm the refusal
to register.
Applicant filed its application initially with a claim
of acquired distinctiveness, which it supported with its
statement of more than five years of substantially exclusive
and continuous use of DIRECTORY OF SCHOOLS. Stating that
DIRECTORY OF SCHOOLS is highly descriptive, the examining
attorney concluded that the statement is insufficient to
establish acquired distinctiveness.

2 Applicant contends that the examining attorney inappropriately
characterized its mark as generic in the final action; that the issue
had not been raised previously; and, alternatively, that the examining
attorney has not established that DIRECTORY OF SCHOOLS is generic in
connection with the identified services. The examining attorney
clarified in her brief that the refusal is not based on genericness.
Thus, genericness is not before the Board in this appeal. In this
regard, we have not considered the examining attorney’s statements that
no amount of evidence by applicant would establish acquired
distinctiveness herein.

Serial No. 77221668
3
Subsequently, applicant submitted additional evidence,
including information that DIRECTORY OF SCHOOLS is
recognized as applicant’s brand by the Google search engine
and by other search engines as well; that it receives
between 1 and 3 million page viewings per day; that it has
been rendering its online services for six years; that its
listing in Google search results contains numerous site
links, which indicates the recognition of its popularity;
and that it has been placed as the first search result by
Google’s search engine, as well as by search engines
Yahoo.com and Ask.com. Applicant explained the purported
significance of this evidence, as discussed below.
The examining attorney concluded that the evidence
remained insufficient to establish acquired distinctiveness
in view of the alleged highly descriptive nature of the
mark. In support of her position that DIRECTORY OF SCHOOLS
is highly descriptive, the examining attorney states that
“the word ‘directory’ [is defined] as: ‘book of names: a
book alphabetically listing persons and organizations,
usually with information about how to contact them;’ and the
word ‘schools’ is defined as: ‘education university-level
institution: a college or university.’ [Encarta.msn.com]
As evidenced by applicant’s specimen, the applicant provides
a directory of schools, specifically college and university
level schools with information and links on how to contact
Serial No. 77221668
4
them. (See specimen submitted July 3, 2007).” (Brief,
unnumbered p. 6.) The examining attorney also submitted
excerpts from various Internet websites for third-party
school directories. The following are several examples:
• Aisne.org – Association of Independent Schools in New
England – includes a heading in its homepage index
entitled “Directory of Schools.”
• Engineering.schools.com – includes a “Directory of
Engineering Schools in the United States.”
• Cecnsw.catholic.edu – includes a “Schools Directory.”
• Opi.mt.gov – includes an “OPI Directory of Montana
Schools.”
• Mytechschools.com – includes a “Directory of Technical
Schools.”

Applicant responded to the examining attorney’s
position by stating that evidence of sales and advertising
expenses is irrelevant because applicant uses its mark only
on the Internet; that the evidence it did submit is
“appropriate” and “competent” for an Internet service
because it shows the Internet’s “own recognition of
[applicant’s mark] as a source of origin for applicant’s
services, as well as Internet sources that provide guides to
trademark usage.” (Reply Brief, p. 4.) Applicant states,
further, that it “operates an enormously successful online
service, measured not by traditional data-points like
advertising expenses, but measured in methods that are more
relevant to the online world: top-rated search engine
results, and recognition by the world’s foremost search
Serial No. 77221668
5
engine that applicant’s mark is considered a name brand.”
(Reply Brief, p. 3.)
Serial No. 77221668
6
Evidentiary Issues
It is well established that both the examining attorney
and applicant may submit as evidence excerpts from Internet
websites and applicant does not disagree. However,
applicant objects to the Internet evidence submitted by the
examining attorney in this case because each page indicates
that it is from “cached” Internet pages and, as such, it is
unverifiable and should be excluded. The Google print-out
of each website submitted by the examining attorney contains
the following statement by Google:
This is Google’s cache of
http://www.aisne.org/school_or_camp/directory.asp
as retrieved on Aug 9, 2007 18:44:34 GMT.
Google’s cache is the snapshot that we took of the
page as we crawled the web. The page may have
changed since that time. Click here for the
current page without highlighting. This cached
page may reference images which are no longer
available. Click here for the cached text only. …

Applicant attached to its brief an explanation and
discussion of “cached pages” from the Google website at
googleguide.com. This is not appropriate material for
judicial notice, but because the information is useful and
the examining attorney did not object, we exercise our
discretion and we have considered this evidence.
We find applicant’s basis for arguing that the
examining attorney’s Internet evidence should be excluded to
be entirely without merit. As is apparent from the Google
heading on the cached page and the additional information
Serial No. 77221668
7
submitted by applicant about cached pages, the cached page
is an exact “snapshot” of the web page taken at the date and
time noted. Thus, it is entirely accurate and verifiable on
its face. If applicant is uncertain of the page’s contents
at that time, it can consult Google’s archives site or one
of the archiving sites on the Internet to confirm that the
page is accurate for the stated date and time. The
examining attorney put this evidence in the record during
examination and applicant had an opportunity to respond to
the evidence. In other words, if the evidence was
inaccurate or the website had changed or was no longer
available, applicant could have submitted a report or a more
current copy of the web page for consideration. Moreover,
we view all evidence from Internet websites with the
understanding that it may appear for a limited time and that
it is subject to change. Thus, applicant’s objection is
overruled and the examining attorney’s evidence has been
considered.
Analysis
Applicant’s claim under Section 2(f) is essentially an
admission that its mark is merely descriptive and applicant
does not contest this. We also find that DIRECTORY OF
SCHOOLS clearly describes a significant feature of
applicant’s services of “providing an online directory
information service featuring information regarding
Serial No. 77221668
8
education.” It is apparent from the copy of its website
home page submitted as a specimen of use that the site
provides contact information and Internet links to various
schools as well as information about degree programs, fields
of study and other education resources.
Therefore, the only question before us is whether
applicant’s declaration and supporting evidence are
sufficient to establish that DIRECTORY OF SCHOOLS has
acquired distinctiveness for “providing an online directory
information service featuring information regarding
education.” Our analysis necessarily involves considering
the degree of descriptiveness of the proposed mark.
Logically, the standard for establishing acquired
distinctiveness becomes more difficult as the mark’s
descriptiveness increases. Yamaha International Corp. v.
Hoshino Gakki Co., 840 F.2d 1571, 6 USPQ2d 1001, 1008 (Fed.
Cir. 1988) (The kind and amount of evidence of acquired
distinctiveness required to secure a registration will
necessarily vary with the subject matter for which
registration is sought).
The evidence of third-party Internet websites shows
common use of the terms “directory” and “schools,” sometimes
in the same order and manner as applicant’s mark, to
describe a listing of various types of schools.
Additionally, and contrary to applicant’s contentions
Serial No. 77221668
9
otherwise, the meanings of the terms “directory” and
“schools” in applicant’s mark is essentially the same as the
meanings of these terms in dictionary definitions submitted
by the examining attorney. The order of the terms in the
marks and their use together creates no unique or unusual
meaning for either the individual terms or the mark as a
whole. Thus, we agree with the examining attorney that
applicant’s proposed mark, DIRECTORY OF SCHOOLS, falls on
the far end of the spectrum as a highly descriptive mark in
connection with its identified services. It is highly
descriptive of a significant aspect of those services, i.e.,
the directory of schools that appears on its website.
Therefore, we agree with the examining attorney that
applicant’s use of its proposed mark for approximately seven
years is neither conclusive nor persuasive that DIRECTORY OF
SCHOOLS has acquired distinctiveness. In prior cases
involving usage of comparable or even much longer duration,
and with some of these uses even being coupled with
significant sales and advertising expenditures (not to
mention direct evidence of customers’ perceptions), the
Board or its primary reviewing court has found a failure to
demonstrate acquired distinctiveness within the meaning of
Section 2(f). See In re Andes Candies, Inc., 478 F.2d 1264,
178 USPQ 156, 158 (CCPA 1973); In re Gibson Guitar Corp., 61
Serial No. 77221668
10
USPQ2d 1948, 1952 (TTAB 2001) (66 years of use). and In re
Packaging Specialists, Inc., 221 USPQ 917, 920 (TTAB 1984).
Likewise, and particularly in view of the highly
descriptive nature of the mark, we find that applicant’s
additional evidence, either alone or in combination with the
declaration of use, does not establish that its proposed
mark has acquired distinctiveness.3 The figures submitted
by applicant regarding number of visitors to applicant’s
website show only the popularity of applicant’s website, not
that the relevant viewers have come to view DIRECTORY OF
SCHOOLS as applicant’s source-identifying mark. See In re
Candy Bouquet International, Inc., 73 USPQ2d 1883, 1889
(TTAB 2004). Cf. Bose Corp. v. QSC Audio Products Inc., 293
F.3d 1367, 63 USPQ2d 1303, 1309 (Fed. Cir. 2002). Moreover,
applicant has not fully explained the nature of its business
(e.g., does its revenue come from advertisers, schools, or
website visitors; and who are its competitors) and, thus,
the Board has no context within which to determine the
significance of the information about applicant’s website
visitors.
Similarly, the fact that applicant may appear in the
number one position in a number of search engine searches or

3 While we agree with applicant that the Internet provides a relatively
recent venue for commerce, we do not agree that sales and advertising
figures have become irrelevant for Internet businesses in the context of
establishing trademark distinctiveness. In fact, in this case, such
information might have been a useful addition to the information that
applicant did submit.
Serial No. 77221668
11
that it has site links on a Google search result page are
not determinative. The information submitted by applicant
to explain the significance of its rankings indicates that
Google uses a complex and, to users, relatively opaque,
algorithm for determining a site’s location in its search
results; and that a website owner can do many things on its
site to improve its Google rankings. We note, by analogy,
that even highly substantial advertising and promotional
expenditures often are not sufficient to support a finding
of acquired distinctiveness. See, for example, Braun Inc.
v. Dynamics Corp., 975 F.2d 815, 24 USPQ2d 1121, 1133 (Fed.
Cir. 1992); and Brunswick Corp. v. British Seagull Ltd., 28
UDPQ2d 1197, 1202-03 (TTAB 1993). See also, In re Pennzoil
Products Co., 20 USPQ2d 1753 (TTAB 1991); and In re Pingel
Enterprises Inc., 46 USPQ2d 1811 (TTAB 1988) (advertising
dollars may suggest efforts made to acquire distinctiveness,
but do not demonstrate that the efforts have borne fruit).
Additionally, the fact that, in connection with its
search programs, Google may consider applicant’s DIRECTORY
OF SCHOOLS to be a “brand name” has little meaning in the
context of trademark law or the question of whether relevant
purchasers of applicant’s services view DIRECTORY OF SCHOOLS
as a source-identifying mark. In this regard, we note that,
on the Google search report submitted by applicant,
DIRECTORY OF SCHOOLS appears only in the context and
Serial No. 77221668
12
location of a web address, i.e., www.directoryofschools.com.
This does not prevent the phrase from being considered a
trademark, but viewers are more likely to perceive of this
use merely as a web address than as a mark.
Finally, we are not persuaded by applicant’s argument
that its case is similar to In re America Online, Inc., 77
USPQ2d 1618 (TTAB 2006), “where evidence was submitted that
showed ‘trademark recognition by customers, publishers, and
third parties’ which proved sufficient to prove acquired
distinctiveness.” (Brief, p. 9.) Applicant contends that
its evidence from major Internet search engines and their
methodology is equivalent to “evidence of customers,
publishers, and third parties.” (brief, p. 13.) We agree
with the examining attorney that the facts in the America
Online case are significantly different from the facts
before us here because applicant in that case provided
substantial evidence of its efforts to educate the public,
its substantial marketing reach, its millions of users and
billions of daily email messages, as well as customers’ and
third-party businesses’ affidavits. While the evidence
submitted by applicant may be equivalent to evidence of
third-parties’ perception of applicant’s mark, it certainly
does not substitute for evidence of consumer perception of
applicant’s mark.
Serial No. 77221668
13
As stated by the examining attorney, “applicant must
establish that the purchasing public has come to view the
proposed mark as an indicator of origin.” We note
applicant’s argument that the examining attorney has not
provided “a legal or factual basis for concluding that
applicant’s evidence is insufficient to establish acquired
distinctiveness.” (Reply Brief, p. 3.) However, the burden
is on applicant to establish acquired distinctiveness,
rather than on the examining attorney to refute applicant’s
showing. Yamaha at 1006; In re Hollywood Brands, Inc., 214
F.2d 139, 102 USPQ 294, 295 (CCPA 1954)(“[T]here is no doubt
that Congress intended that the burden of proof [under
Section 2(f)] should rest upon the applicant”). For the
reasons enunciated herein, we agree with the examining
attorney that applicant has not established that DIRECTORY
OF SCHOOLS has acquired distinctiveness as a source-
identifying mark for “providing an online directory
information service featuring information regarding
education.”
Decision: The refusal under Section 2(e)(1) of the Act
is affirmed and applicant has not overcome that refusal with
its claim of acquired distinctiveness under Section 2(f) of
the Act.