GoTo.com, Inc.

Trademark Trial and Appeal Board

Feb 26, 2003

No. 75678255 (T.T.A.B. Feb. 26, 2003)

Mailed: 26 FEB 2003
Paper No. 18
AD
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re GoTo.com, Inc.
________
Serial No. 75/678,255
_______
David S. Fleming of Brinks, Hofer, Gilson & Lione for
GoTo.com, Inc.
Amy Ann Long, Trademark Examining Attorney, Law Office 104
(Sidney I. Moskowitz, Managing Attorney).
_______
Before Hairston, Bottorff, and Drost, Administrative
Trademark Judges.
Opinion by Drost, Administrative Trademark Judge:
GoTo.com, Inc. (applicant) filed a trademark
application to register the mark PAY-FOR-PERFORMANCE
ADVERTISING (in typed form) on the Principal Register for
services ultimately identified as:
Providing information directory services for a wide
variety of topics, and referrals to web sites that
provide a wide variety of information, products and
services in International Class 35;
THIS DISPOSITION IS
NOT CITABLE AS
PRECEDENT OF THE
TTAB
Ser. No. 75/678,255
2
Electronic transmission of data via a global
computer communications network; providing multiple
user access to a global computer communications
network for information and data in International
Class 38; and
Electronic navigation services, namely, providing
search engine services for obtaining data on a global
computer communications network in International Class
42.1
The examining attorney2 refused to register the mark on
the ground that the mark, when used in association with the
services, is merely descriptive. 15 U.S.C. § 1052(e)(1).
After the examining attorney made the refusal final, this
appeal followed.3
The examining attorney’s position is that the mark
PAY-FOR-PERFORMANCE ADVERTISING is merely descriptive
because “the combination of these terms is commonly used in
connection with services similar to the applicant’s
1 Serial No. 75/678,255, filed April 9, 1999. The application is
based on applicant’s allegation of a bona fide intention to use
the mark in commerce.
2 The current examining attorney was not the original examining
attorney in this case.
3 When applicant filed its appeal brief, it included some
evidence that had not previously been made of record. After
applicant’s brief was filed, the examining attorney filed a
request for remand “in order to supplement the record made by her
predecessor.” Paper dated September 27, 2001. On October 17,
2001, the Board granted the request for remand. On November 15,
2001, the examining attorney mailed an Office action with
additional evidence. Subsequently, the examining attorney filed
her brief (p. 6) and objected to applicant’s new evidence in its
appeal brief. While normally an applicant cannot submit new
evidence on appeal (37 CFR 2.142(d)), the examining attorney’s
subsequent request for a remand and the submission of additional
evidence has rendered this objection moot.
Ser. No. 75/678,255
3
services and the public is familiar with this common
usage.” Br. at 3. The examining attorney submitted
numerous NEXIS references, some of which are set out below,
that show use of the term “Pay for Performance” used in
relation to advertising services.
Pay-for-performance advertising operates two main
models: cost-per-acquisition (CPA) and cost-per-click
(CPC). The CPA model means that the advertiser only
pays the media owner when a visitor registers or buys
something from its site – that is, the user is
“acquired.” The CPC model is when the advertiser pays
the media owner for every individual click on the ad,
not the ad being served.
New Media Age, May 31, 2001.
NetBank has enjoyed some success advertising through
Internet portals, using pay-for-performance
advertising with its online partners and using banner
ads that link to pages offering incentives for
customers to apply for and open an account.
DM News, July 24, 2000.
Since last year, ValueClick has been consolidating its
position as a provider of pay-for-performance
advertising services to online advertisers and Web
publishers.
Ventura County Star, July 3, 2001.
Advertisers and agencies said creative personnel were
far less affected by performance-based payment.
Indeed, pay-for-performance advertisers actually rated
the quality of their advertising slightly lower than
those that use other compensation systems.
New York Times, June 7, 1990.
The Internet has already given birth to a hybrid ad
model, a combination of CPM and pay-for-performance.
The Internet Advertising Bureau puts about 50 percent
of current ad deals into this category.
Sacramento Bee, September 1, 1999.
Ser. No. 75/678,255
4
[T]he agency currently is working out a new contract
to accommodate its recently won McDonald’s Corp.
account and pay-for-performance is expected to be one
proposal. Advertising Age reported Laura Petrecca
interviewed Mr. Reinhard and Young & Rubicam Chairman-
CEO Peter Georgescu on pay-for-performance.
Advertising Age, September 8, 1997.
Jack Gilden, the president of Gilden Advertising in
Baltimore, agreed that pay-for-performance won’t
always work in the ad agency’s favor.
Washington Times, April 28, 1997.
Advertising Age was the latest to add to the
speculation, reporting in a front-page story this week
that P&G President Durk Jager has a “vision” to move
toward pay-for-performance for ad agencies.
Cincinnati Enquirer, October 2, 1996.
“Like other industries,” Juris said, “papers are
talking more about pay for performance than actually
doing it, except when it comes to the advertising
staff.”
Chicago Tribune, August 25, 1991.
An interesting concept has risen from the burning
embers of last year’s dot.com advertising frenzy:
pay-for-performance advertising.
Marketing Week, July 21, 2001.
To further support her position, the examining
attorney also submitted printouts from the Internet showing
other uses of the term PAY-FOR/PER-PERFORMANCE, some of
which are set out below.
Marketing firm starts pay-for-performance plan.
http://dcinternet.com
Pay-Per-Performance Advertising, The Newest Path to
Surefire Advertising… By using the big three kinds of
Pay-Per-Performance advertising – search engines,
banners and email – you stretch your ad budget with
guaranteed results
www.iboost.com.
Ser. No. 75/678,255
5
We have two methods for real estate professionals to
market themselves to our web visitors. Both methods
use a pay-for-performance model also known as pay-per-
click advertising.
http://netfiber.com.
With this evidence as well as dictionary definitions
of the individual words, the examining attorney concluded
that “the terms PAY FOR PERFORMANCE ADVERTISING are
descriptive terms commonly used in the industry to describe
types of advertising and marketing models.” Office Action
dated November 15, 2001.
Applicant, on the other hand, argues that its mark is
suggestive. It acknowledges that its mark “is used in
connection with Internet search engine services, whereby
advertisers place bids on search terms and pay GoTo the
price of the bid each time an Internet user searches on
that term and clicks through to the advertiser’s site.”
Brief at 5. However, “[P]rospective purchasers must make a
connection between the mental image of ‘pay-for-
performance’ and Applicant’s Internet search engine
services. Such an analysis requires the imagination,
thought, and perception of the prospective purchaser.”
Brief at 8. Applicant also refers to the registration or
publication of other marks as support for its argument that
its mark is suggestive. Asking the Board to resolve doubts
Ser. No. 75/678,255
6
in its favor, applicant argues that the examining
attorney’s refusal should be reversed.4
We affirm the examining attorney’s refusal to register
applicant’s mark.
A mark is merely descriptive if it immediately
describes the ingredients, qualities, or characteristics
of the goods or services or if it conveys information
regarding a function, purpose, or use of the goods or
services. In re Abcor Development Corp., 588 F.2d 811,
200 USPQ 215, 217 (CCPA 1978). See also In re Nett
Designs, 236 F.3d 1339, 57 USPQ2d 1564, 1566 (Fed. Cir.
2001). Courts have long held that to be “merely
descriptive,” a term need only describe a single
significant quality or property of the goods. In re
Gyulay, 820 F.2d 1216, 3 USPQ2d 1009, 1009 (Fed. Cir.
1987); Meehanite Metal Corp. v. International Nickel Co.,
4 On June 12, 2002, applicant filed a motion to suspend with a
request for remand so that applicant may amend the application to
the Supplemental Register. On July 25, 2002, the examining
attorney denied the amendment to the Supplemental Register
because the application is based on an intent-to-use and
applicant had not alleged lawful use in commerce as required by
the Trademark Act. 15 U.S.C. § 1091(a). Even though in its
response dated March 13, 2000, applicant included the declaration
of Stephanie Sarka in which she alleged that applicant has used
the mark in commerce at least as early as December 18, 1998,
applicant has not filed an amendment to allege use, which would
include a specimen of the mark as actually used in commerce. 37
CFR §§ 2.47(c) and 2.76. Applicant did not respond to the
July 25, 2002, Office action.
Ser. No. 75/678,255
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262 F.2d 806, 120 USPQ 293, 294 (CCPA 1959). We look at
the mark in relation to the goods or services, and not in
the abstract, when we consider whether the mark is
descriptive. Abcor, 200 USPQ at 218.
We start by observing that applicant’s services are
identified as:
Providing information directory services for a wide
variety of topics, and referrals to web sites that
provide a wide variety of information, products and
services;
Electronic transmission of data via a global
computer communications network; providing multiple
user access to a global computer communications
network for information and data; and
Electronic navigation services, namely, providing
search engine services for obtaining data on a global
computer communications network.
As part of these services, applicant “provides its clients
with an electronic forum to advertise in connection with
Internet search engine services.” Response dated March 13,
2000, p. 6. Applicant further explains that “Applicant
targets its services at businesses who sell direct to the
consumer. Applicant’s clients are interested in directly
reaching the end user who are searching for their products
or services on the Internet.” Id. at 7. Applicant’s
services involve referring Internet users to web sites that
provide a wide variety of products and services,
transmitting data via the Internet, and providing search
Ser. No. 75/678,255
8
engine services for obtaining data. As part of these
services, applicant places and sells advertising so
advertisers selling products and services can reach
Internet users searching for those products and services.
Thus, applicant’s term describes a feature or
characteristic of applicant’s services, i.e., that
advertising is available on a pay-for-performance basis.
See In re Andes Candies Inc., 478 F.2d 1264, 178 USPQ 156,
157 (CCPA 1973) (“A mark is ‘merely descriptive’ under Sec.
2(e)(1) if it merely describes a characteristic (flavor) of
the goods (candy)”).
Turning to the mark itself, PAY-FOR-PERFORMANCE
ADVERTISING in typed form, we find that the examining
attorney’s evidence compels only one conclusion – that the
term is highly descriptive for applicant’s services. As
set out earlier, the term “pay-for-performance” is a term
used in the advertising and marketing industry. An
Advertising Age article notes that an “agency currently is
working out a new contract to accommodate its recently won
McDonald’s Corp. account and pay-for-performance is
expected to be one proposal.” The president of Gilden
Advertising in Baltimore “agreed that pay-for-performance
won’t always work in the ad agency’s favor.” The
Cincinnati Enquirer reported on a story in Advertising Age
Ser. No. 75/678,255
9
regarding the president of P&G having “a ‘vision’ to move
toward pay-for-performance for ad agencies.” The
Sacramento Bee reports that the “Internet has already given
birth to a hybrid ad model, a combination of CPM and pay-
for-performance.”
In addition to these references to “pay for
performance” for advertising and marketing services in
general, there is even more evidence that the term “pay-
for-performance advertising” would be well-recognized as at
least a descriptive term for advertising services on the
Internet. In fact, according to New Media Age, there are
two types of pay-for-performance advertising on the
Internet: “Pay-for-performance advertising operates two
main models: cost-per-acquisition (CPA) and cost-per-click
(CPC).” In a DM News story NetBank was reported to have
“enjoyed some success advertising through Internet portals,
using pay-for-performance advertising with its online
partners and using banner ads that link to pages offering
incentives for customers to apply for and open an account.”
A Ventura County Star story described ValueClick “as a
provider of pay-for-performance advertising services to
online advertisers and Web publishers.”
This sampling of the evidence of record amply
demonstrates that the term “Pay-For-Performance
Ser. No. 75/678,255
10
Advertising” is commonly used in the advertising and
marketing fields.
Applicant argues that the “combination of the terms
“PAY,” “FOR,” “PERFORMANCE” and “ADVERTISING” creates a
unique commercial impression that consumers would
undoubtedly identify as a trademark.” Brief at 5-6. While
the examining attorney has provided dictionary definitions
of the individual terms (see Office Action dated November
15, 2001) as evidence of descriptiveness, the NEXIS and
Internet evidence demonstrates that applicant’s combined
mark, not merely the individual words, is used
descriptively to refer to advertising and similar services.
Unlike the marks in the cases applicant cites, far from
being a “unique commercial impression,” applicant’s term is
already in use by others in the relevant trade to refer to
advertising services.
Applicant argues that “two third-party registrations
and one allowed application strongly support Applicant’s
position.” Brief at 8. Applicant refers to Registration
Nos. 1,981,109 (PAY FOR PERFORMANCE)5 and 1,581,858 (PAY FOR
PERFORMANCE) and Application Serial No. 75/680,575 (PAY FOR
PLACEMENT). We start by pointing out that, as applicant
5 This registration was the subject of a refusal under Section
2(d) that was subsequently withdrawn.
Ser. No. 75/678,255
11
has acknowledged, Registration No. 1,581,858 was registered
in 1990 and cancelled in 1996. Brief at 8. An expired
registration that was cancelled more than six years ago
provides little support for applicant’s argument that its
mark is now suggestive. Likewise Serial No 75/680,575, an
intent-to-use application for a different mark that was
abandoned on March 3, 2002, for failure to respond to an
Office action, is not very probative. Moreover, even if an
applicant can point to other registrations or applications
that have “some characteristics similar to [this]
application, the PTO’s allowance of such prior
registrations does not bind the Board or this court.” In
re Nett Designs Inc., 236 F.3d 1339, 57 USPQ2d 1564, 1566
(Fed. Cir. 2001). We cannot ignore the overwhelming
evidence of descriptiveness simply because applicant can
point to some registrations or applications that may be
inconsistent to the decision in this case. Even
applicant’s ownership of an incontestable registration for
the mark DURANGOS for cigars did not prohibit the refusal
of the mark DURANGO on the ground that the mark was
geographically deceptively misdescriptive for chewing
tobacco. In re Loew's Theatres, Inc., 769 F.2d 764, 226
USPQ 865, 869 (Fed. Cir. 1985) (“[E]ach application for a
Ser. No. 75/678,255
12
registration of a mark for particular goods must be
separately evaluated”).
We conclude by finding that on the record before us,
we have no doubt that the term PAY-FOR-PERFORMANCE
ADVERTISING would be immediately recognized by prospective
purchasers as a term that is at least merely descriptive of
a feature or characteristic of applicant’s identified
services.
Decision: The examining attorney’s refusal to
register the term PAY-FOR-PERFORMANCE ADVERTISING on the
ground that the mark is merely descriptive of the involved
services is affirmed.