The United States Academic Decathlon Association

Trademark Trial and Appeal Board

Oct 24, 2005

No. 76343540 (T.T.A.B. Oct. 24, 2005)

Hearing: Mailed: October 24, 2005
August 24, 2005

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re The United States Academic Decathlon Association
________

Serial No. 76343540
_______

David W. Grace of Loeb & Loeb LLP for The United States
Academic Decathlon Association.

Michael Kazazian, Trademark Examining Attorney, Law Office
113 (Odette Bonnet, Managing Attorney).
_______

Before Chapman, Zervas and Kuhlke, Administrative Trademark
Judges.

Opinion by Chapman, Administrative Trademark Judge:
On November 30, 2001, The United States Academic
Decathlon Association (a California corporation) filed an
application to register the mark ACADEMIC DECATHLON on the
Principal Register for “educational and entertainment
services, namely, academic competitions and educational
testing” in International Class 41. The application is
based on applicant’s claimed date of first use in 1968 and
THIS DISPOSITION IS
NOT CITABLE AS PRECEDENT
OF THE TTAB
Ser. No. 76343540
2
first use in commerce of 1982. In response to the
Examining Attorney’s inquiry, applicant claimed ownership
of Registration No. 1242384 (issued June 14, 1983, Section
8 affidavit accepted, renewed) for the mark UNITED STATES
ACADEMIC DECATHLON USAD and design (“United States Academic
Decathlon” and “US” disclaimed) for “educational services
in the nature of academic competitions” in International
Class 41.
The Examining Attorney has refused registration under
Section 2(e)(1) of the Trademark Act, 15 U.S.C.
§1052(e)(1), on the basis that ACADEMIC DECATHLON, when
used in connection with the services of applicant, is
generic of them; and that if not generic, then the phrase
is merely descriptive of applicant’s services, and
applicant’s alternative claim of acquired distinctiveness
under Section 2(f) of the Trademark Act, 15 U.S.C.
§1052(f), is not sufficient in view of the nature of the
proposed mark.
When the refusals were made final, applicant appealed
to the Board. Both applicant and the Examining Attorney
have filed briefs. An oral hearing was held on August 24,
2005.
The Examining Attorney contends that “applicant has
allowed its mark to become a generic identifier of academic
Ser. No. 76343540
3
competitions”; that even if “applicant coined the term many
years ago, it has since become a generic term in relation
to a class of competition along the lines of spelling bees,
chess tournaments and science competitions” (brief,
unnumbered page 5), and it is thus incapable of functioning
as a mark and it cannot acquire distinctiveness; and that
even if the proposed mark is held not to be generic, the
phrase is highly descriptive, increasing applicant’s burden
of proof to establish acquired distinctiveness, which
applicant has not met.
The Examining Attorney refers to applicant’s specimen
of use, which consists of a few pages from applicant’s
website. Applicant makes the following statements therein:
The United States Academic Decathlon
Association is a team competition
wherein students match their intellects
with students from other schools.
Students are tested in ten categories.
…
Based on the model of the athletic
decathlon, the Academic Decathlon
requires participants to prepare for ten
academic events.
…
The Academic Decathlon is a ten-event
scholastic competition for teams of high
school students.

The Examining Attorney submitted (i) printouts of
several excerpted stories retrieved from the Nexis
Ser. No. 76343540
4
database,1 and (ii) printouts of pages from a few third-
party websites, all to show that the phrase “academic
decathlon” has become generic for a class of academic
competitions. Examples of the excerpted stories retrieved
from the Nexis database and the Internet pages from third-
party websites are set forth below:
Headline: School Volunteer
…During her years of volunteer work,
Shafer created an academic decathlon
program for elementary students and
worked tirelessly to drum up support
for a construction bond measure. …
“City News Service,” May 16, 2003;

Headline: Among The Best: Graduates
Pursue Far-Flung Careers
…Brittany Oligney is a licensed pilot
and an academic decathlon competitor. …
“The Houston Chronicle,” May 29, 2003;

1 In its brief (footnote 2), applicant “objected” to the
submission of short excerpts of stories. Applicant’s objection
is untimely raised for the first time in its brief on appeal and
it is not well taken in any event. Excerpted stories are
admissible, and applicant could have submitted the full text of
the stories, but did not do so. See TBMP §1208.01 (2d ed. rev.
2004).
Applicant also argues (brief, p. 9) that the Examining Attorney
did not submit a “random sample,” and he submitted “less than one
percent of the stories in the database [searches]”; and (brief,
p. 15) that “the examiner violated his duty as described in the
TBMP [§1208.01], which admonishes examining attorneys that they
must be impartial when submitting articles.”
The Board will not put a required percentage number on evidence
submitted by either an Examining Attorney or an applicant. And,
we disagree with applicant’s statement that the Examining
Attorney has a duty to be impartial in submitting articles. More
accurately, the Examining Attorney should put in representative
samples of articles (in full or excerpted form), but he or she
need not put in all stories in any particular case (which would
be cumbersome for applicant and the Board, and perhaps many of
the stories would be irrelevant).
Ser. No. 76343540
5
Headline: Here’s A Look At Tonight’s
Prime Time Line-up For Sunday, April 13
…Malcolm in the Middle -- A teacher
encourages Malcolm and the other
Krelboynes to cheat during an academic
decathlon. “Broadcast News,” May 13,
2003;

Headline: Students Compete In SkillsUSA
Event
…Nearly 1,200 students from the states
high schools, vocational-technical
institutes and colleges participated in
the Arkansas Association of SkillsUSA
competition. … The competition allows
students to demonstrate their skills
and knowledge, much like an academic
decathlon, according to Dick Burchett,
program manager, …. “Arkansas
Democrat-Gazette (Little Rock, AR),”
April 18, 2002;

Headline: Answer Man ACT, SAT No Match
For Kelley Senior
…He plays basketball, ping pong or
reads novels in his free time, although
he has very little now since he is
preparing for an academic decathlon
competition among area high schools.
“Tulsa World (Oklahoma),” March 1,
2000;

Headline: Meeting Agenda
…A report from the South Garland High
School principal and assistant
principal on the 2003 state academic
decathlon competition being held at the
school. … “The Dallas Morning News,”
February 6, 2003;

Headline: Delphi Students Eager For
Cerebral Workout
…Material covered in the academic
decathlon competitions is similar to a
first semester freshmen schedule at a
liberal arts college Janowaik said.
The material breaks down into 10
Ser. No. 76343540
6
categories…. “Journal and Courier
(Lafayette, IN),” February 8, 2002;

Headline: Our Times, Orange County
Communities
…Parents are invited to join the
booster clubs at Foothill and Tustin
high schools. The clubs sponsor award
ceremonies, academic decathlon
competitions, a newsletter and
scholarships for graduating seniors.
… “Los Angeles Times,” October 4, 1999;

URI [University of Rhode Island]
Residential Complex
Campus. … they sponsor academic
decathlons, semi-formal dances,
barbeques, in-house movies, and
workshops or presentations on various
topics. …
www.uri.edu;

California Institute of Technology
From the Pages of… Caltech 336
…
many [students] participated in science
olympiads, academic decathlons, science
bowls, robotics challenges,…. …
pr.caltec.edu; and

CESA #2
…
Cooperative Educational Service
Agencies -- better known as CESAs --
help school districts share staff,
services and purchasing, ….
…
Cesas provide curriculum specialists,
environmental education, gifted and
talented programs, and enrichment
activities such as academic decathlons
and spelling bees. …
www.cesa2k12wi.us.

Applicant argues that the mark ACADEMIC DECATHLON is a
coined term and is not a generic term for applicant’s
Ser. No. 76343540
7
identified services; that the Examining Attorney has not
submitted clear evidence showing that the public
understands ACADEMIC DECATHLON to refer primarily to a
genus of services rather than referring to applicant’s (and
its licensees) academic competitions; that “decathlon”
refers to an athletic, not a scholastic event; that the
evidence of record does not meet the Examining Attorney’s
burden necessary to establish genericness, particularly as
much of the Examining Attorney’s Nexis and Internet
evidence actually refers to applicant’s ACADEMIC DECATHLON
services; that some misuses by news reporters who failed to
use initial capital letters when referring to applicant’s
“Academic Decathlon” competitions do not destroy
applicant’s use of the phrase as a mark which is so
recognized by the public; and that doubt on the issue of
genericness is resolved in favor of applicant.2

2 In applicant’s response dated July 30, 2003, applicant refers
to its Registration No. 2655356. However, applicant did not make
the registration of record in this application. The Board does
not take judicial notice of registrations. See In re Duofold
Inc., 184 USPQ 638 (TTAB 1974).
Further, in its brief (p. 16, footnote 8), applicant, asserts
that if the Examining Attorney had searched the website addresses
of the state organizations listed on applicant’s website, he
would have found ACADEMIC DECATHLON used as a mark indicating
applicant as the source of the academic competitions. Again,
applicant did not make any of those state websites of record
herein. It is applicant’s responsibility to provide evidence it
wishes to be of record. Also, websites frequently have
voluminous information which may change over time. See In re
Planalytics Inc., 70 USPQ2d 1453 (TTAB 2004).
Ser. No. 76343540
8
Applicant also argues that the mark is not merely
descriptive; and that it offers a claim of acquired
distinctiveness only in the alternative.
Applicant submitted Internet dictionary definitions of
the word “decathlon” to show that it refers to an athletic
not an academic contest; and the declaration, with
exhibits, of Les Martisko, applicant’s executive director.
Mr. Martisko avers that applicant originated its “Academic
Decathlon” in 1968 as a California academic competition;
that applicant conducted the first national competition
under its mark in 1981; that applicant’s twenty-third
national competition was held in Boise, Idaho in April
2004, with coverage by all three major networks (ABC, CBS,
NBC); that the latest national competition was the
culmination of the year’s local, regional and state
“Academic Decathlon” competitions involving approximately
20,000 high school students from about 1800 high schools in
forty states; and that applicant enters into license
agreements with state organizations to organize state,
regional and local competitions, and these licensees must
be renewed each year. Mr. Martisko also avers that
applicant promotes its “Academic Decathlon” services on its
website and through its licensees; that applicant’s
national, state, regional and local “Academic Decathlon”
Ser. No. 76343540
9
competitions “have received substantial press coverage
[newspapers, television] for many years” (declaration, p.
3); that in 1999 HBO made a movie titled “Cheaters” about
an incident from the 1995 “Academic Decathlon” competition,
which applicant licensed the film producers to use the
“Academic Decathlon” mark and branded materials in the
film. Mr. Martisko further avers that he is aware of about
eighty other academic competitions with various marks, for
example, Knowledge Bowl, Quiz Bowl, Math Masters; and that
he is not aware of any organization (other than applicant
and its licensees) which uses the words “Academic
Decathlon” in connection with academic competitions.
The Examining Attorney bears the burden of proving
that the proposed mark is generic, and genericness must be
demonstrated through “clear evidence.” See In re Merrill
Lynch, Pierce, Fenner, & Smith, Inc., 828 F.2d 1567, 4
USPQ2d 1141, 1143 (Fed. Cir. 1987); and In re Analog
Devices Inc., 6 USPQ2d 1808 (TTAB 1988), aff’d, unpubl’d,
but appearing at 10 USPQ2d 1879 (Fed. Cir. 1989). The
evidence of the relevant public’s perception of a term may
be acquired from any competent source, including
newspapers, magazines, dictionaries, catalogs and other
publications. See Magic Wand Inc. v. RDB Inc., 940 F.2d
638, 19 USPQ2d 1551 (Fed. Cir. 1991); and In re Leatherman
Ser. No. 76343540
10
Tool Group, Inc., 32 USPQ2d 1443 (TTAB 1994), citing In re
Northland Aluminum Products, Inc., 777 F.2d 1566, 227 USPQ
961 (Fed. Cir. 1985).
The test for determining whether a designation is
generic, as used in connection with the services in an
application, turns upon how the term or phrase is perceived
by the relevant public. See Loglan Institute Inc. v.
Logical Language Group, Inc., 962 F.2d 1038, 22 USPQ2d 1531
(Fed. Cir. 1992). Determining whether an alleged mark is
generic involves a two-step analysis: (1) what is the
genus of the goods or services in question? and (2) is the
term sought to be registered understood by the relevant
public primarily to refer to that genus of goods or
services? See In re The American Fertility Society, 188
F.3d 1341, 51 USPQ2d 1832 (Fed. Cir. 1999); and H. Marvin
Ginn Corporation v. International Association of Fire
Chiefs, Inc., 782 F.2d 987, 228 USPQ 528 (Fed. Cir. 1986).
As noted earlier, “the correct legal test for genericness,
as set forth in Marvin Ginn, supra, requires evidence of
‘the genus of goods or services at issue’ and the
understanding by the general public that the mark refers
primarily to ‘that genus of goods or services.’” American
Fertility Society, supra.
Ser. No. 76343540
11
In this case, the Examining Attorney has submitted
some evidence of generic use of the words “academic
decathlon” to refer to an academic competition.3 However,
the record shows that many of the examples (even if in
lower case letters) are direct references to applicant
and/or its licensees. Applicant contends that virtually
all of the uses in lower case letters are misuses by the
media of applicant’s mark ACADEMIC DECATHLON, and such
misuses do not prove that the term has become generic. See
In re First Union National Bank, 223 USPQ 278 (TTAB 1984).
As explained previously, our primary reviewing Court,
the Court of Appeals for the Federal Circuit, has held that
the burden of establishing genericness of a term or a whole
phrase rests with the Office and that the showing must be
based on clear evidence. See In re Merrill Lynch, supra, 4
USPQ2d at 1143; and In re The American Fertility Society,
supra, 51 USPQ2d at 1835. Because the record before us
shows varied uses of the phrase “ACADEMIC DECATHLON,” we
find that there is insufficient clear evidence that the
phrase ACADEMIC DECATHLON has become the generic or common

3 Both the Examining Attorney and applicant have discussed the
issue in relation to applicant’s academic competition services,
rather than applicant’s educational testing services. In our
decision, the Board will do likewise.
Ser. No. 76343540
12
descriptive term for the academic competitions to which
applicant first applied the phrase.
With regard to the second prong of the genericness
test, the evidence of record as to how the relevant
purchasers would perceive this term in relation to
applicant’s identified educational and entertainment
services is mixed. There is evidence of ACADEMIC DECATHLON
referring to applicant (or its licensees) and its
educational services offered under the mark ACADEMIC
DECATHLON. Further, many of the asserted examples of
generic use (showing the words in lower case letters)
actually refer to applicant or its licensees and are
apparent misuses by journalists. Moreover, none of the
evidence submitted by the Examining Attorney predates
applicant’s first use in 1968 and first use in interstate
commerce of 1982. Thus, the Examining Attorney has not
established that the relevant purchasing public would
perceive the phrase ACADEMIC DECATHLON as the name of the
genus of the services.
We find that the Examining Attorney has not
established a prima facie showing that the phrase ACADEMIC
DECATHLON is (or has become) generic for applicant’s
identified educational and entertainment services.
Ser. No. 76343540
13
We next address whether the phrase ACADEMIC DECATHLON
is merely descriptive of applicant’s identified services.
A mark is merely descriptive if it “forthwith conveys an
immediate idea of the ingredients, qualities or
characteristics of the goods [or services].” Abercrombie &
Fitch Company v. Hunting World, Incorporated, 537 F.2d 4,
189 USPQ 759, 765 (2nd Cir. 1976). See also, In re Abcor
Development Corporation, 616 F.2d 525, 200 USPQ 215 (CCPA
1978). Further, it is well established that the
determination of mere descriptiveness must be made not in
the abstract or on the basis of guesswork, but in relation
to the goods or services for which registration is sought,
the context in which the mark is used, and the impact that
it is likely to make on the average purchaser of such goods
or services. See In re Consolidated Cigar Co., 35 USPQ2d
1290 (TTAB 1995).
Applicant claims ownership of Registration No. 1242384
in which applicant disclaimed the words “United States
Academic Decathlon,” thereby acknowledging in that
registration that the words were merely descriptive. We
take judicial notice of The American Heritage Dictionary
(Fourth ed. 2000) definitions of “academic” as “adjective …
2a. Relating to studies that are liberal or classical
rather than technical or vocational. …”; and “decathlon” as
Ser. No. 76343540
14
“noun … an athletic contest usually limited to men in which
each contestant participates in the following ten track and
field events: ….” In addition, although the evidence
submitted by the Examining Attorney does not establish the
phrase ACADEMIC DECATHLON is generic, it certainly
establishes that the phrase is merely descriptive of a
significant feature of applicant’s academic competition
services, specifically that its services involve a ten-
event scholastic competition. That is, there is ample
evidence regarding use of the phrase “ACADEMIC DECATHLON,”
considered as a whole, and in connection with educational
services, namely, academic competitions, to establish that
the phrase is merely descriptive thereof. See In re Nett
Designs Inc., 236 F.3d 1339, 57 USPQ2d 1564 (Fed. Cir.
2001).
Thus, we will now determine whether applicant has
submitted sufficient evidence of acquired distinctiveness
under Section 2(f) to overcome the mere descriptiveness of
the phrase.
Applicant has the burden of establishing that its mark
has become distinctive. See Yamaha International Corp. v.
Hoshino Gakki Co. Ltd., 840 F.2d 1572, 6 USPQ2d 1001, 1006
(Fed. Cir. 1988). The question of acquired distinctiveness
is one of fact which must be determined on the evidence of
Ser. No. 76343540
15
record. As the Board stated in the case of Hunter
Publishing Co. v. Caulfield Publishing Ltd., 1 USPQ2d 1996,
1999 (TTAB 1986):
[e]valuation of the evidence requires a
subjective judgment as to its sufficiency
based on the nature of the mark and the
conditions surrounding its use.

There is no specific rule as to the exact amount or
type of evidence necessary at a minimum to prove acquired
distinctiveness, but generally, the more descriptive the
term, the greater the evidentiary burden to establish
acquired distinctiveness. See In re Bongrain International
(American) Corp., 894 F.2d 1316, 13 USPQ2d 1727 (Fed. Cir.
1990); and Yamaha International Corp. v. Hoshino Gakki Co.
Ltd., supra 6 USPQ2d at 1008. See also, 2 J. Thomas
McCarthy, McCarthy on Trademarks and Unfair Competition,
§§11:17 and 15:66 and 15:70 (4th ed. 2005).
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.
Applicant has submitted a declaration of its executive
director that the mark has been in use since 1968 in
California and since 1982 in a national competition; that
recently this competition involves about 20,000 high school
students from about 1800 high schools each year; that there
Ser. No. 76343540
16
is significant media coverage of the local to national
events; and that an HBO movie has been made of an incident
at applicant’s 1995 ACADEMIC DECATHLON. In addition,
applicant submitted printouts of applicant’s website pages
showing the list of applicant’s licensees in 40 states
(plus one Canadian province).
Based thereon, the record shows that applicant has
used the mark ACADEMIC DECATHLON for its academic
competition services since 1968; and that the use has been
substantially exclusive and continuous for a period well
exceeding the five years prior to the filing of applicant’s
application in November 2001. Applicant uses its mark
ACADEMIC DECATHLON for its academic competition services on
an annual basis throughout forty states. Thus, there has
been substantial exposure to the relevant public. Even
though applicant has not supplied annual advertising or
sales figures, we find that applicant has established a
prima facie case that is mark has acquired distinctiveness.
See In re Mine Safety Appliances Company, 66 USPQ2d 1694
(TTAB 2002).
Decision: The refusal to register on the Principal
Register on the basis that applicant’s mark is generic
under Section 2(e)(1) of the Trademark Act is reversed.
The refusal to register the mark as merely descriptive
Ser. No. 76343540
17
under Section 2(e)(1) of the Trademark Act is affirmed, and
the refusal to register the mark under Section 2(f) of the
Trademark Act is reversed.
Accordingly, the application will proceed to
publication with a notation of applicant’s claim of
acquired distinctiveness under Section 2(f).