No. 78645585 (T.T.A.B. Mar. 26, 2008)

Brain Warehouse LLC

Trademark Trial and Appeal BoardMar 26, 2008

No. 78645585 (T.T.A.B. Mar. 26, 2008)

Mailed: March 26, 2008 UNITED STATES PATENT AND TRADEMARK OFFICE ________ Trademark Trial and Appeal Board ________ In re Brain Warehouse LLC ________ Serial No. 78645585 _______ Matthew H. Swyers of The Swyers Law Firm, PLLC for Brain Warehouse LLC. Barney L. Charlon, Trademark Examining Attorney, Law Office 104 (Chris Doninger, Managing Attorney). _______ Before Hairston, Holtzman and Bergsman, Administrative Trademark Judges. Opinion by Holtzman, Administrative Trademark Judge: An application has been filed by Brain Warehouse LLC to register the mark HOUSE FINDER in standard character form for "computer services, namely, providing search engines for obtaining data on a global network of computers in the field of real estate" in Class 42.1 The application was filed with a 1 Serial No. 78645585, filed June 7, 2005, based on an allegation of first use and first use in commerce on February 2, 1997. The word HOUSE is disclaimed. THIS OPINION IS NOT A PRECEDENT OF THE TTAB Serial No. 78645585 2 claim of acquired distinctiveness under Section 2(f) of the Trademark Act.2 The trademark examining attorney has refused registration under Section 2(e)(1) of the Trademark Act on the basis of the highly descriptive nature of the mark and the insufficiency of the evidence to show acquired distinctiveness under Section 2(f) of the Act. When the refusal was made final, applicant appealed. Applicant and the examining attorney have filed briefs. As a preliminary matter, we need to clarify the issue on appeal. First, applicant, by initially seeking registration under Section 2(f), has in effect conceded that the mark is not inherently distinctive. See Yamaha International Corp. v. Hoshino Gakki Co. Ltd., 840 F.2d 1572, 6 USPQ2d 1001, 1005 (Fed. Cir. 1988) ("Where, as here, an applicant seeks a registration based on acquired distinctiveness under Section 2(f), the statute accepts a lack of inherent distinctiveness as an established fact.") (emphasis in original); and In re Leatherman Tool Group, Inc., 32 USPQ2d 1443 (TTAB 1994). Thus, the question of whether the mark is merely descriptive is not an issue in this appeal. The term HOUSE FINDER is considered merely descriptive of applicant's services within the meaning of Section 2(e)(1), and 2 The application includes a claim of ownership of Registration No. 2432395 for the mark HOUSE FINDER on the Supplemental Register for the same services as those herein. By its various amendments to the application, applicant has also claimed ownership of Registration Nos. 3114077; 3138411; and 2728920, among others. These registrations will be discussed later in this opinion. Serial No. 78645585 3 applicant's arguments that the mark is inherently distinctive, made for the first time in applicant's (first) request for reconsideration and then in its appeal brief, have not been considered. Second, to the extent that the examining attorney intended to refuse registration on the ground of genericness, the examining attorney did not clearly or consistently maintain that ground during the course of prosecution, and accordingly, the refusal is considered to be withdrawn.3 Thus, the only issue on appeal, as the examining attorney states in his brief, is whether the evidence is sufficient to establish that HOUSE FINDER has acquired distinctiveness under Section 2(f) of the Trademark Act. Applicant's services are identified as "computer services, namely, providing search engines for obtaining data on a global network of computers in the field of real estate." The examining attorney argues that the mark is highly descriptive of applicant's services, and he has submitted excerpts from a variety of third-party websites to support that position. 3 In response to the first Office action dated January 4, 2006, applicant amended the application to seek registration of the mark on the Supplemental Register. Then, in response to the examining attorney's refusal to register the mark on the Supplemental Register on the ground of genericness, applicant argued that the mark is not generic and that it has acquired distinctiveness, thereby effectively amending the application back to the Principal Register. It is not clear from the ensuing Office actions that the genericness refusal was maintained on the Principal Register. Serial No. 78645585 4 Examples of these website excerpts with pertinent quoted portions are described below (emphasis and bracketed wording added): ● Sunshine Coast Real Estate Online House Finder [Allows the user to search for properties by location and preferences in housing; after the criteria have been entered users click on a "Find Property" bar to execute the search.] www.mysunshinecoast.com ● ApartmentHunters IF IT'S VACANT, IT'S LISTED WITH US! ... Malibu Area House finder We want to make your move to Malibu as quick as possible. features, house amenities, ...and open house dates. When available view home virtual tours, multiple photos, house floor plans, before you start driving around town... [Provides a "Quick Search" feature for locating houses by location, property type, number of bedrooms and maximum rent, and a "Show Results" button.] www.apartmenthunterz.com ● MyNewPlace™ Get $100 Cash Back When You Use MyNewPlace's Apartment & House Finder! [allows a search by city or zip code] MyNewPlace's advanced apartment finder makes your search for the ultimate new place as easy as pie. With over six million listings (and growing), we'll help you find a new house or apartment that's perfect for you - search or filter for anything and everything you specify including: Washer in unit, Dryer in unit, Utility options, Fireplace... Registration is FREE - In fact, you earn money by using MyNewPlace to search for your new house or apartment. ... www.mynewplace.com ● Midsouth Shopper.com House Finder [Allow users to search houses by location and other criteria, and hit "Go" to execute search] Serial No. 78645585 5 www.midwouthshopper.com ● Dfwhousefinder.Com Sponsored results for House Finder Repo House Finder Search for real estate foreclosures in your area and get property details, photos, location map and contact information Foreclosurestogo.com www.dfwhousefinder.com ● Sublets.com The Internet's best HOUSE FINDER web sites - Sponsored Listings House Finder We have lists of cheap properties and online appraisals. All for free www.findcheaphouses.com www.sublets.com ● Mountain View Realty Let Us Find Your Dream Home [provides links for, e.g., "Lots & Acreage"; "Residential Communities"; "List Your Home" and "House Finder"] www.poconohomes.com ● Looking for your dream home but don't see it in our listings? Search the House Finder! Submit your "wish list" to Speckman Realty and we'll contact you when a home with similar amenities becomes available. www.speckmanrealty.com ● Dfwhousefinder.Com Sponsored results for House Finder House Finder Buying or selling your house? Find a real estate agent for free homegain.inurealtor4free.com House Finder - House.com House.com is the nationwide leader in connecting you to top real estate agents. www.house.com www.dfwhousefinder.com Serial No. 78645585 6 ● Forbes ... [Article on "The Ebay Economy"] ...A real estate agent's value to a house seller is a function of the agent's value as a house finder to home seekers. ... www.forbes.com ● Houston Apartment Finder, Houston Apartment & House Listings Welcome to the Best Houston Apartment & House Finder www.apartment-locator-houston.com ● County-estate-real-homes.com Welcome to - A world of easy shopping at your finger tips! [Followed by a listing of various real estate companies and a "browser" section with links to such services as "House finder"; "Realty agents"; "Property for sale"; and "Real estate web sites."] www.county-estate-real-homes.com ● Orlando FL House Finder Thanks for visiting the orlandoFLhousefinder team. We are geared to help you, friends, and family in your home search. If you have any questions about the processes of buying or selling a home or if you need assistance in any way, you can also call our toll free helpline, or call a consultant direct. The House Finder link below, will direct you to one of our consultant websites. This will allow you to freely search with no contact from the consultant. www.orlandoflhousefinder.com ● Wallenpaupack.com Welcome Lake Wallenpaupack For the most up-to-date information for your real estate and construction needs. [Provides links to other pages on the website for "house finder" information, as well as information on "residential properties"; "new home construction"; "lots and acreage"; "moving tips"; etc.] www.wallenpaupack.com Serial No. 78645585 7 ● Safe Harbor Creative Real Estate solutions House Finder We have new homes come into our inventory frequently, so please complete this information so that we can help you find your home. www.safeharborhouses.com ● V.I.P. Real Estate Homes for Sale We put you on the Road to Home Ownership! [with links to information on "FREE Market Evaluation"; "House Finder Assistance"; "House Finder Realtor Link"; "New Construction"; "Open houses"; "Meet our Agents"; etc.] http://statenislandnyhomes.com This evidence clearly demonstrates that HOUSE FINDER is highly descriptive of applicant's services. It shows that the term is used by others in the real estate field to refer generically to the same type of services that applicant provides to prospective purchasers of a house, that is, a searchable database of house listings and related real estate information. The evidence otherwise shows that HOUSE FINDER is highly descriptive of a significant feature or function of applicant's services. There is no question that consumers would immediately understand that applicant's HOUSE FINDER service will provide them with information about available houses, as well as information about real estate agents and consultants who can assist the consumer in finding a house.4 See In re Reed Elsevier 4 We take judicial notice of the definition of "finder" in Collins English Dictionary (2000) (from the website www.credoreference.com) as meaning "a person or thing that finds." The Board may take judicial Serial No. 78645585 8 Properties Inc., 482 F3d 1376, 82 USPQ2d 1378, 1381 (Fed. Cir. 2007) (third-party websites are competent sources to show what the relevant public would understand a term to mean, and "they provide substantial evidence to support the Board's findings.") Applicant argues that "evidence of potentially infringing use of [applicant's] mark should not be afforded evidentiary weight against its rights." (Brief at 15.) This argument is unpersuasive. The term HOUSE FINDER is used by these third parties in a generic and highly descriptive manner, not in a source-indicating manner. Furthermore, there is nothing of record to indicate that applicant has attempted to stop any such alleged misuse, or to enforce its claimed trademark rights against these or any other third parties. Applicant also contends that it is "highly unlikely that any competitor would have need of this exact phrase," arguing that other terms such as "home locator" or "house locator" are available to describe their services. However, the evidence shows that competitors do have need to use, and in fact have already used, the exact phrase HOUSE FINDER to describe their same or similar services. See In re Sun Oil Co., 426 F.2d 401, 165 USPQ 718, 719-720 (CCPA 1970) (Rich, J., concurring) ["Because one merchandiser has latched onto one of the notice of dictionaries, including online dictionaries, which exist in printed format. See In re CyberFinancial.Net Inc., 65 USPQ2d 1789, 1791 n.3 (TTAB 2002). Serial No. 78645585 9 descriptive terms does not mean it can force its competitors to limit themselves to the use of the other...."). In further support of its contention that the mark is not highly descriptive, applicant has submitted approximately 20 third-party registrations for marks which consist of the word FINDER preceded by another word and which are registered for various types of information databases and online information services.5 Noting that the marks are registered on the Principal Register with no Section 2(f) claim, applicant argues that the term FINDER has consistently been treated by the USPTO as suggestive of such services. Examples of these registrations include Reg. No. 3065741 HAIRFINDER for online information "relating to hair fashions and styles"; Reg. No. 2816878 for the mark PHYSICSFINDER for online information in the field of physics; and Reg. No. 2165913 for the mark MOVIEFINDER for online information on movies and movie news. The fact that different words combined with FINDER have been registered for other types of information databases and online information services does not reflect an Office practice with respect to the registrability of the term FINDER; nor does it compel a finding that the combination of words in this case, 5 Applicant has also included a number of third-party registrations containing FINDER for goods and services that are unrelated to the services herein. These registrations are irrelevant to the analysis and they have not been considered. Serial No. 78645585 10 HOUSE FINDER, is registrable for the services identified herein. See In re Nett Designs Inc., 236 F.3d 1339, 57 USPQ2d 1564, 1566 (Fed. Cir. 2001) ("Even if some prior registrations had some characteristics similar to [applicant's] application, the PTO's allowance of such prior registrations does not bind the Board or this court"). It is well settled that each case must be decided on its own facts, based on the particular mark, the particular goods or services, and the particular record in each application. Id. The particular record in this case clearly demonstrates that HOUSE and FINDER combine to create a term that is highly descriptive of applicant's services. We turn then to applicant's evidence of acquired distinctiveness. The burden is on applicant to show acquired distinctiveness, and the more descriptive the term, the heavier that burden. See Yamaha International Corp. v. Hoshino Gakki Co., supra. In considering all of the evidence, and the highly descriptive nature of HOME FINDER for the identified services, we find that applicant has not met this burden. Trademark Rule 2.41(b) provides that "In appropriate cases, ownership of one or more prior registrations on the Principal Register ... of the same mark may be accepted as prima facie evidence of distinctiveness. Also, if the mark is said to have become distinctive of applicant’s goods by reason of substantially exclusive and continuous use in commerce thereof by Serial No. 78645585 11 applicant for the five years before the date on which the claim of distinctiveness is made, a showing by way of statements which are verified or which include declarations in accordance with §2.20, in the application may, in appropriate cases, be accepted as prima facie evidence of distinctiveness. In each of these situations, however, further evidence may be required." Applicant submitted, with the application, a declaration attesting to applicant's "substantially exclusive and continuous use [of HOUSE FINDER] in commerce for at least the five years immediately before the date of this statement." Applicant argues, however, that the mark has been in use for "almost a decade," since February 2, 1997. It is not clear whether applicant is relying on the date of first use alleged in the application, or the date of first use alleged in its prior registration(s). Either way, the claim must fail. An allegation of first use in an application or registration is not proof of "substantially exclusive and continuous use" of the mark as of the date alleged therein. Furthermore, although applicant at one point during prosecution attested to "substantially exclusive" use of the mark since that date, applicant has never verified that the use during that period was "continuous," that is, without a period of nonuse, as required under Trademark Rule 2.41(b). Serial No. 78645585 12 Moreover, based on this record, there is at least a question as to whether applicant has made substantially exclusive use of the term "house finder." Without substantially exclusive use, the term at issue does not point to one unique source. Levi Strauss & Co. v. Genesco, Inc., 742 F.2d 1401, 222 USPQ 939, 940- 941 (Fed. Cir. 1984) ("When the record shows that purchasers are confronted with more than one (let alone numerous) independent users of a term or device, an application for registration under Section 2(f) cannot be successful, for distinctiveness on which purchasers may rely is lacking under such circumstances").6 In any event, considering the highly descriptive nature of this term, applicant's statement of even ten years use, without evidence which would help determine the extent of consumer exposure to the mark, such as sales figures or advertising expenditures relating to the mark, is not particularly meaningful. We turn then to applicant's claim of acquired distinctiveness of the mark HOUSE FINDER based on its ownership of Registration No. 3232493 (issued April 24, 2007) for the mark HOUSE FINDER for "real estate information services, namely, 6 The requirement for substantially exclusive use makes allowance for inconsequential or infringing use by others that will not invalidate applicant’s claim that its mark has acquired distinctiveness. L.D. Kichler Co. v. Davoil Inc., 192 F.3d 1349, 52 USPQ2d 1307, 1309 (Fed. Cir. 1999). As indicated supra, there is nothing of record to indicate that applicant has attempted to stop any purported infringements, and the number and nature of the third-party uses do not appear to show inconsequential use. Serial No. 78645585 13 providing information about real estate agents and real estate listings via a global computer network" in Class 36. This mark is registered on the Principal Register under Section 2(f) with a disclaimer of HOUSE. Applicant argues that the mark in this registration is the same as the mark herein, and that the services in the registration are closely related to those in the application. At the outset, we note that Section 7(b) of the Trademark Act provides that a registration on the Principal Register "shall be prima facie evidence of the validity of the registration, registrant's ownership of the mark and of registrant's exclusive right to use the mark in commerce in connection with the goods or services specified in the certificate." See also In re Electro Products Laboratories, Inc., 156 USPQ 54 (TTAB 1967). Thus, Section 7(b) creates the basis for permitting reliance on an existing registration, under certain circumstances, to support a claim that distinctiveness has been transferred to a mark which is essentially the same as the registered mark for essentially the same goods or services. However, in this case, the services in the application are different from those recited in the registration, and they are broader in scope. While the services in the registration are identified as "information about real estate agents and real estate listings," the services in the application are identified Serial No. 78645585 14 broadly as information "in the field of real estate" which would logically include additional and different real estate information. Ownership of an existing registration does not give applicant the right to register the same mark for different or broader services, even if they are closely related to the services in the registration.7 See In re Best Software, 63 USPQ2d 1109, 1113 (TTAB 2002). See also In re Loew's Theatres Inc., 769 F.2d 764, 768, [226 USPQ 865, 869 (Fed. Cir. 1985) ("Nothing in the statute provides a right ipso facto to register a mark for additional goods when items are added to a company's line or substituted for other goods covered by a registration."); 7 Applicant also relies on its ownership of a registration for the mark TOWNFINDER (Reg. No. 2728920) for a searchable online directory of business, retailers and service companies; and its two registrations for INSURANCE FINDER (Reg. Nos. 3114077 and 3138411) for various online insurance information services. However, these registrations are not even arguably relevant. As set forth in In re Dial-A-Mattress Operating Corp., 240 F.3d 1341, 57 USPQ2d 1807, 1812 (Fed. Cir. 2001), a proposed mark is the "same mark" as a previously-registered mark for the purpose of Trademark Rule 2.41(b) if it is the "legal equivalent" of such mark. A mark is the legal equivalent of another if it creates the same, continuing commercial impression such that the consumer would consider them both the same mark. See In re Dial-A-Mattress Operating Corp., supra. The marks in these three registrations are not legal equivalents to the mark herein as they clearly do not convey the same meaning or commercial impression. Not only are the marks different, but they are registered for services in different fields. Applicant has claimed ownership of a number of additional registrations for marks containing the word FINDER. However, applicant did not provide printouts of these registrations; nor did applicant identify the goods or services for which those marks are registered. In any event, none of the marks in these registrations is the "legal equivalent" of the mark herein. Finally, as to applicant's prior registration (Reg. No. 2432395) for HOUSE FINDER for the same services as those herein, this mark is registered on the Supplemental Register and, as the examining attorney correctly pointed out, a claim of acquired distinctiveness cannot be based on a registration on the Supplemental Register. Serial No. 78645585 15 In re Merrill Lynch, Pierce, Fenner, & Smith, Inc., 828 F.2d 1567, 4 USPQ2d 1141, 1142 (Fed. Cir. 1987) (incontestable registration for specific services involving credit cards does not automatically entitle applicant to a registration for broader financial services); and In re Outdoor Recreation Group, 81 USPQ2d 1392, 1398 (TTAB 2006). As we have said, each application for registration of a mark for particular services must be separately evaluated. See In re Loew's Theatres Inc., supra. See also In re Nett Designs Inc., supra. Because the term HOUSE FINDER is so highly descriptive of applicant's services, and in view of the absence of any evidence concerning the extent of actual use of the mark, we find that applicant's evidence as a whole is insufficient to show that the mark has acquired distinctiveness.8 Decision: The refusal to register on the ground that applicant's mark is merely descriptive under Section 2(e)(1) and that applicant's evidence of acquired distinctiveness is insufficient is affirmed. 8 Applicant's apparent alternative claim that the mark is registrable under Section 2(f), in part, as to the term FINDER must fail. There is no evidence that FINDER alone has acquired distinctiveness, and in any event, our determination as to whether the mark is registrable is based on the mark as a whole, not on any individual part.