Credit.com, Inc.

Trademark Trial and Appeal Board

Dec 4, 2008

No. 78718622 (T.T.A.B. Dec. 4, 2008)

Mailed:
December 4, 2008

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Credit.com, Inc.
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Serial No. 78718622
_______

Mark G. Falkin, Falkin + Sachse, PLLC for Credit.com, Inc.

Hannah M. Fisher, Trademark Examining Attorney, Law Office
111 (Craig D. Taylor, Managing Attorney).
_______

Before Walters, Zervas and Kuhlke, Administrative Trademark
Judges.

Opinion by Zervas, Administrative Trademark Judge:

Credit.com, Inc. has filed an application to register
the term CREDIT.COM (in standard character form) for
services ultimately identified as “providing information in
the field of personal finance via the Internet” in
International Class 36.1

1 Application Serial No. 78718622, filed September 22, 2005,
claiming first use anywhere and first use in commerce in August
1995.

THIS OPINION IS NOT
A PRECEDENT OF
THE T.T.A.B.
Ser. No. 78718622
2
Registration was originally refused under Section
2(e)(1) of the Trademark Act, 15 U.S.C. §1052(e)(1), on the
basis that “CREDIT.COM” is merely descriptive of
applicant's services. In its request for reconsideration,
applicant argued against the refusal based on
descriptiveness but also requested amendment of the
application to seek registration on the Supplemental
Register. Thereafter, the examining attorney issued a new
refusal under Section 23 of the Trademark Act, 15 U.S.C.
§1091, on the basis that applicant's proposed mark is
incapable of identifying applicant's services because it is
the generic term for the recited services.
Applicant has appealed the examining attorney’s final
refusal to the Board. Both applicant and the examining
attorney have filed briefs.
As a preliminary matter, in view of applicant's
statements in its request to amend to the Supplemental
Register and in its brief, we find that the questions of
descriptiveness and acquired distinctiveness have been
preserved for appeal. While TMEP §801.02(b) (4th ed. 2005)
provides that an applicant may not seek registration on
both the Principal and the Supplemental Registers in the
same application, TMEP § 1212.02(c) clarifies that an
applicant may submit an amendment (or request to amend) to
Ser. No. 78718622
3
the Supplemental Register and continue to argue in the
alternative that it is nonetheless entitled to registration
on the Principal Register in an appeal. See also TBMP §
1215 (2d ed. rev. 2004). Accordingly, we must determine
whether the proposed mark is generic and, if not, whether
it is merely descriptive and if so, whether it has acquired
distinctiveness.
Genericness
The Court of Appeals for the Federal Circuit, our
primary reviewing court, has stated that “[t]he critical
issue in genericness cases is whether members of the
relevant public primarily use or understand the term sought
to be protected to refer to the genus of goods or services
in question.” H. Marvin Ginn Corp. v. Int'l Association of
Fire Chiefs, Inc., 782 F.2d 987, 228 USPQ 528, 530 (Fed.
Cir. 1986). Ginn explains that:
Determining whether a mark is generic … involves
a two-step inquiry: First, what is the genus of
goods or services at issue? Second, is the term
sought to be registered or retained on the
register understood by the relevant public
primarily to refer to that genus of goods or
services?

Id. The Office bears the burden of establishing
genericness based on clear evidence of generic use. In re
American Fertility Society, 188 F.3d 1341, 51 USPQ2d 1832
(Fed. Cir. 1999).
Ser. No. 78718622
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Genus of applicant's services and relevant public
We find that the genus of services at issue in this
case is adequately defined by applicant's identification of
services, namely, “providing information in the field of
personal finance via the Internet.” (Applicant agrees -
see p. 2 of its brief.) Applicant's specimen of use, which
is a printout from applicant's website, provides that
“Credit.com takes pride in offering a wide variety of
consumer credit products and services.” Another of
applicant's webpages submitted in response to the first
Office action states, “Start improving your credit and
taking control of your finances today. We’ll show you how
in three easy steps.” Thus, applicant provides information
regarding obtaining credit and improving credit ratings,
which is within the identification of services.
The relevant public for the services
The specimen of use states “[s]erving the credit needs
of millions of consumers since 1996,” and the webpage
submitted in response to the first Office action has links
to “Starting Out,” “Buying a Car,” “Marriage & Family,”
“Buying a House” and “Planning for Retirement.” The
services and information are suited to the public at large.
We therefore conclude that the relevant public for
applicant's services is the general public.
Ser. No. 78718622
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The meaning of CREDIT.COM to the relevant public
Evidence of the relevant public's understanding of a
term may be obtained from any competent source including
consumer surveys, dictionary definitions, newspapers and
other publications. See In re Reed Elsevier Properties
Inc., 482 F.3d 1376, 82 USPQ2d 1378 (Fed. Cir. 2007). We
have considered all the evidence of record bearing on
purchaser perception of CREDIT.COM including the evidence
applicant has submitted in support of its claim of acquired
distinctiveness. See In re Recorded Books Inc., 42 USPQ2d
1275 (TTAB 1997); and In re The Paint Products Co., 8
USPQ2d 1863 (TTAB 1988).
The examining attorney has submitted definitions from
various online dictionaries for “credit.” One definition
is from The American Heritage Dictionary of the English
Language (4th ed. 2000) located at bartleby.com, defining
“credit” as “[a]n arrangement for deferred payment of a
loan or purchase: a store that offers credit; bought my
stereo on credit.” (Italics in original.) The genus of
applicant's services involves personal financial
information, which includes information on arrangements for
deferring payment of a loan or purchase.
Also of record is a one-page listing of search results
for “credit” on the Google search engine. The entry for
Ser. No. 78718622
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credit.com states, “Credit.com offers a variety of credit
related products and services including credit reports and
credit scores, credit cards, car loans, home loan and ….”
Further, the webpage submitted in response to the first
Office action includes tabs for linking to “credit reports,
personal loans, credit cards, dept help, home loans, auto
loans, ID theft and security.” Additionally, two questions
asked in an online survey that visitors to applicant's
website may answer are (i) “If you searched online for
information about credit, what search terms did you use in
your query?”; and (ii) “Did you choose Credit.com to learn
more about credit related services and products?”
It is clear from applicant's website that “credit” is
the focus of the information about personal finances that
applicant provides on its website. Because the term CREDIT
names a key aspect of applicant's services, i.e., the
aspect of applicant's personal financial services that
concerns credit, the term is generic, at least for that
aspect of applicant's services.
The addition of .COM to CREDIT does not make the
combination registrable. The examining attorney has
submitted (i) a definition of “.com” from The American
Heritage Dictionary of the English Language (4th ed. 2000)
which defines the term as “commercial organization (in
Ser. No. 78718622
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Internet addresses),” and (ii) an entry from wikipedia.org
which defines “.com” as “a generic top-level domain (gTLD)
used on the Internet’s Domain Name System” used to
designate commercial entities. See second Office action
dated October 25, 2006. The Federal Circuit, our primarily
reviewing court, has stated in In re Oppedahl & Larson LLP,
373 F.3d 1171, 71 USPQ2d 1370 (Fed. Cir. 2004) that the
term “.COM,” in itself, has no source-indicating
significance. Also, the Board has stated that “.com”
“signifies that the user of the domain name is a commercial
entity, and that the goods or services offered by the
entity involve use of the Internet.” In re Hotels.com
L.P., 87 USPQ2d 1100, 1105 (TTAB 2008).
We point out too that there is nothing in the
combination of CREDIT and .COM that results in any new or
incongruous meaning, or a different commercial impression.
CREDIT and .COM both have clear and readily understood
meanings and the combination of CREDIT and .COM
communicates just as clearly and directly that applicant
operates a commercial website that provides its customers
with information about credit.2 The Federal Circuit has

2 Applicant argues at p. 2 of its brief that consumers “would
likely think [CREDIT.COM] would primarily refer to information
about how to obtain credit cards.” We are not persuaded by this
argument. First, applicant has not offered any explanation for
its argument. Second, because credit cards concern consumer
Ser. No. 78718622
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held that “the PTO has satisfied its evidentiary burden [on
genericness] if … it produces evidence including dictionary
definitions that the separate words joined to form a
compound have a meaning identical to the meaning common
usage would ascribe to those words as a compound.” In re
Gould Paper Corp., 834 F.2d 1017, 5 USPQ2d 1110, 1111 (Fed.
Cir. 1987).
The examining attorney has also made of record
printouts of several websites having “credit.com” in their
web addresses. Such websites offer financial information
pertaining to credit, which are the same services provided
by applicant. See:
ultimatecredit.com – “Ultimate Credit Solutions
is dedicated to helping consumers find reliable
solutions to their credit challenges by offering
affordable solutions …”;

yourcredit.com – with information regarding
mortgages, debt collection, credit reports,
credit cards, and credit fraud;

carcredit.com – regarding car loans and credit
reports and “descriptions” regarding identify
theft, bankruptcies and the Fair Credit Reporting
Act; and

bad-credit.com – “We’re your guide to consumer
credit information.”

credit, the credit card services mentioned by applicant are a
species of the genus “credit.”

Ser. No. 78718622
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These websites as well as applicant's website
demonstrate that consumers seeking information relating to
credit, would immediately understand that CREDIT.COM
identifies a website that provides such information.
Additionally, the third-party websites demonstrate a
competitive need for others to use “credit.com” as part of
their own domain names and trademarks. Thus, the
designation sought to be registered should not be subject
to exclusive appropriation, but rather should remain free
for others in the industry to use in connection with
personal finance information services. See In re Boston
Beer Co. L.P., 198 F.3d 1370, 53 USPQ2d 1056 (Fed. Cir.
1999).
In view of the foregoing, we find that the examining
attorney has met the substantial burden of establishing
that CREDIT.COM is generic and hence incapable of
identifying and distinguishing the source of the identified
services.
Applicant has made of record a copy of Registration
No. 2918738 for the mark for “providing
information for others about transportation; travel agency
services, namely, making reservations and bookings for
transportation for others by means of telephone and the
Ser. No. 78718622
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global computer network,” and maintains that if this mark
could be registered on the Principal Register, applicant's
proposed mark should also be registered at least on the
Supplemental Register. That registration has no relevance
to the present application; because the identification of
services does not provide for services concerning hotels
and are specifically directed to transportation,
genericness and mere descriptiveness were unlikely issues
in the prosecution of the underlying application. Cf., In
re Hotels.com, supra, where the Board found HOTELS.COM (in
typed form) generic for services identified as “providing
information for others about temporary lodging; travel
agency services, namely, making reservations and bookings
for temporary lodging for others by means of telephone and
the global computer network.” Further, prior decisions of
examining attorneys registering different marks are not
binding on the Board. See In re Nett Designs Inc., 236
F.3d 1339, 57 USPQ2d 1564 (Fed. Cir. 2001). Applicant has
also pointed out that “[t]he services listed in HOTEL.COM’s
registration are not exactly providing information about
hotels, but the specimens filed clearly depict that usage,
and the term ‘travel agency services’ is in the
description.” Brief at p. 3. What the specimens offer is
not determinative on the question of genericness -
Ser. No. 78718622
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genericness is determined in view of the identification of
goods or services in the application.
Descriptiveness and Acquired Distinctiveness
We now address applicant’s alternative claim that if
the designation is merely descriptive, it has acquired
distinctiveness. (Applicant has acknowledged that the
designation is merely descriptive at p. 5 of its brief.)
Of course, implicit in our holding that the evidence before
us establishes that CREDIT.COM is generic for applicant's
services is a holding that CREDIT.COM is at least merely
descriptive of applicant's services under Section 2(e)(1).
“The generic name of a thing is in fact the ultimate in
descriptiveness.” H. Marvin Ginn Corp., supra, at 530.
As to acquired distinctiveness, applicant has the
burden to establish a prima facie case of acquired
distinctiveness. See Yamaha International Corp. v. Hoshino
Gakki Co., Ltd., 840 F.2d 1572, 6 USPQ2d 1001 (Fed. Cir.
1988).
Applicant claimed acquired distinctiveness based on
five years of use in its initial application. After the
examining attorney found its claim insufficient to
establish acquired distinctiveness, applicant supplemented
its claim with approximately twenty declarations, most of
which are substantially the same, with the declarants
Ser. No. 78718622
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stating that they believe “CREDIT.COM is a brand name for
the personal finance services and education programs
offered only by Credit.com….” Further, applicant’s
attorney represented in his response to the first Office
action that:
applicant has been using the designation for 16
years exclusively and continually;

applicant has spent “millions of dollars
investing in this brand”;

“applicant spends approximately $300,000 per
month advertising its services, products and
educational materials”;

applicant has defended its name against another
company who attempted to keep it from using its
name or URL,” at the cost of $50,000;

applicant “spen[t] approximately $275,297 (e.g.,
$184,827 in 2005, and $90,470 in 2006) for
general marketing of its services and products”;
and

applicant spend $34,287 in 2005 and $52,489 in
2006 on search engine optimization fees.

See response to first Office action at p. 3. We are not
able to determine from applicant's attorney’s information
how much applicant has spent in advertising the specific
services identified in the identification of services, how
long it has been spending $300,000 per month on
advertising, or where applicant ranks among search engine
results (and for what search queries). Also, applicant has
not discussed how its defense of “its name” fosters an
Ser. No. 78718622
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association in the minds of the consuming public of
CREDIT.COM with applicant or even how the cost of such a
proceeding is relevant at all to establishing “credit.com”
as a source indicator.
Applicant’s attorney also stated that applicant
conducted a “survey” with 75 participants, identified the
questions in the “survey” and identified how participants
answered for certain questions. There are numerous
problems with the “survey” which limits its probative
value. For example, applicant did not identify when or how
it was conducted. There is no information as to whether
participants were screened, and if so, how they were
screened to establish that they understood the questions.
Further, applicant did not identify who the respondents
were and whether they responded to all of the questions.
Also, applicant has not indicated what percentage of
respondents thought CREDIT.COM was “a generic term for all
things having to do with credit and credit info,”3 or if
this percentage was higher than the percentage of
respondents who indicated that they “feel” CREDIT.COM

3 Applicant noted that 42 percent of respondents marked the
answer “Identifies a company that offers credit education” in
response to the question “When you think of the name CREDIT.COM,
do you feel it?”

Ser. No. 78718622
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“[i]dentifies a company that offers credit education.” See
question no. 4.
The greater the degree of descriptiveness, the greater
the evidentiary burden on the user to establish acquired
distinctiveness. See Yamaha Int'l Corp., supra. The
sufficiency of the evidence offered to prove secondary
meaning should be evaluated in light of the nature of the
designation. Highly descriptive terms, for example, are
less likely to be perceived as trademarks and more likely
to be useful to competitors than are less descriptive
terms. More substantial evidence of secondary meaning thus
will ordinarily be required to establish their
distinctiveness.
Applicant's evidence and its attorney’s statements
fall far short of establishing that purchasers of
applicant's services recognize CREDIT.COM as a distinctive
source indicator for such services. Accordingly, even if
the designation CREDIT.COM were found to be not generic,
but merely descriptive, given the highly descriptive nature
of the designation CREDIT.COM, substantially more evidence
than what applicant has submitted is needed for us to find
that CREDIT.COM has become distinctive of applicant's
services.
Ser. No. 78718622
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Decision: The refusal under Section 23 of the
Trademark Act on the ground that the proposed mark is
generic is affirmed; the refusal under Section 2(e)(1) of
the Trademark Act on the ground that the proposed mark is
at least merely descriptive and the Section 2(f) showing is
insufficient are likewise affirmed.