Entertainment Properties Trust

Trademark Trial and Appeal Board

Jul 31, 2008

No. 78664423 (T.T.A.B. Jul. 31, 2008)

Mailed: July 31, 2008
PTH

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Entertainment Properties Trust
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Serial No. 78664423
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Penny R. Slicer of Stinson Morrison Hecker LLP for
Entertainment Properties Trust.

Dominick Salemi, Trademark Examining Attorney, Law Office
106 (Mary I. Sparrow, Managing Attorney).
_______

Before Hohein, Hairston and Grendel, Administrative
Trademark Judges.

Opinion by Hairston, Administrative Trademark Judge:

On July 6, 2005 Entertainment Properties Trust filed
an application under Trademark Act Section 2(f) to register
the mark ENTERTAINMENT PROPERTIES TRUST (in standard
character form) for “financial investment in the field of
real estate, namely services associated with real estate
investment trusts and the acquisition of real estate
entertainment properties” in International Class 36. The
application was filed based on applicant’s claim of first
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Ser No. 78664423
2
use of the mark anywhere and in commerce on August 22,
1997. Applicant also claimed that the mark ENTERTAINMENT
PROPERTIES TRUST had become distinctive of applicant’s
services by virtue of applicant’s substantially exclusive
and continuous use of said mark for over five years.
The trademark examining attorney has finally refused
registration under Trademark Act Section 2(e)(1), 15 U.S.C.
§1052(e)(1), on the grounds that applicant’s mark
ENTERTAINMENT PROPERTIES TRUST is merely descriptive of
applicant’s services and that applicant has not established
acquired distinctiveness.
Applicant has appealed; applicant and the examining
attorney have filed briefs.
The examining attorney maintains with respect to the
mere descriptiveness refusal that ENTERTAINMENT PROPERTIES
TRUST is generic and incapable of functioning as a mark;
and that no amount of evidence of acquired distinctiveness
would be sufficient to allow registration on the Principal
Register. Specifically, the examining attorney states that
“applicant has taken two generic terms and combined them to
create an equally generic designation. TRUST is the
financing vehicle or arrangement provided and run by
applicant while ENTERTAINMENT PROPERTIES simply identifies
the subject matter or res of the trust applicant is
Ser No. 78664423
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offering or providing.” (Brief, unnumbered p. 3) In
support of his position, the examining attorney has
submitted excerpts from the results of Google and
Lexis/Nexis searches.
Applicant, on the other hand, contends that
ENTERTAINMENT PROPERTIES TRUST is not generic, and that it
is capable of acquiring distinctiveness as evidenced by
applicant’s ownership of Supplemental Register Registration
No. 2254563 issued June 15, 1999 for the identical mark and
services. Applicant maintains that the examining
attorney’s contention that its mark is generic, and thus
incapable, is inconsistent with the office’s issuance of
the Supplemental Register registration. Further, applicant
argues that the examining attorney’s evidence does not
establish that ENTERTAINMENT PROPERTIES TRUST is generic
for applicant’s services. Finally, applicant argues that
its mark ENTERTAINMENT PROPERTIES TRUST has become
distinctive of its services. In support of its Section
2(f) claim, applicant submitted with the application the
declaration of its vice-president, Gregory Silvers, who
asserts that the mark has become distinctive of applicant’s
services by virtue of applicant’s substantially exclusive
and continuous use of said mark for over five years.
During the prosecution of the application, applicant also
Ser No. 78664423
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submitted excerpts from the results of Google and MSN
searches.
We note that the examining attorney did not respond to
applicant’s contention that it is inconsistent to hold the
mark generic in view of the Supplemental Register
registration. We recognize that such a holding may appear
to be at odds with applicant’s Supplemental Register
registration inasmuch as pursuant to Trademark Act Section
23, 15 U.S.C. §1091, the USPTO maintains a Supplemental
Register for marks “capable of distinguishing applicant’s
goods and services and not registrable on the principal
register.” (emphasis added) However, it is well settled
that neither the present examining attorney nor this Board
is bound by the decisions as to registrability of prior
examining attorneys. In re Nett Designs Inc., 236 F.3d
1339, 57 USPQ2d 1564, 1566 (Fed. Cir. 2001).
The issues on appeal, therefore, are whether
ENTERTAINMENT PROPERTIES TRUST is generic, or in the
alternative, highly descriptive and, if the latter is the
case, whether the claim of acquired distinctiveness under
Trademark Act Section 2(f) is sufficient.1

1 Since applicant seeks registration under Trademark Act Section
2(f), there is no issue that the mark is merely descriptive.
Ser No. 78664423
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The critical issue in generic cases is whether the
record shows that members of the relevant public primarily
use or understand the term sought to be registered to refer
to the category or class of goods or services in question.
H. Marvin Ginn Corp. v. International Ass’n of Fire Chiefs,
Inc., 782 F.2d 987, 228 USPQ 528, 530 (Fed. Cir. 1986); In
re Women’s Publishing Co. Inc., 23 USPQ2d 1876, 1877 (TTAB
1992). Making this determination “involves a two-step
inquiry: First, what is the genus of goods or services at
issue? Second, is the term sought to be registered …
understood by the relevant public primarily to refer to
that genus of goods or services?” Ginn, supra, 228 USPQ at
530. Evidence of the public’s understanding of a term may
be obtained from any competent source, including testimony,
surveys, dictionaries, trade journals, newspapers and other
publications. See Merrill Lynch, supra, 4 USPQ2d at 1143
(Fed. Cir. 1987) and In re Northland Aluminum Products,
Inc., 777 F.2d 1556, 227 USPQ 961, 963 (Fed. Cir. 1985).
We find that the genus of services in this case is
adequately described by applicant’s recitation of services,
namely, “services associated with real estate investment
trusts and the acquisition of real estate entertainment
properties.” Magic Wand Inc. v. RDB Inc., 940 F.2d 638, 19
USPQ2d 1551, 1552 (Fed. Cir. 1991) [“[A] proper
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genericness inquiry focuses on the description of services
set forth in the [application or] certificate of
registration”]. Indeed, applicant’s specimen of use
indicates that the services involve a real estate
investment trust which acquires entertainment related
properties. See Specimen of Use [“Entertainment Properties
Trust - A Real Estate Investment Trust – Entertainment
Properties Trust is actively acquiring Megaplex theatres
throughout the United States as well as other entertainment
related destination properties”].
Also, we find that the relevant public for this genus
of services encompasses securities brokers and prospective
investors in real estate investment trusts.
The examining attorney has the burden of proving
genericness by “clear evidence” thereof. See In re Merrill
Lynch, Pierce, Fenner & Smith, Inc., 828 F.2d 1567, 4
USPQ2d 1141, 1143 (Fed. Cir. 1987); see also In re Gould
Paper Corp., 834 F.2d 1017, 5 USPQ2d 1110, 1111 (Fed. Cir.
1987). Any doubt on the issue of genericness must be
resolved in favor of the applicant. In re Waverly Inc., 27
USPQ2d 1620, 1624 (TTAB 1993). When a mark consists of a
phrase, as does applicant’s mark, it is clear that “the
Board cannot simply cite definitions and generic uses of
the constituent terms of a mark … in lieu of conducting an
Ser No. 78664423
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inquiry into the meaning of the disputed phrase as a whole
to hold a mark … generic.” In re American Fertility
Society, 188 F.3d 1341, 51 USPQ2d 1832, 1836 (Fed. Cir.
1999
The examining attorney’s evidence consists of the
following four excerpts from the results of a Google search
which show use of “entertainment properties” (highlighted):
Our comprehensive worldwide protection, counseling,
enforcement and litigation regarding the
entertainment properties of the major sports
entertainment…
www.king.com/practices/practices;

The company originates unique, commercial
entertainment properties – often with an eye toward
pre-teens, teens, and young adults – and partner
with the …
www.alloymarketing.com/entertainment;

strategies and done deals for entertainment
properties ranging from Lucas films … celebrity and
entertainment properties.
www.consor.com/editor/docs; and

In addition, the license can be extended past the
five year term, dependent on the number of other
entertainment properties released during that
timeframe..
www.hasbro.com/media.

In addition, the examining attorney submitted the following
nine excerpts from the results of a search of the
Lexis/Nexis database which show use of “entertainment
properties;” or “entertainment property/properties trust”
(highlighted):
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… Group’s WMG Marketing has secured nearly $2
billion in revenues through the representation of
the most renowned sports and entertainment
properties in the world…
(Business Wire, June 20, 2006):

… active roles in the day-to-day operations of the
Blues and Savvis Center while continuing to manage
SCP’s other sports and entertainment properties …
(PR Newswire, June 30, 2006);

One out of every $10 of the real estate investment
trust’s assets are in leisure and entertainment
properties.
(The Palm Beach Post, July 17, 2006);

Entertainment Properties Trust is a real estate
investment trust (REIT) and is the largest owner of
entertainment related real estate in North America,
owning megaplex movie theatre properties,
entertainment retail centers and other specialty
properties in the United States and Canada.
(Business Wire, June 14, 2006);

Village Roadshow slipped five cents to $4.87. The
group said today it was looking to establish an
entertainment property trust.
(Asia Pulse, July 14, 1997);

“Village is in the early stages of considering and
evaluating the establishment of an Entertainment
Property Trust as a new business stream, the
company said.
(AAP Newsfeed, July 14, 1997);

It is also considering establishing a $200 million
entertainment property trust.
(The Australian, August 8, 1997);

AMC has created a new real estate investment trust
called Entertainment Properties Trust, which plans
to buy 12 megaplexes theatres from AMC ….
(Mergers & Acquisitions Report, November 3, 1997);
and

… will reduce capital outlay by leasing all its
premises and these will account for 36% of a new
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$A180 entertainment property trust being launched
by Prudential Bache.
(Business Review Weekly, February 23, 1998).

We find that the examining attorney has failed to
prove that ENTERTAINMENT PROPERTIES TRUST is generic for
applicant’s services. With respect to the four Google
excerpts, they show use of only a portion of the mark,
i.e., “entertainment properties” and, therefore, are not
probative evidence of the genericness of applicant’s mark
ENTERTAINMENT PROPERTIES TRUST as a whole. Moreover, it
does not appear that “entertainment properties” is even
being used in these excerpts to refer to real estate
properties.
Insofar as the Lexis/Nexis excerpts are concerned,
again, the first three excerpts show use of only the
“entertainment properties” portion of applicant’s mark, and
this is not probative evidence of the genericness of the
mark as a whole. In addition, the excerpts taken from
Business Wire and AAP Newsfeed are from newswires, and
newswire stories do not have the same probative value as
stories appearing in newspapers and magazines, to which the
relevant public is far more likely to have been exposed.
Also, one of the Business Wire excerpts and the Merger &
Acquisitions excerpt clearly refer to applicant, and as
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such, are not probative evidence of the genericness of
applicant’s mark. The Australian and Business Review
Weekly excerpts are taken from an Australian newspaper and
business magazine, respectively. These excerpts have
little probative value since we cannot determine to what
extent securities brokers and prospective investors in the
United States have been exposed to these Australian
publications. We are left then with a single probative
excerpt which is taken from Asia Pulse, a publication that
presumably is circulated in the United States. Considering
that all but one of such excerpts are of little or no
probative value, there is hardly “clear evidence” that the
relevant public understands ENTERTAINMENT PROPERTIES TRUST
to refer to “financial investment in the field of real
estate, namely services associated with real estate
investment trust and the acquisition of real estate
entertainment properties.” In sum, we find that the
examining attorney has not established that applicant’s
mark is generic for applicant’s services.
We turn then to the issue of whether applicant’s mark
ENTERTAINMENT PROPERTIES TRUST is highly descriptive of its
services and whether such mark has in fact become
distinctive of applicant’s services. We find that
applicant’s mark is highly descriptive of “financial
Ser No. 78664423
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investment in the field of real estate, namely services
associated with real estate investment trusts and the
acquisition of real estate entertainment properties.”
Applicant’s services involve a real estate investment trust
which acquires entertainment related properties. The
individual terms “entertainment properties” and “trust” are
generic for applicant’s services. Indeed, applicant uses
these terms in a generic manner in the identification of
its services. When the individual terms “entertainment
properties” and “trust” are combined to form ENTERTAINMENT
PROPERTIES TRUST, this term is highly descriptive of
applicant’s services.
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, 1006 (Fed.
Cir. 1988). As indicated above, applicant submitted with
its application the declaration of its vice-president, Mr.
Silvers, who states that the mark ENTERTAINMENT PROPERTIES
TRUST has become distinctive of applicant’s services by
virtue of applicant’s substantially exclusive and
continuous use of said mark for over five years. In
addition, applicant has submitted Google and MSN “hit”
lists resulting from a search for “entertainment properties
Ser No. 78664423
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trust.” The first twenty hits from a July 25, 2006 Google
search all refer to applicant. Similarly, the first 90
hits from a February 22, 2007 Google search and the first
45 hits from a MSN search conducted on the same date all
refer to applicant. In addition, applicant submitted
printouts of articles downloaded from the Internet and
taken from publications which discuss applicant. In all of
the excerpts and articles, “entertainment properties trust”
is used as a mark in that it is depicted with each word in
initial capital letters.
Applicant, however, has submitted no evidence of its
advertising or sales figures. Nor has applicant submitted
any declarations from securities brokers or potential
investors which represent their perception of ENTERTAINMENT
PROPERTIES TRUST. In short, the record is devoid of direct
evidence that the relevant classes of purchasers of
applicant’s services view ENTERTAINMENT PROPERTIES TRUST as
a distinctive source indicator therefor.
Given the highly descriptive nature of applicant’s
mark, we would need to see a great deal more evidence
(especially in the form of direct evidence from customers)
than that which applicant has submitted in order to find
that applicant’s mark has become distinctive of applicant’s
services. That is to say, the greater the degree of
Ser No. 78664423
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descriptiveness, the greater the evidentiary burden on the
user to establish acquired distinctiveness. See Yamaha
Int’l. Corp. v. Hoshino Gakki Co., supra; and In re Merrill
Lynch, Pierce, Fenner & Smith, Inc., supra.
In sum, after careful consideration of applicant’s
evidence, we find that such evidence does not establish
that applicant’s mark has acquired distinctiveness pursuant
to Section 2(f).
Decision: The refusal to register under Trademark Act
Section 2(e)(1) on the ground that applicant’s mark is
merely descriptive of its services and applicant’s claim of
acquired distinctiveness is insufficient is affirmed.