The Administra-tors of the Tulane Educational Fund

Trademark Trial and Appeal Board

Jun 30, 2004

No. 76255445 (T.T.A.B. Jun. 30, 2004)

Mailed: June 30, 2004
csl
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re The Administrators of the Tulane Educational Fund
________
Serial No. 76255445
______
Raymond G. Areaux of Carver, Darden, Koretzky, Tessier,
Finn, Blossman & Areaux, L.L.C. for The Administrators of
the Tulane Educational Fund.
David H. Stine, Trademark Examining Attorney, Law Office
114 (Margaret Le, Managing Attorney).
_______
Before Simms, Seeherman and Rogers, Administrative
Trademark Judges.
Opinion by Simms, Administrative Trademark Judge:

The Administrators of the Tulane Educational Fund
(applicant), a Louisiana non-profit corporation, has
appealed from the final refusal of the Trademark Examining
Attorney to register the asserted mark ON-LINE MARKETPLACE
for the amended description “online retail services
featuring clothing, novelty gift items, books, home
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT
OF THE TTAB
2
furnishings, computers and computer peripherals.”1 The
Examining Attorney initially refused registration under
Section 2(e)(1) of the Act, 15 USC §1052(e)(1), on the
basis that applicant’s mark is merely descriptive of
applicant’s online retail services. Applicant then amended
its application to seek registration on the Supplemental
Register on September 19, 2002. At that time the Examining
Attorney refused registration under Section 23 of the Act,
15 USC §1091, on the ground that applicant’s asserted mark
is generic for its online retail services and therefore
incapable of identifying applicant’s services and
distinguishing them from those of others. Applicant and
the Examining Attorney submitted briefs but no oral hearing
was held.

1 The original application, filed May 10, 2001, on the Principal
Register, had no declared filing basis, and was later amended to
recite that applicant had a bona fide intention to use the mark
in commerce as of the filing date. At the same time, in order to
amend the application to seek registration on the Supplemental
Register, applicant amended the application to assert that it was
now using the mark in commerce, and recited dates of use of
January 15, 2002.
An earlier description of the services stated: “retail
services featuring the retailer’s and others’ goods and services
which cater to student, alumni and visitors of a university and
other members of the university’s community.” In its appeal
brief, p. 11, applicant reiterated an offer it had previously
made to the Examining Attorney of a contingent amendment to its
identification by adding the following at the end of the current
description--“at retail for retail consumers, excluding auction
and barter services”--if such an amendment would serve to
overcome the genericness refusal. The Examining Attorney, while
not objecting to the amendment per se, did not enter it because
he determined that it would not overcome the genericness refusal.
We agree.
3
From the specimens of record (portions of which are
reproduced below), it is clear that applicant offers “Back-
to-School Specials” on various computer products such as
notebook computers, desktop computers, printers and
software. Applicant’s Web site encourages students to
“Show your school spirit! Shop for your favorite
merchandise online.” Merchandise available for purchase at
the Web site also includes sheets, rugs, backrests,
comforters, hotpots, dinnerware, blenders, utensils,
mirrors, hair dryers, towels, irons, bulletin boards,
lamps, desks, and various Tulane clothing items including
sweatshirts and T-shirts. Also, links to preferred vendors
including wireless services, banks, restaurants and
bookstores are provided.

4

The Examining Attorney has made of record a dictionary
definition of the word “marketplace” as “1. A place in
which a market is set up.”2 On three different occasions,
the Examining Attorneys handling this application placed in
the record numerous excerpts from the Nexis database. In
its brief, applicant for the first time objected to a
number of these references on the grounds that more than
half of them come from proprietary news services without
any evidence that the stories appeared in any newspaper or
magazine or were otherwise circulated among the general

2 American Heritage Dictionary (Second College Edition 1982).
5
public, and that many of the excerpts originated from
foreign publications. The Examining Attorney countered in
his appeal brief that, in today’s electronic age, this
evidence is available at the stroke of a key and that this
evidence is more likely to be encountered by the actual
users or purchasers of applicant’s online retail services
than would be stories in printed publications.
Applicant’s objections are well taken. We have held
that stories from such sources as foreign publications or
from news wire services are of limited evidentiary value
because they are not likely to have had much impact on the
relevant public. See In re Couture, 60 USPQ2d 1317, 1318
n.2 (TTAB 1999); In re Patent & Trademark Services Inc., 49
USPQ2d 1537, 1538 n. 2 (TTAB 1998); In re Organik
Technologies, Inc. 41 USPQ2d 1690, 1691 n. 3 (TTAB 1997);
In re Wilcher Corp., 40 USPQ2d 1929, 1931 (TTAB 1996); In
re Appetito Provisions Co., 3 USPQ2d 1553, 1555 n. 6 (TTAB
1987) and In re Men’s International Professional Tennis
Council, 1 USPQ2d 1917, 1918 (TTAB 1986). Compare In re
Cell Therapeutics, Inc., 67 USPQ2d 1795, 1797 (TTAB
2003)(involving “highly sophisticated medical doctors and
researchers” who may have greater access to such sources
via the Internet or otherwise). Accordingly, we have given
6
little weight to references from foreign sources or from
proprietary wire services.
We recite below some of only those excerpts from the
electronic database which are from U.S. publications:
HEADLINE: ONLINE, TIME IS OF THE ESSENCE;
RETAILERS HEAR TIPS FOR SELLING VIA INTERNET
Another opportunity lies in the increasing
number of households using broadband rather
than dial-up modems. Broadband users, who
now comprise 20 percent of U.S. households,
tend to have more money and shop more
online. No retailer can afford to ignore
eBay and other online marketplaces that will
have 25 percent of the online sales by 2005,
Johnson said.
Sun-Sentinel (Fort Lauderdale, Fl.), May 8,
2003
* * * * * * *
HEADLINE: Blizzard buries retail sales
Bill Angrick, chief executive officer of
Washington, D.C.-based Liquidity Services
Inc., which manages an online marketplace
for retailers to make bulk sales of
merchandise, said 45 to 50 retailers posted
merchandise on the site…each day from
Saturday to Monday.
The Journal News (Westchester County, N.Y.),
February 18, 2003
* * * * * * *
HEADLINE: Instrument exchange opens online
market with ironclad guarantee; Industry
Forefront
“The musical instrument industry is
massive,” said Larry Tedesco, president/CEO,
“but until now there has not been a
comprehensive online marketplace for
musicians and retailers.
InstrumentExchange.com is a full-service
auction specializing in musical instruments
only and is built by musicians for
7
musicians. The site’s time-saving
technology is easier to use and offers the
most product information available anywhere.
It is clear that musicians prefer to shop at
specialty music stores versus general
retailer. The same holds true for online
auctions. They now have a specialty auction
focused only on musical instruments and
gear.”
Music Trades, February 1, 2003
* * * * * * *
HEADLINE: Guitar.com partners with
Gbase.com; Industry Forefront
As an established online retail community,
Gbase Gearmail serves as the premier online
marketplace for retailers to list their
inventory and expand their global reach.
The first of its kind for buyers and sellers
of vintage and collectible guitars, Gbase
receives an astounding four million hits per
month.
Music Trades, February 1, 2003
* * * * * * *
HEADLINE: ENTERPRISE; EXCHANGE EXPECTS
‘DOUBLE-DIGIT’ GROWTH
Online marketplace Worldwide Retail
Exchange (WWRE) is predicting ‘double-digit’
growth for its internet trading business
this year.
Computing, January 30, 2003
* * * * * * *
HEADLINE: Discounters cut into Tower’s
music supremacy
A comparison of prices for CDs at
traditional retailer Tower, online retailer
Amazon.com and “big-box” retailer Best Buy.
Amazon also offers an online marketplace for
factory-sealed and used CDs at deep
discounts [followed by a listing of various
products and their prices at various stores
and online locations]
The Tennessean, January 12, 2003
* * * * * * *
8
HEADLINE: Visit little-box discounters:
PCs with Web
Another popular bargain site is Half.com,
the fixed-price online marketplace that’s
part of eBay Inc. There are no auctions on
this site, but there are bargains on new and
used goods.
Last week Half.com featured a “Spider-Man:
The Movie” game for PlayStation 2 consoles
at $25.27, 56 percent off the list price.
The Boston Herald, December 16, 2002
* * * * * * *
HEADLINE: Market outlook: Hardware/Home
improvement industry remains healthy despite
uncertain economy
INTERNET ATTENTION TURNS TO ONLINE
MARKETPLACES
Internet-only retailers did not find their
pot of gold in the home improvement arena,
and it remains to be seen whether
traditional retailers will see meaningful
results from their online selling efforts
either. However, the Internet remains full
of promise and opportunity for those
companies willing to experiment. Online
marketplaces and industry portals are where
the next wave of activity will be
concentrated, as these technology
applications offer real potential to reduce
costs and increase efficiencies up and down
the channel.
Do-It-Yourself Retailing, November 1, 2001
* * * * * * *
HEADLINE: Big Retailers Continue to
Dominate Online World
“Bricks-and-Clicks took a tremendous
amount of market share from the pure plays,”
Seth Geiger, vice president of e-commerce
and professional services at online
marketplace BizRate.com, told a gathering
Tuesday at the convention…
One of the biggest winners in the online
holiday sweepstakes was Walmart.com, the
9
once-maligned Web site of the nation’s
largest retail chain…
TheStreet.com, January 17, 2001
* * * * * * *
HEADLINE: Baseball takes steps to stamp out
fraud
…will be assigned a number and marked with a
hologram meant to be tamper-proof, consumers
eventually will be able to register their
purchases with mlb.com. That not only will
provide a record of the item’s ownership but
might create an online marketplace where
buyers can look up specific items and their
owners.
USA Today, January 10, 2001
* * * * * * *
HarmonyCentral.com, a leading online
marketplace for musicians, sold its Chicago-
based e-tailing subsidiary, zZounds.com, to
Pinebrook Holdings Inc., a privately held
investment firm focused on technology-
intensive retailing and distribution. Terms
were not disclosed. Pinebrook will operate
zZounds, which sells musical instruments and
recording gear, but two Chicago area retail
stores will be closed.
Chicago Sun-Times, November 28, 2000
* * * * * * *
HEADLINE: SHOPPING ONLINE: Bricks go for
clicks; Traditional stores make holiday
online shopping presence felt as buyers turn
to names they know
Traditional retailers have inherent
advantages beyond brand recognition,
analysts say. For one, they don’t have to
spend hundreds of thousands of dollars on
branding and can leverage the power of their
offline brands in the online marketplace.
Gap, Nordstrom, Williams-Sonoma and
Target, for instance, could see some of the
biggest increases in online customers
because they have stores.
The Atlanta Journal and Constitution,
November 12, 2000
* * * * * * *
10
HEADLINE: Retailers in Wisconsin’s Fox
Valley Gear Up for Holiday Sales Season
She attributes the smooth season to the
fact the company already had a strong
catalogue business customer service base.
That just needed a little tweaking to
transfer to the online marketplace, she
said.
In 1998, LandsEnd.com reported $61 million
in sales. That number grew by 10.5 percent
in 1999. “Internet shopping for us has
grown every single year,” Holmes said. The
Post-Crescent, November 6, 2000
* * * * * * *
HEADLINE: Secondhand stake for Trans World
SecondSpin.com, which began as an online
marketplace in 1996, has since added four
stores… The company purchases all of its
inventory from its customers…
Trans World, based on Corporate Circle in
Guilderland, operates retail stores
nationwide under the names Record Town,
Camelot Music, Saturday Matinee,
Strawberries and For Your Entertainment. It
also has an online presence at
http://www.TWEC.com
The Times Union (Albany, NY), August 16,
2000
* * * * * * *
HEADLINE: INDUSTRY FOCUS
Lake Success-based MaterialNet.com, an
online marketplace of industrial-metal
products has formed a partnership with
OnlineMetals.com, an online distributor of
metals based in Seattle.
Company officials say the agreement allows
them to reach both small and large buyers of
steel, aluminum, copper and brass…
Newsday, August 7, 2000
* * * * * * *
Cargill Inc., Minnetonka, Sysco Corp.,
Tyson Foods Inc. and McDonald’s Corp. said
they will create Electronic Foodservice
11
Network, an online marketplace for the food-
service industry.
Star Tribune, July 26, 2000
* * * * * * *
HEADLINE: Business Links On Web Raise
Antitrust Issues
GlobalNetExchange--Sears, Roebuck and
Carrefour of France, together with Oracle,
plan to create a global online marketplace
for the retail industry, inviting other
retailers to join. The joint venture will
initially focus on the combined $80 billion
in purchases that Sears and Carrefour make
from 50,000 suppliers, partners and
distributors.
The New York Times, July 7, 2000
* * * * * * *
HEADLINE: Recast e-Steel hammers out niche;
Sells technology, not just transactions
…Michael Levin took his molten experience
and poured it into a very different mold:
e-Steel Corp., an on-line marketplace for
buying and selling steel.
Like other business-to-business on-line
marketplaces, e-Steel found favor with
venture capitalists who saw the profit
potential in commissions from on-line
transactions.
Crain’s New York Business, January 22, 2001
* * * * * * *
HEADLINE: Trade exchanges set up shop in
cyberspace
There is no single, neat-and-clean
business model for on-line marketplaces.
Instead, there are several types of
marketplaces, or trade exchanges, that
promise to wring time and cost out of their
business processes.
Computer-Aided Engineering, January 2001
* * * * * * *
HEADLINE: Infopia Announces First
Storefront and Shopping Cart to Use
Artificial Intelligence for Auction and
Marketplace Selling…
12
“Traditionally, selling on auctions and
online marketplaces has been too costly on a
product by product basis for merchants with
medium- to large-sized inventories…”
Information Superhighways Newsletter, August
1, 2001
* * * * * * *
HEADLINE: THE SUBTLE CLEARANCE SALE
ChannelAdvisor helps retailers with every
facet of the on-line marketplace, including
effective pricing and cross marketing of
merchandise to drive sales higher…
“Another shift in the on-line marketplace
that appeals to retailers is from variable–
price auctions to fixed-price sales,”
reports Wingo.
Chain Store Age, October 1, 2001
* * * * * * *
HEADLINE: Bidding rights: on-line
marketplaces claim to offer an effective
method for suppliers to put themselves in
the shop window as OEMs tender for new
business, but can they deliver?
Subcontracting.
Engineering, November 1, 2001
* * * * * * *
HEADLINE: e-BUSINESS - News in brief
YET2COM, an on-line marketplace for
intellectual property, has secured third
round funding of $20 million, led by Bayer
AG, Caterpillar and 3i.
E-Business, April 30, 2001
* * * * * * *

It is the Examining Attorney’s position that the
evidence of record (dictionary definitions and Nexis
database stories and excerpts) shows that the phrase “on-
line marketplace” is in widespread generic use to denote
online retail marketplace services such as applicant’s
13
online retail services which comprise an electronic online
marketplace of goods and services. More particularly, the
Examining Attorney contends that these words are generic
for online locations where goods or services may be
offered, marketed and acquired by various means (sale,
trade or auction), including retail as well as wholesale
transactions. The Examining Attorney maintains that
applicant’s mark is in fact a “genus-naming generic term”
(brief, unnumbered page 3) that may be applied to the
general category in which applicant’s retail services fall.
That is, this term has generic significance with respect to
a larger category of online services to which applicant’s
more limited retail services belong.
Moreover, the record clearly indicates that
use of such online marketplaces cuts across
the full spectrum of commerce, encompassing,
inter alia, retail, wholesale and business-
to-business transactions… It is noted that
this standard definition [“a place where a
market is set up”] is sufficiently broad to
encompass an online location. It is
respectfully suggested that these references
present a clear, unequivocal indication that
the term “online marketplace” is generic
with respect to any online place for the
marketing or sale of goods/services,
including the specific retail services
offered by the applicant.
Examining Attorney’s appeal brief, unnumbered page 2.
Therefore, according to the Examining Attorney, this term
is perceived by the relevant public as a common name for
14
applicant’s online retail services, and not as a mark
identifying the source or origin of applicant’s services.
Applicant, on the other hand, maintains that the
Examining Attorney has not made a strong or substantial
showing that the term sought to be registered is generic,
based upon clear evidence of generic usage. It is
applicant’s position that the Examining Attorney’s evidence
shows that the phrase “online marketplace” has been used in
connection with business-to-business, auction and trading
services but not in connection with online retail services
offered to the general public. Also, references from
specialty publications are of little evidentiary value,
according to applicant, because those publications are not
circulated to and read by the general public. That is to
say, according to applicant, the evidence shows usage of
this term in connection with services other than
applicant’s retail services and by users other than the
general public. Accordingly, applicant argues that the
Examining Attorney has not shown by clear evidence the
understanding of the relevant public--ordinary consumers.
Finally, applicant asks us to resolve any doubt on the
issue of genericness in its favor.
Section 23 of the Act, 15 USC §1091, provides that,
“For the purposes of registration on the supplemental
15
register, a mark may consist of any trademark, symbol,
label, package, configuration of goods, name, word, slogan,
phrase, surname, geographical name, numeral, device, any
matter that as a whole is not functional, or any
combination of any of the foregoing, but such mark must be
capable of distinguishing the applicant’s goods or
services.” Of course, if a mark is in fact generic, it is
incapable of distinguishing applicant’s goods or services
from those of others because the term may be used to name
the category of similar products or services into which a
party’s goods or services may fall, as well as those of
competitors.
With respect to generic terms, Section 14(3) of the
Act, 15 USC §1064(3), provides that “The primary
significance of the registered mark to the relevant public
rather than purchaser motivation shall be the test for
determining whether the registered mark has become the
generic name of goods or services on or in connection with
which it has been used.” This language is equally
applicable to the determination of genericness prior to
registration. That is to say, the statutory test of the
primary significance of the mark to the relevant public is
also the test for determining whether an applied-for mark
is or is not registrable.
16
In determining whether the primary significance
of a term is generic, our primary reviewing court has
stated:
…[D]etermining 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 …
understood by the relevant public primarily to
refer to that genus of goods or services?
H. Marvin Ginn Corporation v. International Association of
Fire Chiefs, Inc., 782 F.2d 987, 228 USPQ 528, 530 (Fed.
Cir. 1986). See also In re American Fertility Society, 188
F.3d 1341, 51 USPQ2d 1832 (Fed. Cir. 1999). The critical
issue in genericness cases is, therefore, whether members
of the relevant public primarily use or understand the term
sought to be registered to refer to the genus or category
of goods in question. In re Montrachet S.A., 878 F.2d 375,
11 USPQ2d 1393, 1394 (Fed. Cir. 1989); In re Merrill Lynch,
Pierce, Fenner, & Smith, Inc., 828 F.2d 1567, 4 USPQ2d
1141, 1143 (Fed. Cir. 1987); Dan Robbins & Assocs., Inc. v.
Questor Corp., 599 F.2d 1009, 202 USPQ 100, 105 (CCPA
1979); Zimmerman V. National Assn. of Realtors, Inc., 70
USPQ2d 1425 (TTAB 2004); and In re Recorded Books, Inc., 42
USPQ2d 1275 (TTAB 1997). Evidence of the public’s
understanding of a particular term may be obtained from any
competent source, including direct testimony of consumers,
consumer surveys, listings in dictionaries, trade journals,
17
newspapers, and other publications. See Magic Wand Inc. v.
RDB Inc., 940 F.2d 638, 19 USPQ2d 1551 (Fed. Cir. 1991); In
re Merrill, Lynch, Pierce, Fenner, and Smith Inc., supra; In
re Northland Aluminum Products, Inc., 777 F.2d 1566, 227
USPQ 961 (Fed. Cir. 1985); and In re Leatherman Tool Group,
Inc., 32 USPQ2d 1443, 1449 (TTAB 1994). Finally, we note
that, in the context of this ex parte proceeding, it is the
burden of the Examining Attorney to prove the genericness
of the term sought to be registered by clear evidence. In
re Merrill, Lynch, Pierce, Fenner, and Smith Inc., supra.
The genus, category or class of services is determined
on the basis of the services identified in the application.
See, e.g., Magic Wand, Inc. v. RDB, Inc., supra. As set
forth in this application, the category or class of
applicant's services is online retail services featuring a
variety of goods. Applicant is an online retailer of
various goods.
With respect to the issue of whether the term sought
to be registered is understood by the relevant public (the
general purchasing public) primarily to refer to that class
or category of services, we must look to the evidence of
record. While the term “online marketplace” has been used
(in a generic sense) to refer to online locations where
retailers may list their inventory and conduct bulk sales
18
to other retailers (and not to the general public), and to
identify online locations for the sale of specialty goods
(e.g., steel) which may not be sold to the general public,
there is also clear evidence that this term has been used
to identify online retail locations that sell a variety of
merchandise to the general public. This evidence shows
that the words “online marketplace” have been used in
conjunction with online retailing. Thus, the public would
understand this term to have this significance both as a
result of the ordinary dictionary meaning of these words,
as well as how this term has been used in newspapers and
magazines distributed to the general public. In addition,
applicant’s own use tends to show that these words would be
perceived as a location where online shoppers may purchase
a variety of merchandise (Tulane On-line Marketplace).
It is, of course, true that there can be multiple
generic names for a single product or service. That is, any
product or service may have many generic designations. But
all of the generic names for the product or service belong
in the public domain. See 2 J. Thomas McCarthy, McCarthy on
Trademarks and Unfair Competition, §12:9 (4th ed. 2003).
Here, the words “online retailer,” “online retail store” or
simply “online store” may also be generic designations that
competitors may freely use. However, we believe that the
Examining Attorney has submitted a strong showing that
19
applicant’s asserted mark “ON-LINE MARKETPLACE” will be
understood by the general purchasing public primarily as a
generic name for the category or class of services which
applicant is rendering--an online marketplace of goods and
services.
Decision: The refusal of registration is affirmed.