The Great Books Foundation

Trademark Trial and Appeal Board

Sep 18, 2008

No. 78775079 (T.T.A.B. Sep. 18, 2008)

Mailed: September 18, 2008

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
UNITED STATES PATENT AND TRADEMARK OFFICE
_______

Trademark Trial and Appeal Board
_______

In re The Great Books Foundation
_______

Application Serial No. 78775079
_______

Oral Hearing July 9, 2008
_______

George E. Bullwinkel, Bullwinkel Partners Ltd. for The Great
Books Foundation.

Ellen J.G. Perkins, Examining Attorney, Law Office 110,
Chris A.F. Pederson, Managing Attorney.
_______

Before Quinn, Bucher, and Mermelstein, Administrative
Trademark Judges.

Opinion by Mermelstein, Administrative Trademark Judge:
Applicant seeks registration on the Principal Register
of the mark SHARED INQUIRY for “educational services, namely
providing classes, seminars and courses of instruction in
the field of reading and literature using a proprietary
method of learning,” in International Class 41.
Applicant and the examining attorney submitted briefs,
and an oral hearing was held before the Board.
We affirm.
I. Issues on Appeal
As an initial matter, we find it necessary to address
Application Serial No. 78775079
just what issues are on appeal. Both the examining attorney
and the applicant have made confusing statements on this
threshold question.
First, the examining attorney contends that applicant
has conceded the descriptiveness of its proposed mark by
seeking registration pursuant to Trademark Act § 2(f), 15
U.S.C. § 1052(f). The subject application was
electronically filed on December 16, 2005, and includes the
following statements:
The mark has become distinctive of the
goods/services through the applicant’s
substantially exclusive and continuous use in
commerce for at least the five years immediately
before the date of this statement.

The mark has become distinctive of the
goods/services, as demonstrated by the attached
evidence.

...

Applicant submits herewith ... the declarations of
numerous prominent educators and others having
personal knowledge of the facts set forth in their
respective declarations. Applicant additionally
submits ... a detailed and current multiple-
strategy Internet search conclusively
demonstrating that in the current usage, the term
SHARED INQUIRY is perceived as being neither
generic nor merely descriptive. Instead, the
search report shows that the term is either
indicative, suggestive, or both, of a continuing
long-standing association with Applicant, The
Great Books Foundation.

In her first Office action, the examining attorney
refused registration of the proposed mark as merely
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Application Serial No. 78775079
descriptive, and noted that “[a]pplicant’s claim of acquired
distinctiveness is insufficient to overcome the refusal.”
Nonetheless, no mention of acquired distinctiveness was
made in the March 30, 2007, final Office action. To confuse
matters further, on August 8, 2007, in applicant’s request
for reconsideration of the final refusal, applicant
“request[ed] amendment of this application to § 2(f) based
on a claim of acquired distinctiveness.” (It is not clear
why an amendment was believed necessary, since a claim of
acquired distinctiveness was clearly made in the original
application.) Again, although the “amendment” was not
explicitly made in the alternative, applicant simultaneously
requested reconsideration of the finding that the mark is
merely descriptive. In response, the examining attorney
denied applicant’s request for reconsideration, this time
addressing applicant’s § 2(f) argument and evidence.
We find that the record supports applicant’s contention
that its claim of acquired distinctiveness was made in the
alternative. Although a claim to registrability under
Trademark Act § 2(f) normally presumes descriptiveness, an
applicant is permitted to argue both issues without
conceding descriptiveness, so long as its intention to do so
is clear. While the better practice is to explicitly state
this strategy, this record makes applicant’s intent clear.
We therefore disagree with the examining attorney’s
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Application Serial No. 78775079
contention that applicant has conceded that its mark is
merely descriptive by seeking registration under Trademark
Act § 2(f).
Second, we note applicant’s insistence throughout its
briefs and at oral argument that its mark is not generic.1
To be clear, although the examining attorney noted at
several points during examination that the mark is “possibly
generic,” (or similar words) no refusal to register has been
made on that basis. The examining attorney clarified at
oral argument that it was not her intention to refuse
registration on the ground of genericness, and we thus give
the matter no further consideration.
Accordingly, our task on appeal is to decide whether
applicant’s proposed mark is merely descriptive of its
recited services, Trademark Act § 2(e)(1), and, if so,
whether it has nonetheless acquired distinctiveness,
Trademark Act § 2(f).
II. Applicable Law
A term is merely descriptive if it immediately conveys
knowledge of a significant quality, characteristic,
function, feature or purpose of the goods with which it is
used. In re Gyulay, 820 F.2d 1216, 3 USPQ2d 1009 (Fed. Cir.

1 Even when arguing the issue of mere descriptiveness, many of
the authorities cited by applicant are cases discussing
genericness. Many of these cases are inapposite, since a mark
may be descriptive without being generic.

4
Application Serial No. 78775079
1987). Whether a particular term is merely descriptive is
determined in relation to the products for which
registration is sought and the context in which the term is
used, not in the abstract or on the basis of guesswork. In
re Abcor Dev. Corp., 588 F.2d 811, 200 USPQ 215, 218 (CCPA
1978); In re Remacle, 66 USPQ2d 1222, 1224 (TTAB 2002). In
other words, the issue is whether someone who knows what the
products are will understand the mark to convey information
about them. In re Tower Tech, Inc., 64 USPQ2d 1314, 1316-
1317 (TTAB 2002); In re Patent & Trademark Serv. Inc., 49
USPQ2d 1537, 1539 (TTAB 1998); In re Home Builders Ass’n of
Greenville, 18 USPQ2d 1313, 1317 (TTAB 1990); In re Am.
Greetings Corp., 226 USPQ 365, 366 (TTAB 1985).
“On the other hand, if one must exercise mature thought
or follow a multi-stage reasoning process in order to
determine what product or service characteristics the term
indicates, the term is suggestive rather than merely
descriptive.” In re Tennis in the Round, Inc., 199 USPQ
496, 497 (TTAB 1978); see also In re Shutts, 217 USPQ 363,
364-365 (TTAB 1983); In re Universal Water Sys., Inc., 209
USPQ 165, 166 (TTAB 1980). Even where individual terms are
descriptive, combining them may evoke a new and unique
commercial impression. If each component retains its merely
descriptive significance in relation to the goods, without
the combination of terms creating a unique or incongruous
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Application Serial No. 78775079
meaning, then the resulting combination is also merely
descriptive. In re Tower Tech., 64 USPQ2d at 1317-1318.
Notwithstanding a refusal to register based on the
descriptiveness of a proposed mark, an applicant may
nonetheless be entitled to registration upon a showing that
the mark
has become distinctive of the applicant’s goods in
commerce. The Director may accept as prima facie
evidence that the mark has become distinctive, as
used on or in connection with the applicant’s
goods in commerce, proof of substantially
exclusive and continuous use thereof as a mark by
the applicant in commerce for the five years
before the date on which the claim of
distinctiveness is made.

Trademark Act § 2(f).
The ultimate burden of demonstrating entitlement to
registration under Trademark Act § 2(f) rests with
applicant, who must prove by a preponderance of the evidence
that, due to the length and manner of its use of the mark,
the mark has become distinctive of applicant’s goods or
services. “[L]ogically[,] that standard becomes more
difficult to meet as the mark's descriptiveness increases.”
Yamaha Int’l Corp. v. Hoshino Gakki Co. Ltd., 840 F.2d 1572,
6 USPQ2d 1001, 1008 (Fed. Cir. 1988).
III. Discussion
Applicant seeks registration of SHARED INQUIRY for
“educational services, namely providing classes, seminars
6
Application Serial No. 78775079
and courses of instruction in the field of reading and
literature using a proprietary method of learning.”2
A. Descriptiveness
We begin with an examination of the words of the
proposed mark itself. For the sake of completeness, we
note3 that to “share” means “to have a share or part; take
part (often fol. by in).” RANDOM HOUSE UNABRIDGED DICTIONARY,
(online 2006), Dictionary.com Unabridged (v 1.1) (September
16, 2008). Likewise an “inquiry” is “a seeking or request
for truth, information, or knowledge.” Id. As will be
seen, these words are used in their ordinary sense in the
proposed mark.

2 Applicant does not contend that the wording in its recitation
of services – “using a proprietary method of learning” – is a
factor which supports registration, and we do not see how it
would be so. Applicant’s “proprietary method” is not described
in the recitation of services, and thus does not describe any
services which are or are not covered by the application. We
thus construe this wording as a rhetorical flourish, rather than
a meaningful limitation, although we would reach the same result
even if the services were considered to be limited.
Nonetheless, we note that there is nothing in this record (such
as a patent) which would indicate that applicant’s teaching
method actually is proprietary, i.e., that applicant has a legal
right to prevent others from providing classes using the
educational model discussed herein. We therefore assume (without
deciding) that the evidence of third-party activities in this
case indicates lawful activities which do not themselves infringe
on applicant’s rights. Our decision is limited only to whether
applicant may obtain registration of an asserted mark to identify
such activities in commerce.
3 The Board may take judicial notice of dictionary definitions,
Univ. of Notre Dame du Lac v. J.C. Gourmet Food Imp. Co., 213
USPQ 594 (TTAB 1982), aff'd, 703 F.2d 1372, 217 USPQ 505 (Fed.
Cir. 1983), including online dictionaries that exist in printed
format or have regular fixed editions. In re Red Bull GmbH, 78
USPQ2d 1375, 1377 (TTAB 2006).
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Application Serial No. 78775079
Both applicant and the examining attorney have
submitted a number of materials reflecting on the meaning
and use of the term SHARED INQUIRY.4 Applicant’s materials
are clearly either authored by applicant or about
applicant’s programs, and include references dated as early
as 1972. The examining attorney’s submissions are more
recent and involve uses of the term by other parties.
Nonetheless, the references are consistent in their use of
the term and in the type of educational model to which it
refers.
A sample of these sources is instructive. The
following are representative excerpts from applicant’s
submissions:
Junior Great Books Discussions are usually led by
two people. Their job is to increase your
understanding of what you have read by encouraging
you to think for yourself about what it means.
They conduct the discussion by asking questions
that help to interpret the author’s meaning. In
addition to being interpretive, their questions
have another important characteristic: They are
questions to which the discussion leaders
themselves are not sure of the answer. Often,
this is because they think their questions can be
answered correctly in more than one way, or they

4 Both have also made arguments based on the number of “hits”
resulting from various searches using the Google search engine,
and the examining attorney submitted with her first Office action
the “results” page from such a search. We have given the
examining attorney’s search summary (and her arguments based upon
it) very little weight because search summaries “provide little
context to discern how a term is actually used on the webpage
that can be accessed through the search result link.” In Re
Bayer Aktiengesellschaft, 488 F.3d 960, 82 USPQ2d 1828, 1833
(Fed. Cir. 2007). On the other hand, applicant submitted no
search summaries in support of its “Google” arguments, and we
accordingly give them no weight at all.
8
Application Serial No. 78775079
may not have found any answer that satisfies them
even after two careful readings of the selection.
In either case, the discussion leaders share real
questions of meaning with you and seek your help
in answering them. For this reason, we call our
method of discussion shared inquiry.

In shared inquiry, you are free to answer the
discussion leaders’ interpretive questions in any
way that you like. You are equally free not to
answer them at all if you have nothing to say at
the moment. If you do answer the questions, the
leaders may ask you to point out what is in the
story that makes you think your answer is correct.
Other participants are free to agree or disagree
with you, but they too may be asked to support
their answers with evidence from the story. As a
result of what your fellow participants say in the
discussion, you may change your mind about how you
interpret something in the story. Shared inquiry
offers the opportunity to learn from the author
and to learn from one another.

The Great Books Foundation, The Individual and Society,
216-17 (1975).
Shared inquiry is a “Socratic” method in that the
instructor does not lecture or offer opinions, but
only asks questions. The instructor guides
students in carrying their thinking forward
purposefully, not by steering them towards a
predetermined conclusion or even consensus, but
rather by helping each student to develop an
original point of view. Students are responsible
for generating and defending their answers in
light of the text and in dialog with each other.

The Great Books Foundation, Great Books in the College
Classroom, 1 (1994).
Shared Inquiry discussions follow close reading of
the selections, vocabulary study, and directed
note taking. Teachers lead heterogeneously
grouped classes in extended conversations around
open-ended questions that draw students into the
literature. Because the questions that teachers
raise have no single right answer, students must
probe the text for evidence that supports their
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Application Serial No. 78775079
answers and listen to others who have different
points of view to develop a deeper interpretation
of the author’s meaning and purpose. In the
process, students learn to think critically and
develop ideas with others.

Anne Wheelock, Junior Great Books: Reading for Meaning in
Urban Schools, 57 Educational Leadership 47, 48 (Oct. 1999).
It is clear from the foregoing excerpts and others in
the record that SHARED INQUIRY is a pedagogical practice
involving intensive interpretation of a text by non-
hierarchical discussion groups. While the discussion may be
led, the leader’s role is not to lecture, but to focus the
discussion on questions that have no clear-cut answers. The
emphasis is on the process by which the group analyzes and
discusses the questions, offering opinions supported by the
text itself. The viewpoint of each participant is discussed
and valued – so long as it is based on a defensible analysis
of the text. This approach thus consists of an “inquiry,”
which is “shared” equally by members of the group, including
the leader.
We find that the evidence submitted by applicant is
itself sufficient to establish the descriptiveness of SHARED
INQUIRY with respect to the identified educational services.
Applicant conducts classes, seminars, and courses “in the
field of reading and literature using a proprietary method
of learning.” Applicant’s evidence describes its method in
considerable detail. As is readily apparent, those
10
Application Serial No. 78775079
utilizing the identified services “take part” in a “seeking
or request for truth, information, or knowledge,” i.e., in a
“shared” “inquiry.”
Applicant correctly argues that the combination of
merely descriptive words may nonetheless result in an
arbitrary mark. See App. Br. at 17. But as applicant notes
“[i]n those cases and others the descriptiveness of the
components was either lost in the combination or the
composite was so incongruous or unusual that it possessed
only suggestive significance.” Id. quoting In re Nat’l
Shooting Sports Found., Inc., 219 USPQ 1018, 1020 (TTAB
1983). Applicant does not indicate, however, why the words
“shared” and “inquiry” are unusual or incongruous in
combination or with respect to the identified services, and
we do not find them to be so. As noted, the words
themselves accurately describe applicant’s services.
Moreover, applicant’s materials typically do not use
the term “shared inquiry” as a trademark – i.e., an
indicator of the source of applicant’s services – but rather
as a descriptive term referring to a feature of applicant’s
educational services. Further – while not in itself
dispositive – we note that the asserted mark is rarely
capitalized in applicant’s literature, and does not ever
appear to have been used with any clear indication that the
term is asserted to be a trademark. For example, applicant
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Application Serial No. 78775079
does not refer to its “Shared Inquiry services” or “Shared
Inquiry classes.” While we do not require technically
“correct” trademark usage in all instances, applicant’s
consistent non-trademark use of the proposed mark over a
long period of time is strong evidence that those exposed to
applicant’s own usage of the term would perceive it as
describing a particular method of teaching, and not as an
identifier of the source of such services.
The evidence submitted by the examining attorney
focuses on use of the term SHARED INQUIRY by those other
than applicant. Nonetheless, the evidence is highly
consistent in showing descriptive use of the term. Among
the examining attorney’s submissions were the following:
Shared inquiry in a collaborative setting allows
for a dialogue focused on learning as a continuing
process. The most proficient teachers know that
their work is never quite done... in fact more
questions arise than do answers. Shared inquiry
is a means to frame both the questions and the
answers in ways that make sense for both students
and teachers. Shared inquiry is the process that
personalizes the curriculum development process
and adds dimension to content. Shared inquiry
allows the profession to reconceptualize the core
of his or her expertise so that all learners may
have access to the importance of the knowledge.
If all parties come to the process with an open
mind and the willingness to learn, the result can
have tremendous power to shape insight and
discourse.

Charles S. Serns, Collaboration and the Community of
Leaders, www.yale.edu/hnhti/pubs/A14/sems.html (May 3,
2006).
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Application Serial No. 78775079
With the goal of enriching our academic program,
Augustana will expand on a long tradition of
faculty/student collaboration by introducing
shared inquiry projects within students’ major
fields.

To support our plan to move shared inquiry to the
center of the curriculum, the college is
developing more collaborative opportunities for
students and faculty.
....
Shared inquiry challenges students within the
security of a supportive environment, but what
really distinguishes our program is a component
that encourages students to reflect on the value
of their inquiry, not only to themselves and their
education, but also to a larger community.

Augustana College, Student Research Fellowship, www.-
augustana.edu/acaemics/special/studentresearch/index.php
(June 28, 2006).
College for Kids is a summer program for students
who are talented and have achieved a high degree
of success in school. Instructors use teaching
methods that are appropriate to a college
classroom, including lectures, group discussions,
shared inquiry, and lab activities.

Monmouth College, Welcome to the Education Department,
College for Kids, http://department.monm.edu/education/-
c4kids.htm (Feb. 2, 2007).
In response to the need for a more situated
knowledge base in the preparation of science
teachers, Drs. Tippins and Thompson will work with
pre-service teachers, middle school science
teachers, & university science education faculty
in exploring existing science education cases that
link theory to practice. Pre-service teachers
will also create their own cases. Experienced
teachers and university faculty will explore a
shared inquiry-based process of “reciprocal
mentoring” by providing feedback to the student
teachers’ cases and whole group discussion.

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Application Serial No. 78775079
Northeast Region PRISM, 2004-2005 Grant Awards, www.-
coe.uga.edu/prism/prism_short_summaries_2004_2005.html (Jan.
20, 2007).
Master of Science in Education – Professional
Development – Shared Inquiry Communities
The shared inquiry process is a learning method in
which students search for answers to fundamental
questions raised by a text, lecture, or
experience.

Quality Educator Interactive, https://qei.wisconsin.edu
(Mar. 17, 2007).
A second dimension of teaching is Shared Inquiry.
In the teaching of History, English, and current
events teachers employ a disciplines seminar
format as the means for students to explore the
significant ideas of these domains. In open
discussions based on the reading of classic
literature or original source material, students
learn to formulate their own interpretive
questions, support their own ideas through
specific reference to the readings, and respond
thoughtfully to the opinions of others. The
teacher acts as the facilitator of discussion in
Shared Inquiry, rather than as the final arbiter
of thought. Outside of the discussion students
are encouraged to explore their own thoughts and
feelings through a variety of means including
journalizing, poetry and story writing, and other
creative endeavors.

The Elizabeth Ann Clune Montessori School of Ithaca, Middle
School Program www.eacmsi.org/middle.html (Feb. 28, 2007).
It might be surprising to learn that some studies
show students acquire information just about as
well with a teacher as without one. (Indeed,
teachers learn the same way students do.) These
are some general reasons why our Eastern
philosophy course is not a course designed to be
primarily informational, instead the class is more
adequately described as an introduction to shared
inquiry into the clarification of life’s values.

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Application Serial No. 78775079
I think you will find that learning, inquiry, and
problem solving are most enjoyable human
experiences. I expect to learn a great deal from
our shared inquiry. You and I both have a
personal stake in the quality of the class and
personal responsibility for making it challenging.

Course Syllabus, Philosophy 312, http://philosophy.lander-
.edu/oriental/syllabus.node4.html (July 26, 2007).
You should know from the outset that the way I
teach calls upon students to “do something” rather
than hear or watch me do something. What this
means is that you will need to take responsibility
for your own learning; hold yourself accountable
for your own choices; interact, question, respond,
and introspect; deal constructively with
complexity, ambiguity, uncertainty, ambivalence,
and nuance; contribute to shared inquiry by a
community of learners; and be ever receptive to,
and resilient in, intellectual risk-taking.

Instructor Class Description, Senior Seminar, www.-
washington.edu/students/icd/B/bis/4901swatts.html (Sept. 8,
2007).
I’ve been teaching Working-Class Literature at
Pitt for 25 years. The course engages students in
shared inquiry about the nature of work, the
experience of class, and the uses of literature in
a culture like ours (now and in the past).

Nick Coles, Integrating Online Discussions Into a Literature
Course, www.pitt.edu/~ciddeweb/teachingtimes/2007/march-
/coles.html (July 19, 2007).
As noted, the examining attorney’s evidence is
consistent with the descriptions of SHARED INQUIRY set out
in the materials provided by applicant, and both are clearly
within the services identified in the application. Such use
of the term by others in the field of education supports the
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Application Serial No. 78775079
examining attorney’s contention that SHARED INQUIRY is a
well-recognized term, readily understood in the field,
describing a method of teaching, and that it is widely used
in the same manner as it is used by applicant to describe
the same services as those recited in the subject
application.
In response to the examining attorney’s first Office
action, applicant submitted the declaration of applicant’s
President, George L. Schueppert. Mr. Schueppert alleges
that he replicated the examining attorney’s Internet search
and investigated the first ten “hits.”5 Mr. Schueppert
reports that of these references, some were related to
applicant or – after being contacted by applicant – agreed
to modify their websites to give “[f]ull credit ... to
Junior Great Books” for the term SHARED INQUIRY.
On the issue of descriptiveness, the Schueppert
declaration is unconvincing for two reasons. First, it was
submitted with applicant’s December 28, 2006, response to
the first Office action. As such it does not address the
evidence submitted by the examining attorney in connection
with her March 30, 2007, and September 28, 2007, Office

5 While it is not entirely clear, the websites discussed by Mr.
Schueppert appear to focus on the examining attorney’s search
rather than the evidence submitted in support of the examining
attorney’s refusal. As a result, Mr. Schueppert discusses some
websites which were not submitted by the examining attorney, and
does not discuss some which were, including pages from the
websites of institutions such as Yale, the University of
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Application Serial No. 78775079
actions. Although Mr. Schuppert’s investigation and actions
have resolved or clarified some of the evidence in
applicant’s favor, there is no question that there remain
numerous third party uses of SHARED INQUIRY in connection
with educational services.
Second, and more importantly, even if the Schueppert
declaration were successful in demonstrating that most or
all Internet references to “shared inquiry” were references
to applicant and its educational services, it would not
necessarily demonstrate that the mark is not descriptive:
The fact that applicant may be the first and only
user of this highly descriptive or generic
designation does not justify registration if the
term projects only merely descriptive
significance. In re Central Counties Bank, 209
USPQ 884, 888 (TTAB 1981). What we said there ...
is also applicable here:

[A]ny doubt as to the descriptive nature of
the term is or would be readily dispelled by
applicant's own literature in which the
service is described and in which the
notation is used, as exemplified by the
abstracts therefrom quoted above. That is,
applicant's own promotional literature serves
to ingrain in the reader the descriptive
character of the mark rather than to project
the impression that it serves as an
indication of origin for applicant's service
alone.

Nat’l Shooting Sports Found., 219 USPQ at 1020.
Applicant argues that it was the first to use the term,
and there is no indication that this is not so. But first
use of a term which is or becomes descriptive of applicant’s

Washington, and the University of Pittsburgh.
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Application Serial No. 78775079
services counts for little. The focus instead is on the
current perception of the term to the relevant consumer.
Given the large number of descriptive uses of the term by
third parties as well as applicant’s own descriptive use of
the term, we have no doubt that most students and educators
would immediately understand the term SHARED INQUIRY as
merely descriptive of applicant’s classes, seminars and
courses of instruction.
B. Acquired Distinctiveness
As discussed, applicant has asserted an alternative
claim to registrability under Trademark Act § 2(f), arguing
that if descriptive, its proposed mark has nonetheless
become distinctive of applicant’s educational services due
to its “substantially exclusive and continuous use [of the
mark] in commerce for at least ... five years....” In
addition to the claim of five years’ use, applicant also
submitted the declarations of sixteen third parties, as well
as the declaration of Mary L. Klein, an employee of
applicant who has served as copy editor, and is familiar
with applicant’s archives and its historical use of the term
SHARED INQUIRY. Ms. Klein’s declaration provides background
information regarding applicant’s use of the proposed mark.
1. Applicant’s Claim of Five Years’ Use
The Trademark Act provides that the USPTO may accept as
prima facie evidence of distinctiveness, applicant’s use of
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Application Serial No. 78775079
the mark for five years. Such use must be “substantially
exclusive and continuous,” and must evidence applicant’s use
of the designation “as a mark.” Trademark Act § 2(f). The
acceptance of five years’ use as prima facie evidence of
distinctiveness is not mandatory, and a declaration of five
years’ use may be insufficient if the mark appears to be
highly descriptive. “[T]he greater the degree of
description a term has, the heavier the burden to prove it
has attained secondary meaning.” In re Bongrain Int’l
Corp., 894 F.2d 1316, 13 USPQ2d 1727, 1728 n.4 (Fed. Cir.
1990); Yamaha Int’l Corp., 6 USPQ2d at 1005.
The examining attorney argues that applicant’s mark is
highly descriptive of the identified services, and that
applicant’s declaration of five years’ use of the mark is
insufficient in itself to show acquired distinctiveness.
We agree. As noted above, the record evidence
demonstrates that applicant and others have long used the
asserted mark descriptively. While the standard for proving
acquired distinctiveness is a preponderance of the evidence,
the quantity of evidence necessary to demonstrate
distinctiveness necessarily increases in proportion to the
descriptiveness of the mark.
a. Substantially Exclusive
In order to establish that its designation has acquired
distinctiveness, an applicant must demonstrate that it has
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Application Serial No. 78775079
made substantially exclusive use of it:
In respect of registration, there must be a
trademark, i.e., purchasers in the marketplace
must be able to recognize that a term or device
has or has acquired such distinctiveness that it
may be relied on as indicating one source of
quality control and thus one quality standard.
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.
Levi Strauss & Co. v. Genesco, Inc., 742 F.2d 1401, 222 USPQ
939, 940-41 (Fed. Cir. 1984); Target Brands Inc. v. Hughes,
85 USPQ2d 1676, 1682 (TTAB 2007).
It is clear from the evidence of record that
applicant’s use of SHARED INQUIRY is not “substantially
exclusive.” Although the law does not require absolute
exclusivity, see L.D. Kichler Co. v. Davoil, Inc., 192 F.3d
1349, 52 USPQ2d 1307 (Fed. Cir. 1999), the numerous third-
party uses demonstrated by the evidence of record leave no
doubt that a substantial number of others have used and are
using the proposed mark to describe identical educational
services.
We have considered in this regard the fact that after
issuance of the first Office action, applicant contacted
several such third parties and was successful in some cases
in requesting that the term SHARED INQUIRY be removed from
their website, or that applicant be given “credit” for the
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Application Serial No. 78775079
term. But applicant’s efforts are too little, too late.
Given the number of third-party uses of the term,
acknowledgement by several such users that applicant was the
originator of the SHARED INQUIRY method and designation is
insufficient to show that the public has come to understand
the mark as a source indicator for applicant’s own services.
b. Use as a Trademark
In addition to showing substantially exclusive use of a
term, an applicant under Trademark Act § 2(f) must also
demonstrate that such use was actually use as a trademark.
In re Craigmyle, 224 USPQ 791, 793 (TTAB 1984)
(registrability under §2(f) not established by sales over a
long period of time where there was no evidence that the
subject matter had been used as a mark). This is because if
applicant uses the designation in a descriptive manner,
there is no reason to believe that the relevant consumers
will perceive the designation to be a mark, even if such use
is exclusive.
As we remarked when considering applicant’s evidence
above, applicant’s own use of SHARED INQUIRY is largely
descriptive. In many cases, the term is actually defined by
applicant in detail, and is not used in such a way as to
suggest to the reader that it is asserted as a trademark.
Applicant’s own definition of the mark is consistent with
the meaning of the words themselves, and refers to a
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Application Serial No. 78775079
particular educational method, rather than to the source of
applicant’s services. Thus, even if applicant’s use of the
mark were “substantially exclusive and continuous,” we would
nevertheless be constrained to find applicant’s § 2(f)
showing insufficient, because as it is used by applicant,
SHARED INQUIRY would not be perceived as a trademark.
2. Declarations in Support of Acquired
Distinctiveness

As indicated, applicant submitted the declarations of
sixteen third parties, mostly educators or educational
publishers who are familiar with applicant’s services, who
in many cases have worked with or for applicant in
developing its services. Each of the declarants lavishes
praise on the success of the SHARED INQUIRY method in
teaching, and on applicant’s services in particular. The
declarants indicate that they associate SHARED INQUIRY with
applicant and each declaration includes the following
paragraph (or a variation):
For these reasons, and based on my own personal
observation and experience in my filed, it is my
opinion that the term Shared Inquiry is generally
understood by people in the publishing industry
and in education as referring to the proprietary
teaching and learning method originated and
developed by the Great Books Foundation.

While we have carefully considered applicant’s
declarations, we nonetheless do not believe that they are
sufficient – alone or in conjunction with other evidence –
to establish the acquired distinctiveness of the proposed
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Application Serial No. 78775079
mark. First, many of the declarants focus primarily on the
success of applicant’s teaching method. While this praise
may be well-deserved, it is simply beside the point. The
question is not whether applicant’s services are effective
in teaching, but whether the relevant segment of the public
perceives SHARED INQUIRY to be an indicator of source,
rather than a descriptive indicator of the type of
educational services.
Second, as indicated by the quoted paragraph, the
declarants place reliance on their belief that the proposed
mark refers to “the proprietary teaching and learning method
originated and developed by” applicant. In doing so, they
emphasize their understanding that this particular teaching
method and the term SHARED INQUIRY originated with
applicant. In academics, great weight is often placed on
crediting those who originate ideas. But in emphasizing
this point, these educators indicate a misunderstanding
about trademark law. As discussed above, the question we
must decide is not whether applicant is the originator and
developer of what appears to be an excellent teaching model,
nor is it whether applicant was the first to use the term
SHARED INQUIRY in connection with such services. Instead,
the only issue is whether that term is descriptive of such
services and if so, whether consumers nonetheless have come
to view the mark as an indicator of source.
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Application Serial No. 78775079
Third, the declarations each refer to applicant’s
“proprietary teaching and learning method.” However, there
is no evidence that applicant’s method is “proprietary” see
note 2, supra, and it is clear from the record that others
have employed essentially the same techniques in the
classroom.
While we have fully considered applicant’s
declarations, we conclude that they provide weak support, at
best, for applicant’s position that its mark has acquired
distinctiveness. Given the nature of the mark and the
record evidence of third-party use, applicant’s declarations
are insufficient to meet its burden under Trademark Act
§ 2(f).
III. Conclusion
After careful consideration of the record, we conclude
that applicant’s mark is merely descriptive of the
identified services. Trademark Act § 2(e)(1). We further
conclude that applicant has not demonstrated that it is
entitled to a registration on the basis of acquired
distinctiveness. Trademark Act § 2(f).
Decision: The refusal to register is affirmed.
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