Twin Associates, LC dba EVitamins

Trademark Trial and Appeal Board

Nov 24, 2009

No. 77443720 (T.T.A.B. Nov. 24, 2009)

Mailed:
24 November 2009

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Twin Associates, LC dba EVitamins
________

Serial No. 77443720
_______

Thomas Randazzo, Esq. for Twin Associates, LC dba
EVitamins.

Steven W. Jackson, Trademark Examining Attorney, Law Office
107 (J. Leslie Bishop, Managing Attorney).
_______

Before Bucher, Drost, and Zervas, Administrative Trademark
Judges.

Opinion by Drost, Administrative Trademark Judge:

On April 9, 2008, applicant Twin Associates, LC dba
EVitamins applied to register the term EVITAMINS (in
standard character form) on the Principal Register for
services identified as “mail order catalog services
featuring vitamins and dietary supplements; on-line retail
store services featuring vitamins and dietary supplements”
in Class 35. The application alleges a date of first use
anywhere of March 13, 1999 and a date of first use in
THIS OPINION IS NOT A
PRECEDENT OF THE
TTAB
Ser. No. 77443720
2
commerce of June 9, 2003. Applicant has provided an
amendment to the application that seeks registration under
the provision of Section 2(f) of the Trademark Act. 15
U.S.C. § 1052(f).
The examining attorney has refused to register
applicant’s mark on the grounds that “the proposed mark is
generic” (brief at unnumbered p. 3) and the examining
attorney found that applicant’s “allegation of five years’
use coupled with a declaration statement, news stories and
other studies, consumer satisfaction surveys, and various
website captions are insufficient in this case because the
mark, herein, is generic as used in connection with the
identified services” (Brief at 14). 15 U.S.C. § 1052(f).
In addition to these issues, the examining attorney
initially refused to register applicant’s mark on the
ground that it is merely descriptive and applicant, even
while submitting its declaration of acquired
distinctiveness, has continued to argue that its mark is
not merely descriptive. See Response dated January 19,
2009 at 5 (“Alternatively, if the Examiner is not persuaded
to withdraw his ‘merely descriptive’ refusal for
registration, then the mark should be allowed to proceed to
registration on the Principal Register pursuant to Section
2(f)”); and Applicant’s Brief at 7. Therefore, we view
Ser. No. 77443720
3
applicant’s offer to seek registration under the provision
of Section 2(f) as an alternative argument and the
descriptiveness of applicant’s mark remains an issue in
this appeal. TMEP § 1212.02(c) (6th ed. Oct. 2009) (“An
applicant may argue the merits of an examining attorney’s
refusal and, in the alternative, claim that the matter
sought to be registered has acquired distinctiveness under
§2(f). Unlike the situation in which an applicant
initially seeks registration under §2(f) or amends its
application without objection, the alternative claim does
not constitute a concession that the matter sought to be
registered is not inherently distinctive”).1
The examining attorney has also objected to
applicant’s brief to the extent that “with its brief [p.
14] an additional list of registrations that were not
properly made of record” was submitted. Examining
Attorney’s Brief at 2. On page 14 of applicant’s brief,
there is a list of sixteen marks: EFAUCETS, EINSURANCE,
EHEALTH, EMEDICAL, ECARD, EBILLING, EPHARMACY, EHELP,
ESERVICE, ETRAVEL, EPLANS, ESCIENCE, EFLORIST, ENEWS,
EDENTIST and EMEDICINE. This identical list appeared in

1 “The generic name of a thing is in fact the ultimate in
descriptiveness.” H. Marvin Ginn Corp. v. Int’l Ass’n of Fire
Chiefs, Inc., 782 F.2d 987, 228 USPQ 528, 530 (Fed. Cir. 1986).
Ser. No. 77443720
4
applicant’s January 19, 2009 response at 4-5 and
applicant’s April 9, 2009 response at 3. The examining
attorney’s February 23, 2009 Office action (p. 3) noted
that applicant “has made reference to a number of third-
party registrations… Third-party registrations are not
conclusive on the issue of descriptiveness or genericness.”
Normally, we do not consider a list of registrations,
particularly one submitted with an appeal brief. See,
e.g., In re Duofold, Inc., 184 USPQ 638, 640 (TTAB 1974)
(“[T]he submission of a list of registrations is
insufficient to make them of record”); In re First Draft
Inc., 76 USPQ2d 1183, 1192 (TTAB 2005) (“Submission of the
TARR printout with its appeal brief, however, is an
untimely submission of this evidence”). However, in this
case, the examining attorney did not advise applicant of
the proper way to make third-party registrations of record.
Under these circumstances, we consider the examining
attorney’s objection to this type of evidence to be waived.
In re Broyhill Furniture Industries, 60 USPQ2d 1511, 1513
n.3 (TTAB 2001):
Although the Examining Attorney, in her brief, has
objected to such evidence “as being unsupported” in
that a mere listing of third-party registrations “is
not credible evidence of the existence” thereof and
that copies of such registrations or their electronic
equivalents, in the form of printouts from the
electronic records of the United States Patent and
Ser. No. 77443720
5
Trademark Office, need to be submitted in order to
make the registrations properly of record,” the
objection is considered to have been waived since it
was not interposed in response to applicant’s reliance
on such listing in its response to the initial Office
Action.

See also TBMP § 1207.03 (2d ed. rev. 2004):
Copies of third-party registrations that are submitted
with an applicant’s brief may be considered in certain
circumstances, even if the examining attorney objects
to the registrations or does not discuss them in the
examining attorney’s brief. If the applicant, during
the prosecution of the application, provided a listing
of third-party registrations, without also submitting
actual copies of the registrations, and the examining
attorney did not object or otherwise advise applicant
that a listing is insufficient to make such
registrations of record at a point when the applicant
could cure the insufficiency, the examining attorney
will be deemed to have waived any objection as to
improper form.

We add that, while we will consider the objection to
be waived, we “will not consider more than the information
provided by applicant. Thus, if applicant has provided
only a list of registration numbers and marks, the list
will have very limited probative value.” TBMP § 1208.02.
In effect, there is little weight that we can give this
list of marks with no additional information. We have no
information about the status of the marks and we cannot
confirm that they are in fact registered. See, e.g.,
Action Temporary Services Inc. v. Labor Force Inc., 870
F.2d 1563, 10 USPQ2d 1307, 1309 (Fed. Cir. 1989) (“[A]
cancelled registration does not provide constructive notice
Ser. No. 77443720
6
of anything”); In re Phillips-Van Heusen Corp., 63 USPQ2d
1047, 1049 n.4 (TTAB 2002) (“While applicant also submitted
a copy of a third-party application …, such has no
probative value other than as evidence that the application
was filed”). Indeed, without a registration number, it
would be difficult to discern which of several possible
registrations for some of the marks applicant may be
referencing.
However, we can respond to applicant’s rhetorical
question regarding one of the sixteen marks in applicant’s
list: “Or why would ETRAVEL not be deemed generic with
respect to any travel agent offering on-line travel-related
services?” Applicant’s Brief at 14. The board addressed
this specific mark in an earlier case and answered
applicant’s general question concerning why “e-” formative
marks on the register (assuming they were made of record),
including the ETRAVEL mark, did not mean that an
applicant’s mark was not merely descriptive. In re
Styleclick.com Inc., 57 USPQ2d 1445, 1447-48 (TTAB 2000):
We have reviewed the numerous third-party
registrations of record which issued on the Principal
Register. The marks which are most analogous to
applicant’s include the following: E-STAMP for
“postage and mailing system computer software”; E-
TRAVEL for “travel information services, namely
providing travel information by means of computer data
base”; E-MORTGAGE for “computerized loan approval
Ser. No. 77443720
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services, namely, on-line financing and mortgage
banking services wherein a borrower submits an
application for a mortgage loan via a computer on-line
service or a global computer network”; E-FARES for
“providing computerized travel information, namely,
airline information retrieval services”; and E-INSURE
for “providing insurance information concerning
insurance products and services.”
These registrations offer little help in making a
determination of the merits in this appeal. While
uniform treatment under the Trademark Act is an
administrative goal, our task in this appeal is to
determine, based on the record before us, whether
applicant's mark is merely descriptive. As often
noted by the Board, each case must be decided on its
own merits. We are not privy to the records in the
files of the cited registrations and, moreover, the
determination of registrability of particular marks by
the Trademark Examining Groups cannot control the
result in another case involving a different mark for
different goods and/or services.

Having said the above, it certainly does appear that
the Office has in the past not always taken the same
position with respect to marks of the nature of
applicant’s as the Examining Attorney urges in the
present case. Office practice has resulted in
inconsistent treatment of “e-” prefix marks which are
similar in nature to applicant’s. In trying to
understand this situation, we would make the point
that, with each passing day, the Internet becomes more
pervasive in American daily life. Many Internet
words, such as “e-mail” and “e-commerce,” have made
their way into the general language. We note that
most of the third-party registrations relied upon by
applicant were issued in 1997-1998, with a few issuing
in 1999. While, by most standards, one to three years
in the past would be viewed as “recent,” a year or two
is an eternity in “Internet time,” given the rapid
advancement of the Internet into every facet of daily
life (most especially, e-mail). Only “recently,” the
Internet meaning of the “e-” prefix may have been
known only by those few who were then accessing the
Internet. We have no doubt that in the year 2000, the
meaning of the “e-” prefix is commonly recognized and
understood by virtually everyone as a designation for
the Internet.
Ser. No. 77443720
8
Descriptiveness
We now address the question of whether the mark
EVITAMINS is merely descriptive. A mark is merely
descriptive if it immediately conveys “knowledge of a
quality, feature, function, or characteristics of the goods
or services.” In re Bayer Aktiengesellschaft, 488 F.3d
960, 82 USPQ2d 1828, 1831 (Fed. Cir. 2007). See also In re
Gyulay, 820 F.2d 1216, 3 USPQ2d 1009, 1009 (Fed. Cir.
1987); and In re Quik-Print Copy Shops, Inc., 616 F.2d 523,
205 USPQ 505, 507 (CCPA 1980). To be “merely descriptive,”
a term need only describe a single significant quality or
property of the goods. Gyulay, 3 USPQ2d at 1009 (Fed. Cir.
1987) and Meehanite Metal Corp. v. Int’l Nickel Co., 262
F.2d 806, 120 USPQ 293, 294 (CCPA 1959). Mere
descriptiveness of a mark is not considered in the
abstract, but in relation to the particular goods or
services for which registration is sought. In re Abcor
Development Corp., 588 F.2d 811, 200 USPQ 215, 218 (CCPA
1978).2

2 Applicant argues that the examining attorney “has failed to
meet his burden by clear evidence.” Brief at 7. While the
examining attorney has the burden to show that applicant’s mark
is merely descriptive, the examining attorney is not required to
show that the mark is merely descriptive by clear evidence. See
Bayer, 82 USPQ2d at 1831 (“The examining attorney has the burden
to establish that a mark is merely descriptive”).
Ser. No. 77443720
9
The examining attorney has submitted dictionary
evidence regarding the following terms:
“e-” – The prefix “e-.” with or without the hyphen,
may be attached to anything that has moved from the
physical world to its electronic alternative, such as
“e-mail” and “e-commerce.” “E” words have become
synonymous with the Internet.
www.thefreedictionary.com

Vitamin – organic substance essential to nutrition:
an organic substance essential in small quantities to
the metabolism in most animals. Vitamins are found in
minute quantities, in some cases are produced by the
body, and are also produced synthetically.
http://encarta.msn.com

The examining attorney has also submitted evidence
that vitamins are sold online.
Here are some considerations when buying discount
vitamins on the internet.
www.welshhealth.com

You can find most major brands of vitamins at your
local drug or grocery store. In addition, many
companies sell vitamins on the Internet.
http://ezinearticles.com

Purchase your vitamins on the Internet: As a general
rule of thumb, buying on the Internet can save you
some big bucks.
www.savingadvice.com

Welcome to our Vitamin Store Directory. Here you can
find online vitamin stores selling discount vitamins
and natural vitamin supplements.
www.savewithgreen.com

Vitamins and Minerals
www.mydiscountvitaminsonline.com

Vitamin Stores Online
There are many vitamin stores online that offer much
lower prices than their offline competitors…
Ser. No. 77443720
10
Vitacost.com…
DrWhitaker.com…
Xtend-Life.com…
www.quick-weight-loss-methods.com

Applicant’s services include “on-line retail store
services featuring vitamins and dietary supplements.”
Applicant argues that its “services, in their totality, are
on-line selling of vitamins, herbal products, body-building
supplements, bath and beauty products, pet products, sexual
aids, anxiety remedies, and weight loss products, with
vitamins being just one of many products offered by
Applicant.” Brief at 8. “Our predecessor court… has
stated that ‘registration should be refused if the mark is
descriptive of any of the goods for which registration is
sought.’” In re Stereotaxis Inc., 429 F.3d 1039, 77 USPQ2d
1087, 1089 (Fed. Cir. 2005), quoting, In re Richardson Ink
Co., 511 F.2d 559, 185 USPQ 46, 47 (CCPA 1975). See also
In re Analog Devices Inc., 6 USPQ2d 1808, 1810 (TTAB 1988),
aff’d, 10 USPQ2d 1879 (Fed. Cir. 1989) (unpublished).
While vitamins are not the only product that applicant’s
online store sells, it appears to be one of the featured
items. See, e.g., Michigan Muscle & Fitness (eVitamins –
Michigan’s Largest Online Vitamin and Supplement
Superstore”). We point out that even if vitamins were not
the principal or featured items of applicant’s online
Ser. No. 77443720
11
store, a mark that describes items that are sold as part of
the identified retail services would likely still be merely
descriptive. In re Pencils, Inc., 9 USPQ2d 1410, 1411
(TTAB 1988) (“We agree with applicant that the sale of
pencils is not the central characteristic of applicant’s
services. Nevertheless, pencils are significant
stationery/office supply items that are typically sold in a
store of applicant’s type, that is, a stationery and office
supply store. While applicant's stores may carry a variety
of products, pencils are one of those products, and, thus,
the term ‘pencils’ is merely descriptive as applied to
retail stationery and office supply services”).
We add that the “fact that applicant may be the first
and possibly the only one to utilize this notation in
connection with its services cannot alone alter the basic
descriptive significance of the term and bestow trademark
rights therein.” In re Gould, 173 USPQ 243, 245 (TTAB
1972). See also Styleclick.com, 57 USPQ2d at 1448 (TTAB
2000) (“That applicant may be the first or only entity
using E FASHION is not dispositive”).
In this case, when we consider the mark in its
entirety, we are convinced that when prospective purchasers
encounter the mark EVITAMINS for the online sale of
vitamins, they will immediately understand that it merely
Ser. No. 77443720
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describes that applicant’s services involve selling
vitamins on the internet. Styleclick.com., 57 USPQ2d at
1448 (“In sum, ‘e-,’ when used as a prefix in the manner of
applicant's mark, has the generally recognized meaning of
‘electronic’ in terms of computers and the Internet. When
this non-source-identifying prefix is coupled with the
descriptive word ‘fashion,’ the mark E FASHION, as a whole,
is merely descriptive for applicant’s goods and/or
services”). See also In re SPX Corp., 63 USPQ2d 1592, 1596
(TTAB 2002) (“Nor does the addition of the prefix ‘E-’
change the merely descriptive significance of the mark as a
whole. The dictionary definitions submitted by the
Examining Attorney show that this prefix indicates the
electronic or internet nature of an item or service”).
Therefore, we find that applicant’s mark EVITAMINS is
merely descriptive when used in association with services
that include selling vitamins online.
Genericness
When a proposed mark is refused registration as
generic, the examining attorney has the burden of proving
genericness by “clear evidence.” In re Merrill Lynch,
Pierce, Fenner & Smith, Inc., 828 F.2d 1567, 4 USPQ2d 1141,
1143 (Fed. Cir. 1987). “The critical issue in genericness
cases is whether members of the relevant public primarily
Ser. No. 77443720
13
use or understand the term sought to be protected to refer
to the genus of goods or services in question.” H. Marvin
Ginn, 228 USPQ at 530. The Federal Circuit went on to
explain that:
Determining whether a mark is generic therefore
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. See also In re 1800Mattress.com IP, LLC., No. 2009-
1188, slip op. at 5 (Fed. Cir. Nov. 6, 2009).
Regarding the first factor, we agree with applicant
that “the genus of the goods and/or services at issue is
undisputed to be the sale of vitamins and vitamin-related
products.” Applicant’s Brief at 10.
“Next, we must determine the relevant public for
applicant's goods.” In re Active Ankle Systems Inc., 83
USPQ2d 1532, 1536 (TTAB 2007). Here, the evidence shows
that the relevant purchasers of online retail vitamin store
services would be the general public. The question now is
whether members of the relevant public would understand the
term EVITAMINS to refer to that genus. Marvin Ginn, 228
USPQ at 530. “Evidence of the public’s understanding of
the term may be obtained from any competent source, such as
purchaser testimony, consumer surveys, listings in
Ser. No. 77443720
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dictionaries, trade journals, newspapers, and other
publications.” Merrill Lynch, 4 USPQ2d at 1143. See also
In re Reed Elsevier Properties Inc., 482 F.2d 1376, 82
USPQ2d 1378, 1381 (Fed. Cir. 2007) (LAWYERS.COM held
generic):
Moreover, in determining what the relevant public
would understand LAWYERS.COM to mean, the board
considered eight websites containing “lawyer.com” or
“lawyers.com” in the domain name, e.g.,
www.massachusetts-lawyers.com, www.truckerlawyers.com,
and www.medialawyer.com. It discussed the services
provided by these websites in order to illuminate what
services the relevant public would understand a
website operating under Reed’s mark to provide. These
websites are competent sources under In re Merrill
Lynch, 828 F.2d at 1570, and they provide substantial
evidence to support the board’s finding.

The examining attorney argues that the “Board has
repeatedly held that when the ‘e’ prefix, with or without
the hyphen, is coupled with a generic word or term for
electronic goods and/or services, then the entire mark is
generic.” Brief at 7. The examining attorney relies on re
Int’l Business Machines Corp., 81 USPQ2d 1677 (TTAB 2006)
(ESERVER generic for computer hardware and operating
software that allow network connectivity) and Continental
Airlines Inc. v. United Air Lines Inc., 53 USPQ2d 1385
(TTAB 1999) (ETICKET generic for computerized reservation
and ticketing of transportation services). However, in
those two cases, there was significant use of the terms
Ser. No. 77443720
15
ESERVER or electronic server and ETICKET or electronic
ticket by others. Int’l Business Machines, 81 USPQ2d at
1683 (“The evidence discussed above includes strong
evidence from a variety of sources that ‘eserver’ or ‘e-
server’ is a server with Internet applications”);
Continental, 53 USPQ2d at 1393 (“These articles evidence
widespread use and understanding of ‘e-ticket’ and its
variations as generic names for a class of airline
ticketing and reservation services”).
We point out that a term may be generic even if
applicant is the only entity using the term. Clairol, Inc.
v. Roux Distributing Co., 280 F.2d 863, 126 USPQ 397, 398
(CCPA 1960)(“The exhibits and testimony convince us that
the only significance of ‘hair color bath’ to the consuming
public is that these words are the generic name for the
product and that as such they do not indicate the source or
origin of the goods… [e]ven though ‘color bath’ may have
been a novel way of describing a liquid for coloring
hair”); and In re Central Sprinkler Co., 49 USPQ2d 1194,
1199 (TTAB 1998) (“We agree with the Examining Attorney
that if a purchaser were seeking to buy sprinklers for an
attic, it would be reasonable to refer to such products as
‘attic’ sprinklers. The fact that applicant may be the
first or the only one using ATTIC in connection with
Ser. No. 77443720
16
sprinklers is not dispositive”). Furthermore, we can
consider the individual terms in the mark to determine if
the entire mark is generic. See In re Hotels.com LP, 573
F.3d 1300, 91 USPQ2d 1532, 1535 (Fed. Cir. 2009) (“We agree
with the TTAB that for the mark here at issue [HOTELS.COM],
the generic term ‘hotels’ did not lose its generic
character by placement in the domain name HOTELS.COM”).
However, we have relatively little evidence in this
case to show that the term EVITAMINS is generic. We merely
have the fact that applicant sells vitamins online and that
“e-” is a term that is defined as referring to the
electronic equivalent of some thing or service. We have no
evidence that the term or even an equivalent term is used
to refer to applicant’s services or similar services. In
order to find a term to be a generic term, we need clear
evidence. Under this heightened standard, we hesitate to
find that EVITAMINS is a generic term for online retail
stores services selling vitamins. Therefore, we reverse
the examining attorney’s refusal to register the mark on
the ground that the mark is generic. In re
Steelbuilding.com, 415 F.3d 1293, 75 USPQ2d 1420, 1423
(Fed. Cir. 2005) (“That evidence shows that “steel
building” is generic, but does not address directly the
composite term STEELBUILDING”).
Ser. No. 77443720
17
Acquired Distinctiveness
The last issue is applicant’s claim that its mark,
which we have held not to be generic, has acquired
distinctiveness. On this issue, applicant has the burden
of proving that its mark has acquired distinctiveness. In
re Hollywood Brands, Inc., 214 F.2d 139, 102 USPQ 294, 295
(CCPA 1954)(“[T]here is no doubt that Congress intended
that the burden of proof [under Section 2(f)] should rest
upon the applicant”). “[L]ogically that standard becomes
more difficult as the mark’s descriptiveness increases.”
Yamaha Int’l Corp. v. Hoshino Gakki Co., 840 F.2d 1572, 6
USPQ2d 1001, 1008 (Fed. Cir. 1988). In this case,
applicant’s mark is EVITAMINS for services that include the
online retail store services featuring vitamins. Inasmuch
as the definition of the term “e-” includes providing the
electronic alternative of something and that “e-” is
“synonymous with the Internet,” we conclude that
applicant’s mark is highly descriptive for its services of
selling vitamins online or on the internet. As such,
applicant has a higher burden to show that its mark has
acquired distinctiveness.
Ser. No. 77443720
18
Applicant has submitted evidence to show that its mark
has acquired distinctiveness or that it is not generic.3
This evidence includes: It “has used the EVITAMINS mark in
connection with its business for over 5 years.” Wicks dec.
¶ 4. It has the following advertising expenditures (Id.
¶ 5):
2005 - $55,000
2006 - $136,000
2007 - $165,000
2008 - $70,000

Additionally, applicant records 4,000,000 to 6,000,000
visitors to its website each month and that it has
advertised in such magazines as Muscle & Fitness Magazine,
Michigan Muscle, Crain’s Detroit Business,4 and First
Magazine and also on various search engines (Yahoo!
Marketing, PriceGrabber.com, and Google).5 Id. ¶¶ 7-9.
We point out that applicant’s advertising figures are
relatively modest. Furthermore, there is no context for
the sales or advertising figures. Even sales figures
without a context are not very persuasive. Target Brands

3 See Int’l Business Machines, 81 USPQ2d at 1684 n.11 (TTAB 2006)
(“However, because in determining whether a term is generic we
must look to all the evidence of record, including evidence of
acquired distinctiveness, we have considered the evidence for
this purpose”).
4 This article indicates that applicant had $3.8 million in
sales.
5 The fact that applicant advertises in its own “eVitamins House
Catalog,” without additional evidence, is not particularly
significant.
Ser. No. 77443720
19
Inc. v. Hughes, 85 USPQ2d 1676, 1681 (TTAB 2007) (emphasis
added) (“The sales figures for 14 years, standing alone and
without any context in the trade, are not so impressive as
to elevate applicant’s highly descriptive designation to
the status of a distinctive mark”). See also In re Noon
Hour Food Products Inc., 88 USPQ2d 1172, 1181 (TTAB 2008)
(“Applicant has provided no information about the volume of
its sales under this alleged mark, the amount of money that
applicant has expended in promoting its cheese products
under the designation sought to be registered, or what
market share it has for its version of a Swedish, farm-
type, cow’s-milk cheese sold in the United States.
Finally, applicant has provided no direct evidence that the
majority of the relevant consumers of its cheese view the
term ‘Bond-Ost’ as a source-identifier”). Even if these
sales and advertising figures were more significant, the
board has held that:
Applicant’s long use and revenues suggest that
applicant has enjoyed a degree of business success.
Nonetheless, this evidence demonstrates only the
popularity of applicant’s services, not that the
relevant customers of such services have come to view
the designation LENS as applicant’s source-identifying
service mark. See In re Bongrain International Corp.,
894 F.2d 1316, 13 USPQ2d 1727 (Fed. Cir. 1990); and In
re Recorded Books Inc., 42 USPQ2d 1275 (TTAB 1997).

In re Lens.com Inc., 83 USPQ2d 1444, 1448 (TTAB 2007). See
also In re Howard S. Leight and Associates Inc., 39 USPQ2d
Ser. No. 77443720
20
1058, 1060 (TTAB 1996) (“The evidence submitted by
applicant (sales figures, advertising expenditures and
customer letters) demonstrates the popularity of
applicant’s coral earplugs, not that the relevant consumers
have come to view coral as applicant’s trademark”).
Regarding the number of visitors to its website, we
are not persuaded that this evidence is strong support for
applicant’s argument that its mark has acquired
distinctiveness. See DeGidio v. West Group Corp., 355 F.3d
506, 69 USPQ2d 1538, 1543 (6th Cir. 2004) (In discounting
affidavits from visitors to a website, the court noted:
“Mere use of a website does not equal identification with a
particular provider”). See also 555-1212.com Inc. v.
Communication House Int’l Inc., 157 F.Supp.2d 1084, 59
USPQ2d 1453, 1459 (N.D. Cal. 2001) (“The Media Metrix
report only provides that a large number of Internet users
visited plaintiff’s website. It does not provide any
reasonable inference to conclude that these users perceive
plaintiff’s domain name as a brand name instead of a merely
descriptive Internet address”). Similarly here, we have no
evidence to conclude how these visitors arrived at
applicant’s website and how many of them recognize
applicant’s term as a trademark.
Ser. No. 77443720
21
Applicant also argues that “Bizrate.com states on its
website that over 10,000 customers have rated the EVITAMINS
business since 2000.” Brief at 6. Again, we lack a
context for applicant’s evidence. Also, despite the fact
that 10,000 people have reviewed applicant’s site, it is
not clear that they recognize applicant’s EVITAMINS mark as
a trademark. The comments at the website are not very
helpful in determining whether the people responding to the
questions recognized applicant’s mark as a service mark.
See Response dated January 19, 2009, attachments (“Good
experience,” “Great,” “I ordered the products on Dec. 6 and
have not yet received them yet! It took almost two weeks
before I received mail that they had been shipped. Most
companies ship within 24-48 hours,” and “I would like to
know why the prices that I purchased online are different
from the ones advertised in the [catalog]”). Accord
Steelbuilding.com, 75 USPQ2d at 1424 (“The Board considered
applicant’s Internet poll on name recognition… The poll did
not attempt to prevent visitors from voting more than once.
The poll did not prevent interested parties, such as
friends or associates or even employees of the applicant,
from voting multiple times to skew the results. In sum,
this poll does not even remotely follow the precepts of
standard trademark name-recognition polls”). Therefore, we
Ser. No. 77443720
22
do not find that this evidence is very persuasive evidence
that applicant’s mark has acquired distinctiveness.
In addition, applicant argues that its coupons are
available along with other retailers such as Macy’s and
Target at couponcabin.com. Applicant maintains that to
“have the name EVITAMINS shown along with these other well-
known retailers and household names provides further
support for Applicant’s contention that the EVITAMINS mark
identifies and distinguishes EVITAMINS as a source of goods
and has acquired distinctiveness.” Reply Brief at 6.
However, the simple fact that applicant’s coupons are
available at the same website where the coupons of well-
known retailers are also available provides little support
for applicant’s argument anymore than the fact that a
person’s book is available in the same library or bookstore
as the works of Shakespeare demonstrates that the person is
recognized as a well-known author.
Applicant also argues that there “has been no evidence
presented by the Examiner to show that anyone uses the mark
EVITAMINS to refer to anything other than Applicant’s
business.” Reply Brief at 3. See also Wickes declaration,
¶ 11 (“I am not aware of any other person, company, entity
or publication that has used the term EVITAMINS generically
in connection with online retail stores that sell vitamins
Ser. No. 77443720
23
or health-related products prior to the April 9, 2008
filing date of Applicant’s application”). It has attached
evidence to show that a “check of the following
competitors’ website, searching on the keyword ‘EVITAMINS’
shows conclusively that they do not refer to their products
or services generically as ‘evitamins.’” Response dated
April 9, 2009 at 3 and Exhibits 5-11. However, the fact
that applicant may be the only entity using the term does
not mean that the applied-for term has acquired
distinctiveness. Accord In re ic! berlin brillen GmbH, 85
USPQ2d 2021, 2024 (TTAB 2008) (A period of five years
substantially exclusive and continuous use held to be
“insufficient to establish acquired distinctiveness”); In
re Cabot Corp., 15 USPQ2d 1224, 1229 (TTAB 1990) (“The fact
that applicant is the first and only one in its specific
field to use this type of packaging is not persuasive”).
Ultimately, to “establish secondary meaning or
‘acquired distinctiveness,’ an applicant must show that ‘in
the minds of the public, the primary significance of a
product feature or term is to identify the source of the
product [or service] rather than the product [or service]
itself.’” In re Dial-A-Mattress Operating Corp., 240 F.3d
1341, 57 USPQ2d 1807, 1812 (Fed. Cir. 2001), quoting,
Inwood Labs., Inc. v. Ives Labs., 456 U.S. 844, 851 n.11,
Ser. No. 77443720
24
214 USPQ 1, 4 n.11 (1982). See also Steelbuilding.com, 75
USPQ2d at 1423. We add that we have considered all the
evidence of record on the issue of acquired distinctiveness
in its entirety and not just as separate pieces of
evidence. However, considering the descriptiveness of the
mark and the evidence of record, we find that applicant has
not shown that the primary significance of applicant’s mark
is to identify the source of applicant’s services.
Therefore, we conclude that applicant has not shown that
its mark has acquired distinctiveness.
Decision: The refusal to register applicant’s term
EVITAMINS on the ground that it is a generic term for the
identified services is reversed. The refusal to register
on the ground that applicant’s mark is merely descriptive
and also that applicant’s showing of acquired
distinctiveness is insufficient is affirmed.