Ad.com Interactive Media

Trademark Trial and Appeal Board

Jun 18, 2012

No. 77832668 (T.T.A.B. Jun. 18, 2012)

Mailed:
June 18, 2012

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re ad.com Interactive Media
________

Serial No. 77832668
_______

Tal Grinblat of Lewitt Hackman Shapiro Marshall & Harlan
for ad.com Interactive Media.

Thomas M. Manor, Trademark Examining Attorney, Law Office
110 (Chris A. F. Pedersen, Managing Attorney).
_______

Before Cataldo, Bergsman and Kuczma
Administrative Trademark Judges.

Opinion by Kuczma, Administrative Trademark Judge:

ad.com Interactive Media a/k/a Ad Media (“applicant”)
filed a used-based application for the mark ADMEDIA, as
amended, in standard character form, for the following
services in Class 35:
Advertising agencies; Advertising and
advertisement services; Advertising and
marketing; Advertising and publicity
services; Advertising consultation;
Advertising services, namely, cost-per-
action on-line advertising; Advertising
services, namely, promoting the books
of others in the field of law by means
of news and reviews regarding same;
Advertising via electronic media and
specifically the internet; Advertising,
marketing and promotion services;
THIS OPINION IS NOT A
PRECEDENT OF THE T.T.A.B.
Serial No. 77832668
2
Mediation of advertising; On-line
advertising services for others; Pay
per click (PPC) advertising management
services; Placing advertisements for
others; Preparation and realization of
media and advertising plans and
concepts; Preparing advertisements for
others; Providing and rental of
advertising space on the internet;
Provision of space on websites for
advertising goods and services; Rental
of advertising space on web sites;
Services of advertising agencies.

Registration was initially refused pursuant to
§ 2(e)(1) of the Trademark Act of 1946, 15 U.S.C.
§ 1052(e)(1), on the ground that the mark is merely
descriptive of applicant’s services; applicant was also
advised that the mark appeared to be generic. In response,
applicant submitted evidence of distinctiveness and sought
to amend its application to include a claim of acquired
distinctiveness under § 2(f). Applicant’s evidence of
distinctiveness was deemed to be insufficient, and the
refusal under § 2(e)(1) was maintained along with a new
refusal on the ground that the mark was generic for
applicant’s services. Applicant subsequently amended its
application to seek registration on the Supplemental
Trademark Register. The examining attorney issued a final
refusal to register the mark on the Supplemental Register
pursuant to § 23(c), 15 U.S.C. § 1091(c), on the ground
that the mark is generic for applicant’s services also
Serial No. 77832668
3
noting that registration was refused under § 2(e)(1) on the
grounds of descriptiveness.1
Issue on Appeal
The only issue on appeal is whether the term ADMEDIA
is generic for the recited services. Descriptiveness is
not an issue in this case, where applicant has already
acknowledged, by seeking registration of ADMEDIA on the
Supplemental Register, and by seeking registration under
§ 2(f), that its mark is not inherently distinctive.2
Genericness Refusal
Determining whether a mark is generic involves a two-
step inquiry: First, what is the genus of goods or

1 In his appeal brief, the examining attorney apologized and
acknowledged he erred in interchangeably referencing § 2(e)(1)
and § 23(c) and the term “descriptive” for the term “generic.”
See Examining Attorney’s Appeal Brief p. 4 (unnumbered). Despite
the examining attorney’s confusion, the grounds for the refusal
were clear as evidenced by the Issue articulated in applicant’s
appeal brief (Brief for Appellant at pp. 1-2 hereafter referred
to as “applicant’s appeal brief”). We note that applicant’s
statement of the final refusal on p. 1 of its appeal brief
erroneously includes the word “not” instead of the word “now,”
i.e., “. . . Applicant amended the application to the
Supplemental Register which is no[w] subject to the Final
refusal.”
2 Registration on the Supplemental Register is prima facie
evidence that, at least at the time of registration, the
registered mark was merely descriptive. In re Central Soya Co.,
Inc., 220 USPQ 914, 917 (TTAB 1984). By claiming distinctivness
under § 2(f), applicant conceded the descriptiveness of the mark.
See Cold War Museum, Inc. v. Cold War Air Museum Inc., 586 F.3d
1352, 92 USPQ2d 1626, 1629 (Fed. Cir. 2009) (“Where an applicant
seeks registration on the basis of Section 2(f), the mark’s
descriptiveness is a nonissue; an applicant’s reliance on Section
2(f) during prosecution presumes that the mark is descriptive.”).

Serial No. 77832668
4
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
services? H. Marvin Ginn Corp. v. International Assoc. of
Fire Chiefs, Inc., 782 F.2d 987, 228 USPQ 528, 530 (Fed.
Cir. 1986).
To deny the registration of a mark as generic, the
USPTO has the burden of “substantial[ly] showing . . .
that the matter is in fact generic . . . based on clear
evidence of generic use.” In re American Fertility
Society, 188 F.3d 1341, 51 USPQ2d 1832, 1835 (Fed. Cir.
1999); and In re Trek 2000 International Ltd., 97 USPQ2d
1106, 1108 (TTAB 2010).
1. Definition of Genus
We begin by determining the appropriate genus of
services at issue in this case. The genus proposed by the
examining attorney, i.e., “advertising services presented
and/or delivered through media,” does not encompass all of
the services recited in the application.3 The genus
proposed by applicant, “services to optimize the
distribution of advertising and provide results-based

3 Examining Attorney’s Appeal Brief p. 7 (unnumbered).
Serial No. 77832668
5
interactive marketing,” fares no better.4 While applicant
is apparently providing such services, these services are
but a narrow sliver of the advertising services recited in
its application.
Applicant’s substitute specimen consisting of a
portion of its website advertises “Cost Effective
Advertising Solutions” and indicates that applicant has
“developed an extensive list of advertising tools so that
there is an option for every type of campaign . . . Admedia
can create a successful campaign based on your needs . . .
AdMedia reporting keeps you on top of your accounts by
allowing you to track campaign results on one page.”5
Applicant’s ad that was published in the Spring 2010
issues of Search Marketing and Revenue Performance
magazines advertises the breadth of applicant’s services:
“AdMedia, the one stop shop for everything Advertising!”
explaining that “AdMedia is here with solutions to all of
your marketing problems. . . AdMedia offers a variety of
Advertising solutions that fit every size, style and budget

4 Applicant’s Appeal Brief p. 8.
5 Exhibit 3 to Declaration of Daniel Khoshnood submitted with
applicant’s 6/7/2010 Response to Office Action. Although the
substitute specimen submitted with the Khoshnood Declaration
attested that the substitute specimen was in use in commerce at
least as early as the [September 23, 2009,] filing date of the
Serial No. 77832668
6
. . . Tracking your campaign results is also made easier
than ever . . . .” Applicant’s radio commercial similarly
advertises applicant as “Your one stop source for full
service solutions is admedia.com.”6 The Declarations of
applicant’s customers state that “when [they] see the
‘AdMedia’ name, [they] recognize it as the company [they]
use to provide advertising services. To [them] the
‘AdMedia’ name signifies a dependable advertising company.”7
The foregoing evidence demonstrates the inadequacies of the
genera8 proffered by both the examining attorney and
applicant.
Accordingly, we find that the genus is appropriately
defined by the description of services recited in the
application, re-organized and condensed as follows:
Advertising agencies; and Services of
advertising agencies
Preparing and placing advertisements
for others;
Preparation and realization of media
and advertising plans and concepts;

application, it is noted that the copyright notice on the
substitute specimen is dated 2010.
6 Exhibit 1 to Declaration of Daniel Khoshnood submitted with
applicant’s 6/7/2010 response to Office Action.
7 Exhibit 2 to Declaration of Daniel Khoshnood submitted with
applicant’s 6/7/2010 response to Office Action.
8 “Genera” is the plural form of “genus.” Webster’s Third New
International Dictionary of the English Language Unabridged,
copyright 1993 by Merriam-Webster Inc.
Serial No. 77832668
7
Advertising, advertisement, marketing,
promotion and publicity services;
Advertising consultation;

On-line advertising services for
others;

Advertising services, namely, promoting
the books of others in the field of law
by means of news and reviews regarding
same;

Advertising services, namely, cost-per-
action on-line advertising;
Advertising via electronic media and
specifically the internet;
Pay per click (PPC) advertising
management services;

Providing and rental of advertising
space on the internet and websites;

Provision of space on websites for
advertising goods and services;

Mediation of advertising.
Magic Wand Inc. v. RDB Inc., 940 F.2d 638, 19 USPQ2d 1551,
1552 (Fed. Cir. 1991) (“[A] proper genericness inquiry
focuses on the description of [goods or] services set forth
the in the [application or] certificate of registration.”).
More succinctly, the genus includes “advertising,
marketing, promotion and publicity services.” As discussed
above, the record supports the appropriateness of this
genus.
Serial No. 77832668
8
2. Primary Significance to Relevant Public
Next, we must determine whether the primary
significance of applicant’s ADMEDIA mark is understood by
the relevant public primarily to refer to that genus of
services. Marvin Ginn, 228 USPQ at 530. The “relevant
public” for goods sold in the marketplace is limited to
actual or potential purchasers of the services. Magic
Wand, 19 USPQ2d at 1552-53.
Neither the examining attorney nor applicant has
defined the relevant public. Based on the evidence in the
record, the relevant public consists of those entities who
advertise and market their products and services whether
through traditional means or via online or digital methods.
This includes a variety of industries that specialize in e-
retailing such as retail, catalog, manufacturing and
consumer services. It also includes “affiliate” marketers,
i.e., website publishers, bloggers and application
developers. Based on the venues and contents of
applicant’s advertising, the trade shows which it has
attended, the substitute specimen from its website, and the
declarations from its President and three of its customers,
Serial No. 77832668
9
there is no evidence that the relevant public includes the
end consumer or the general public.9
In assessing the relevant public’s understanding or
perception of the ADMEDIA mark, evidence may be considered
from any competent source such as consumer surveys,
purchaser testimony, catalogs, and listings in
dictionaries, trade journals, magazines, newspapers and
other publications. See In re Merrill Lynch, Pierce,
Fenner and Smith Inc., 828 F.2d 1567, 4 USPQ2d 1141, 1143
(Fed. Cir. 1987); In re Northland Aluminum Products, Inc.,
777 F.2d 1556, 227 USPQ 961, 963 (Fed. Cir. 1985); and Dan
Robbins & Associates, Inc. v. Questor Corp., 599 F.2d 1009,
202 USPQ 100, 105 (CCPA 1979).
We now turn to the evidence of record to determine the
public’s understanding of the ADMEDIA mark.
a) Meaning of Mark
Any inquiry into the relevant public’s understanding
of the ADMEDIA mark requires consideration of the mark as a
whole, not from its elements separated and considered in
detail. In re Dial-A-Mattress Operating Corp., 240 F.3d
1341, 57 USPQ2d 1807, 1811 (Fed. Cir. 2001) citing Estate

9 See Declaration of Daniel Khoshnood and the accompanying
Exhibits 1-3, submitted with applicant’s June 7, 2010 response to
Office Action.

Serial No. 77832668
10
of P.D. Beckwith, Inc. v. Comm’r of Patents, 252 U.S. 538,
545-46, (1920). In the absence of any evidence that
“admedia” is a word in the English language, the examining
attorney identified the individual components of
applicant’s mark as “ad” for advertisement/advertising, and
“media,” and submitted the following definitions:

1) Encarta® World English Dictionary: North American
Edition, defines in relevant part(s):

Ad: noun. Definition: marketing (informal).
Same as advertisement.
[Mid-19th century. Shortening]

Media: noun. Definition: television, newspapers,
and radio collectively: the various means of mass
communication considered as a whole, including
television, radio, magazines, and newspapers,
together with the people involved in their
production (takes a singular or plural verb)
Definition: Plural of medium
[Early 20th century. Plural of medium]10

2) http://www.businessdictionary.com/definition/
advertising-media.html

Advertising media: various means (advertising
vehicles) such as billboards, magazines, newspapers,
radio, television and internet by which promotional
messages are communicated to the public using words,
speech and pictures.11

The examining attorney argues that these definitions
indicate that to the average consumer, the term AD MEDIA

10 See 12/8/2009 Office Action.
11 See 7/6/2010 Office Action. Applicant also submitted the same
definition from www.businessdirectory.com with its 12/23/2010
response to Office Action.
Serial No. 77832668
11
immediately conveys that “advertising media” services are
being offered by applicant. We find that the foregoing
evidence establishes that “ad” is a variant for
“advertising,” that “ad’ and “media” are generic terms, and
that “advertising media” is a well-established term. This
does not end our inquiry. Even if each of the constituent
words in a compound mark such as ADMEDIA is generic, the
combination is not generic unless the entire formulation
does not add any meaning to the otherwise generic mark. In
re Steelbuilding.com, 415 F.3d 1293, 75 USPQ2d 1420, 1421
(Fed. Cir. 2005), citing to American Fertility Society, 51
USPQ2d at 1836.
Applicant argues that the term ADMEDIA cannot be
generic because it does not appear in any dictionary.
According to applicant, if the term does not have any
meaning, it cannot be said that the public understands
applicant’s mark to be generic.12
However, the fact that a compound descriptive
word/term is not in the dictionary is not controlling on
the question of regsitrability. See In re Gould Paper
Corp., 834 F.2d 1017, 5 USPQ2d 1110, 1111-12 (Fed. Cir.

12 See Applicant’s Appeal Brief p.5; and Declaration of Nicholas
Kanter submitted with applicant’s 12/23/2010 response to Office
Action. Mr. Kanter states that he checked 5 online dictionaries
and found no listings for the term “AdMedia.”

Serial No. 77832668
12
1987); In re Orleans Wines, Ltd., 196 USPQ 516 (TTAB 1977);
and TMEP § 1209.03(b) (8th Ed.). Where a term is a
“compound word” (such as “ADMEDIA”), the USPTO may satisfy
its burden of proving a term generic by producing evidence
that each of the constituent words is generic, and that
“the separate words joined to form a compound have a
meaning identical to the meaning common usage would ascribe
to those words as a compound.” Gould, 5 USPQ2d at 1111-12.
This Gould test is applicable only to “compound terms
formed by the union of words” where the public understands
the individual terms to be generic for a genus of goods or
services, and the joining of the individual terms into one
compound word lends “no additional meaning to the term.”
American Fertility, 51 USPQ2d at 1837. Here, the joinder
of the words “ad” and “media” into a single term creates no
additional meaning, impression or nuance other than the
meaning associated with the individual words as used
together. Viewers would recognize the mark as consisting
of the separate elements AD and MEDIA. See Gould, 5 USPQ2d
at 1112 (SCREENWIPE generic for a wipe for cleaning
television and computer screens); In re Abcor Development
Corp., 588 F.2d 811, 200 USPQ 215 (CCPA 1978) (GASBADGE at
least descriptive for gas monitoring badges; three judges
concurred in finding that term was the name of the goods);
Serial No. 77832668
13
In re Cox Enterprises Inc., 82 USPQ2d 1040, 1043 (TTAB 2007)
(“THEATL is simply a compressed version of the descriptive
term THE ATL without a space between the two words. Without
the space, THEATL is equivalent in sound, meaning and
impression to THE ATL and is equally descriptive of
applicant's goods”); and In re Planalytics Inc., 70 USPQ2d
1453, 1456 (TTAB 2004) (GASBUYER merely descriptive of
providing on-line risk management services in the field of
pricing and purchasing decisions for natural gas; the
absence of the space does not create a different meaning or
perception of the term).
In further support of the genericness of ADMEDIA, the
examining attorney also introduced evidence pertaining to
the definitions of advertising terminology as set forth in
third-party websites:
Advertising Media: the means by which an advertising message is carried to potential
customers, including Internet, magazine, newspaper, radio, signage and television.
http://www.morethanjustsigns.com/glossary.htm

Advertising Agency: company that creates, prepares and places advertising in various
media, working as agent for its client (advertiser).

Advertising Media: in advertising the term “media” refers to communication vehicles
such a magazines/journals, newspapers, radio, television, billboards, direct mail and new
media (internet, SMS, etc.). Advertisers use media to convey commercial messages to
their target audiences, and depend to different degrees on advertising revenues to cover
the cost of their operations. Each advertising media has its own terminology, target
audience, measurement methods, costing structures, and auditing bodies.
http://www.myadbase.com/cgi-bin/terminology.cgi13

13 See 7/6/2010 Office Action.
Serial No. 77832668
14
The masthead of the foregoing myadbase.com site reinforces
the close association between advertising media and ad
agency services:
your advertising marketplace. myadbase.com Where Buyers
Find Advertising Media And Agency Services

In view of the foregoing, there is some basis for the
relevant public to perceive ADMEDIA as merely a common name
for advertising and marketing services rather than a mark
identifying the source of applicant’s services. Little is
left for speculation or conjecture as the compound term
ADMEDIA immediately describes the nature of the advertising
and marketing services identified in the genus.
b) Published Articles
The examining attorney also submitted portions of 30
articles from a Lexis-Nexis search evidencing generic use
of the term “ad media” consistent with the definitions of
“advertising media” in the record.14 Articles retrieved
from Lexis-Nexis are competent evidence of, inter alia,
genericness. See In re Web Communications, 49 USPQ2d 1478,
1479-80 (TTAB 1998); and In re Shiva Corp., 48 USPQ2d 1957,
1958 (TTAB 1998). These articles provide sufficient
evidence that the term “ad media” is commonly used as a
Serial No. 77832668
15
shortened form of the term “advertising media.”15 For
example:
HEADLINE: More Advertising Dollars Are Going Online
. . . Also, online advertising is much more measurable. The new technology makes it
easy to determine just how many people respond to the ad, making it easier to compute a
return on investment as compared to traditional ad media. . . . Advertisers are taking
notice and moving their ad dollars away from newspapers, radio and TV and putting a
bigger share online.”
January 1, 2008. Wisconsin State Journal (Madison, WI)
Several of the articles use the term “ad media” in
connection with related services:
HEADLINE: New Metrics for a New Age: A Battle With Complexities
. . . No matter what the final outcome, just as we will never return to watching black-
and-white TV, advertising, ad media and the metrics we use to value them will never be
the same.
April 9, 2007 Television Week
[shows relatedness of advertising, ad media and evaluating effectiveness]
HEADLINE: Better Measure for Web Ads: “. . . [in context text of discussing web ads]
Not all exposures are engaged exposures, and we want our measurement of ad media to
account for the difference. . . . “
January 14, 2008 The Washington Post
[ad media is measured]
HEADLINE: InsightExpress Appoints Marc Ryan to its Executive Committee as Senior
Vice President, Chief Research Officer
Marc has a broad understanding of the digital world and has been previously responsible
for the development of many online services such as substantially increasing ad/media
measurement revenue through product innovation, and directing product management
and related strategy for custom survey businesses.
January 27, 2010 Business Wire
[references measurement of ad media as a service]
HEADLINE: Dex One reports loss, sees ad sales falling: As advertisers shift their
advertising away from traditional media, Dex is positioning itself as a “marketing
services company.” It has been expanding . . . as well as offering services such as search
engine optimization . . . In all the company now has seven “platforms” for generating

14 See evidence submitted with 7/6/2010 Office Action.
15 Newswire stories have probative value because of the increasing
use of the personal computer to obtain news and information. See
In re Cell Therapeutics Inc., 67 USPQ2d 1795, 1798 (TTAB 2003).
Serial No. 77832668
16
revenue. Moreover, it no longer sells print-only ads, choosing instead to bundle print ads
with other ad media.”
March 5, 2010 The News & Observer (Raleigh, NC)
[shows relationship of advertising and marketing; also shows relationship of search
engine optimization (genus defined by applicant) to ad media].
(emphasis and bracketed comments added).
Additionally, several articles provide evidence that
the term “ad media” is used to identify far more than
merely a means of communicating promotional messages:
HEADLINE: Dove to air consumer’s do-it-yourself ad during Oscars; Commercial time
will go for about $1.7 million: “I like the fact that Dove is doing a preamble,” says John
Moore of ad media buyer mediaHUB.
February 23, 2007 USA Today
[refers to the type/nature of company mediaHUB as an “ad media buyer”]
HEADLINE: Agencies Must Compromise on Question of Rating Commercials: . . . Both
faculty and students must be educated about the opportunities in the ad media business..
March 5, 2007 Television Week
[shows use of ad media to refer to industry]
HEADLINE: Huge profit to Hellman on DoubleClick
“Given that ad revenues are a huge part of Google’s business and DoubleClick is a
leader in the space, it makes sense for them to move further into the ad media realm and
put some of their case to use.” Bowers said.
April 17, 2007 Daily Deal/The Deal
[shows broader use of ad media than just to refer to an ad medium]
BOOK EXCERPT HEADLINE: Who’s Selling, Who’s Buying, who’s counting;
Verklin/Kanner Book Takes a Behind-the-Scenes Look at the Constantly Changing
Landscape of Media Advertising: David Verklin burst upon the ad media scene almost
20 years ago . . .
June 4, 2007
[broader reference to ad media, referencing industry]
DATELINE: San Diego HEADLINE: Tata Indicom And Mast Mobile Media Partner to
Launch First-Ever Interactive Mobile eMbience Licenses Mobile Advertisement
Platform: Tata Indicom, India’s premiere telecom operator and Mast Mobile Media Pvt.
Ltd., an India-based mobile ad media and technology company, today announced the
distribution of interactive advertisements in . . .”
June 20, 2007 Business Wire
[refers to type of company as a mobile ad media and technology company]
Serial No. 77832668
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HEADLINE: Hated, Dead Ex Worth $20M: . . . At the time of her death, Amy –
president of an ad media firm whose clients included . . .
September 29, 2007 The New York Post
[“ad media” is used to identify the type of a firm or business]
HEADLINE: Michael Smerconish: The “Missing” Ingredient: It would be easy to
condemn the ad media for the disparity . . .
February 21, 2008 The Philadelphia Daily News
[use of term “ad media” to refer to the industry].
(emphasis and bracketed comments added).
In its December 23, 2010 response to Office Action,
applicant argues “assuming arguendo that ‘ad media’ means
advertising media,” it is not a generic term because
advertising media is generally understood to refer to an
advertising medium or means of advertising which does not
describe applicant’s genus. As demonstrated by the
foregoing articles, not only is the term “ad media” used as
a variant of “advertising media,” it also is used in a
broad sense to refer to an industry which provides the
types of services offered by applicant and covered in the
genus established for this case.
The article entitled: “Advertising Media Planning: A
Primer” by Hairong Li, of Michigan State University,
submitted by the examining attorney also provides support
for the broad application of the term “advertising media”
in connection with and to identify media and the
Serial No. 77832668
18
advertising industry.16 The following excerpts from the
article provide further insight into the breadth of the
term “advertising media:”
(1. Introduction) Media planners are playing an increasingly important role in today’s
advertising industry because of the continuing proliferation of new media options and the
increased complexity of media and audience research . . . (2. Media Objectives) How is
a media plan developed? Media planning is a four-step process which consists of 1)
setting media objectives in light of marketing and advertising objectives, 2) developing a
media strategy for implementing media objectives, 3) designing media tactics for
realizing media strategy, and 4) proposing procedures for evaluating the effectiveness of
the media plan . . . (3. Media Strategies) Media planners make three crucial decisions;
where to advertise (geography), when to advertise (timing), and what media categories to
use (media mix) . . . (4. Designing Media Tactics) Establishing media objectives and
developing media strategies are the primary tasks of media planners . . . (End of article:
This article described the media planning process, starting from establishing media
objectives through to developing media strategies and tactics and finally evaluating the
effectiveness of the media plan . . . .
Use of “advertising media” within the context of the
foregoing article is evidence which strongly supports
finding that the relevant public would understand the term
“admedia” to identify the services in the defined genus.
c) Third Party Registrations
The examining attorney made of record 28 third-party
registrations for various marks registered for a variety of
advertising and marketing services and incorporating the

16 See 2/3/2011 Office Action. The article indicates that it is
from “Google’s cache of http://www.admedia.org.” It is notable
that this website contains the compound term “admedia.”
Printouts of articles down loaded from the internet are
admissible as evidence of information available to the general
public, and of the way in which a term is being used by the
public. In re Total Quality Group Inc., 51 USPQ2d 1474, 1475-76
(TTAB 1999); Raccioppi v. Apogee Inc., 47 USPQ2d 1368, 1370-71
(TTAB 1998).
Serial No. 77832668
19
terms “ad,” “advertising” and/or “media” which are
disclaimed.17 As shown in the summary chart below, the
disclaimers of the words “ad” and “media” for the
identified services evidence that the public is likely to
understand such terms to be generic for a variety of
services that are the same as those set forth in the
defined genus:
Registration
No.
Mark Goods/Services Disclaimer
2663192 AD PEPPER &
Design
Development and
dissemination of online
advertising for others;
consultation in the field of
the development and
dissemination of online
advertising for others (Class
35)
Ad
2907479
(cancelled)
PINPOINT
INTERACTIVE
MEDIA
ELECTRONIC WEBSITE
ADVERTISING SERVICES,
NAMELY, CREATING
ONLINE ADVERTISEMENTS
FOR OTHERS, PLACING
ADVERTISEMENTS AND
PROMOTIONS FOR OTHERS
ON THE INTERNET, ONLINE
MEDIA BUYING AND
ONLINE MEDIA PLANNING
INCLUDING BANNERS,
SPONSORSHIPS AND E-
MAIL VEHICLES (Class 35)
Interactive
Media

3003776 CRUSADE MEDIA ADVERTING AND
PROMOTIONAL SERVICES,
NAMELY, PLACING
ADVERTISEMENTS FOR
OTHERS, ADVERTISING
CONSULTANCY, MARKET
RESEARCH AND
MARKETING RESEARCH
STUDIES, ANALYSIS OF
ADVERTISING RESPONSE
AND MARKET RESEARCH;
BUSINESS ADVISORY
SERVICES; COMPUTERIZED
DATA-BASED MANAGEMENT
SERVICES; DATA
PROCESSING (Class 35)
Media

17 See attachments to 12/8/2009 Office Action.
Serial No. 77832668
20
3040286 AD XL
PROMOTIONAL
ADVERTISING &
MARKETING,
INC. & Design
Advertising and marketing
(Class 35)
Ad and
Promotional
Advertising &
Marketing,
Inc.
3083732 THE AD
KITCHEN &
Design
Advertising agency (Class
35)
The Ad
3104486 MADAVOR MEDIA Providing advertising space
in magazines and on
websites for the goods and
services of others (Class 35)
Media
3147337 MIGHTY
INTERACTIVE
MEDIA &
Design
Advertising, marketing and
promotion services, via the
Internet (Class 35)
Interactive
Media
3198557 CRUNCH AD Advertising and commercial
information services, via the
internet (Class 35)
Ad
3200906 AD CHAMPION Business marketing,
promotion and consulting
services for others in the
field of search engine
marketing; developing
search engine strategies to
increase business presence
on the internet; promoting
the goods and services of
others through research
engine referral traffic
analysis and reporting;
developing marketing
strategies for others using
search engine and email
(Class 35)
Ad
3202668 THE AD ANIMAL Advertising agency services,
namely developing
marketing strategies and
promotional campaigns for
the goods and services of
others (Class 35)
Ad
3293310 ADWINGS MEDIA Electronic advertisement
and messaging display unit
with multi-networking
(TCP/IP) capabilities and
remote connectivity (Class
9)
Advertising and
advertisement services;
Advertising and publicity
services, namely, promoting
the goods, services, brand
identity and commercial
information and news of
third parties through print,
audio, video, digital and on-
line medium; Advertising
particularly services for the
promotion of goods;
Advertising via electronic
media and specifically the
Media
Serial No. 77832668
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internet; Creating and
updating advertising
material; Dissemination of
advertising for others via an
on-line communications
network on the internet;
Dissemination of advertising
for others via the Internet;
Electronic billboard
advertising; Preparation of
custom advertisements for
others; Preparation of
custom or non-custom
advertising for businesses
for dissemination via the
web, CD or DVD for optional
upload or download to a
computer; Preparing and
placing advertisements for
others; Providing and rental
of advertising space on the
internet; Providing space at
a web site for the
advertisement of the goods
and services of others
(Class 35)
3321910 DEAD HORSE
MEDIA
Publishing of electronic
publications; publishing of
books and magazines (Class
35)
Media
3335173 ROAD RAGE
MEDIA
Advertising and publicity
services, namely, promoting
the goods, services, brand
identity and commercial
information and news of
third parties through print,
audio, video, digital and on-
line media (Class 35)
Media
3444462 THE AD CORRAL Advertising and business
management consultancy
(Class 35)
Ad
3453554 PADMA MEDIA Public relations and
marketing consulting
services (Class 35)
Media
3511374 GD AD DESIGN
& Design
Advertising and
advertisement services;
Advertising and marketing;
Advertising and promotional
services; Advertising
services; Advertising
services, namely, creating
corporate and brand identity
for others; Advertising
services, namely, creating
corporate logos for others;
Business card design
services; Creating and
updating advertising
material; Creative marketing
design services; Design of
advertising flyers for others;
Design of advertising
materials for others; Layout
services for advertising
purposes; Preparation of
custom advertisements for
Ad Design
Serial No. 77832668
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others; Preparing
advertisements for others
(Class 35)
3561958 THE AD CHICK Business marketing
services; Creative marketing
design services;
Development of marketing
strategies and concepts;
Advertising agencies,
namely, promoting the
goods and services of
others; Public relations
(Class 35)
The Ad
3598337 AT AD TRENDS
ADVERTISING,
INC. & Design
Advertising agencies;
Advertising agencies,
namely, promoting the
goods and services of
others; Advertising
consultation; Advertising,
marketing and promotion
services; Marketing
consulting (Class 35)
Ad and
Advertising,
Inc.
3626378 LEADCLICK
MEDIA
on-line advertising,
marketing and promotion
services (Class 35)
Media
3630236 AD SHOPPE &
Design

Advertising agencies,
namely, promoting the
goods and services of
others (Class 35)
Ad
3703385 GREENROAD
MEDIA
Promotion, marketing and
advertising services (Class
35)
Media
3707829 TRIAD DIGITAL
MEDIA
Website advertising and
marketing services, namely,
providing advertising and
marketing consulting in
relation to websites;
website monetization in the
nature of evaluating the
online advertising and
marketing performance of
the websites of others and
providing advertising and
marketing consulting to
increase website
performance; providing
advertising and marketing
consulting in relation to
search engines; and
evaluating the online
marketing performance of
the websites of others
(Class 35)
Digital Media

In view of the foregoing, it is reasonable to conclude that
the relevant public is familiar with the use of the words
“ad” “advertising” and “media” as used in connection with a
Serial No. 77832668
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wide range of services, including those provided by
applicant.
Conclusion
The critical issue in genericness cases is not only
whether the relevant public would use ADMEDIA to describe
the genus, but also whether the relevant public would
understand, when hearing the term ADMEDIA, that it refers
to the services in the defined genus. Marvin Ginn, 228
USPQ at 530, and In re 1800Mattress.com IP LLC, 586 F.3d
1359, 92 USPQ2d 1682, 1685 (Fed. Cir. 2009).
Despite the minimal evidence of use of the compound
term “admedia,” there is ample evidence to support the
relevant public’s understanding of the term ADMEDIA to
refer to the genus of services. The recitation of services
relates to a wide variety of advertising, marketing,
promotion and publicity services. By their nature, such
services necessarily include developing media strategy, the
selection and placement of advertising/ad media, as well as
the “preparation and realization of media and advertising
plans and concepts.” Thus, within the broad categories set
forth in the genus of services are services that are
directly related to and encompassed by the advertising/ad
media services identified by the evidence.
Serial No. 77832668
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Because applicant’s mark is generic with respect to at
least some of the services in the genus, registration is
properly refused. In re Greenliant Systems Ltd., 97 USPQ2d
1078, 1082 (TTAB 2010) citing In re Analog Devices, Inc., 6
USPQ2d 1808, 1810 (TTAB 1988), aff’d without pub. op., 871
F.2d 1097, 10 USPQ2d 1879 (Fed. Cir. 1989) (registration is
properly refused if the subject matter for registration is
generic of any one of the goods [or services] for which
registration is sought). Cf. In re Stereotaxis Inc., 429
F.3d 1039, 77 USPQ2d 1087, 1089 (Fed. Cir. 2005) (PTO may
require disclaimer as a condition of registration if the
mark is merely descriptive for at least one of the products
or services involved in the application) quoting In re
Richardson Ink Co., 511 F.2d 559, 185 USPQ 46, 47 (CCPA
1975) (the law is settled that registration should be
refused if the mark is descriptive of any of the goods for
which registration is sought).
Decision: The refusal to register the mark on the
Supplemental Register is affirmed.