Blenheim Group USA, Inc.

Trademark Trial and Appeal Board

Jan 13, 1999

No. 74565448 (T.T.A.B. Jan. 13, 1999)

THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF THE TTAB JAN. 12, 99
Hearing: Paper No. 20
December 2, 1997 PTH
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Blenheim Group USA, Inc.
________
Serial No. 74/565,448
_______
Robert L. Raskopf, Alan Blum and Christopher J. Glancy of
White & Chase for Blenheim Group USA, Inc.
Charles L. Jenkins, Jr., Trademark Examining Attorney, Law
Office 105 (Thomas G. Howell, Managing Attorney).
_______
Before Simms, Seeherman and Hairston, Administrative
Trademark Judges.
Opinion by Hairston, Administrative Trademark Judge:
An application has been filed by Blenheim Group USA,
Inc. to register PC EXPO for “arranging and conducting of
trade shows, exhibitions and conferences in the field of
computer hardware and software.”1 The original application

1 Application Serial No. 74/565,448 filed August 25, 1994;
alleging dates of first use of January 6, 1983. Applicant
claimed ownership of two registrations--Registration No.
1,283,597 for PCEXPO and design for conducting trade expositions
and conferences relative to computer hardware, software and
related services and Registration No. 1,392,580 for PC EXPO and
Ser No. 74/565,448
2
was filed pursuant to the provisions of Section 2(f) of the
Trademark Act, 15 U.S.C. 1052(f), asserting that PC EXPO
has become distinctive of applicant’s services as a result
of substantially exclusive and continuous use thereof for
at least ten years preceding the filing of the application.
The Trademark Examining Attorney refused registration under
Section 2(e)(1) of the Act, 15 U.S.C. 1052(e)(1), on the
ground that PC EXPO is generic and, thus, incapable of
distinguishing applicant’s services from like services of
others.
When the refusal was made final, applicant appealed.
Both applicant and the Examining Attorney submitted briefs,
and an oral hearing was held.
As a preliminary matter, we note that the application,
as originally filed, included a disclaimer of the term
“EXPO.” Applicant, however, subsequently withdrew the
disclaimer. While the Examining Attorney did not
acknowledge the withdrawal of the disclaimer, he made no
mention of the disclaimer in any subseqent Office action or
in his brief on the case. If the Examining Attorney did
not accept the withdrawal of the disclaimer, it was
incumbent upon him to so advise the applicant. Having

design for conducting trade expositions and conferences in the
field of computer hardware and software. In the latter
Ser No. 74/565,448
3
failed to do so, we consider the disclaimer to have been
withdrawn. Thus, we disagree with the dissent that
applicant has disclaimed rights to the term “EXPO.”
The issues on appeal are whether PC EXPO is generic
for applicant’s services and, alternatively, if such
designation is not considered generic, whether it has
acquired distinctiveness as a service mark. There is no
dispute that PC EXPO would otherwise be merely descriptive
of applicant’s services as the application was filed under
Section 2(f) of the Act.
The Examining Attorney maintains that “PC” is a widely
recognized initialism for “personal computer,” which is a
generic term for the goods featured at applicant’s trade
shows; and that “EXPO” is an abbreviation for exposition,
which is a generic name for exhibitions or shows such as
applicant’s. Thus, the Examining Attorney argues that the
resulting combination, PC EXPO, “is merely the generic name
for [applicant’s] personal computer exposition services,
rather than an indicator of source for these services.”
(Brief, p. 3).
In support of the refusal to register, the Examining
Attorney has submitted excerpts from the Acronyms,
Initialisms & Abbreviations Dictionary (1995) which

registration, applicant disclaimed “PC EXPO.”
Ser No. 74/565,448
4
indicate that “PC” is an initialism for “personal computer”
and “EXPO” is an abbreviation of “exposition.” Further,
the Examining Attorney made of record an excerpt from the
Random House Unabridged Dictionary (2d.) wherein
“exposition” is defined as “a large-scale public exhibition
or show, as of art or manufactured products; an exposition
of 19th century paintings; an automobile exposition.” Also,
the Examining Attorney submitted eight excerpts from the
NEXIS data base of stories in which the terms “Personal
Computer Exposition” (three excerpts) and “PC Exposition”
(five excerpts) appear.2 The following excerpts are
illustrative (emphasis added):
Even though the software business is in a
downturn, it is still an attractive field.
Some of the reasons emerged at the recent
Comdex personal computer exposition in
Atlanta. Machine Design, June 6, 1985;
and
I recently had the opportunity to attend
a regional IBM PC exposition that was
designed to cater exclusively to the
Fortune 1000 corporate consumer.
PC Week, August 21, 1984.

2 One of the excerpts is from a foreign publication and another
is from a wire service. Inasmuch as it is uncertain whether
these stories were ever published in the United States and,
therefore, were exposed to the purchasing public in this country,
they are of limited value in deciding the issue in this appeal.
See, e.g.: In re Bel Pease Sales Co., 1 USPQ2d 1233, 1235 (TTAB
1986).
Ser No. 74/565,448
5
Applicant, in urging reversal of the refusal to
register, argues that the Examining Attorney has
mischaracterized the nature of applicant’s services; i.e.,
applicant does not exhibit personal computers, but rather
arranges and conducts trade shows that cover all manner of
computer-related hardware, software and information
technology. Further, applicant argues that the Examining
Attorney has failed to meet the burden of clear and
convincing evidence of genericness; that the mere
combination of PC and EXPO does not convey the exact nature
of applicant’s services; and that the evidence of secondary
meaning submitted by applicant is more than adequate to
show that PC EXPO has become distinctive of applicant’s
services.
Applicant’s evidence includes the declaration of its
vice-president, Frank Terranella, wherein he sets forth
some of the particulars surrounding applicant’s use of PC
EXPO. According to Mr. Terranella, for the period 1990-
1995 applicant spent nearly $5 million in advertising its
PC EXPO trade shows and during the same period applicant’s
revenues totaled nearly $45 million. Accompanying Mr.
Terranella’s declaration are copies of over fifty press
articles written about applicant’s trade shows; six
declarations (one from a publisher who covers applicant’s
Ser No. 74/565,448
6
trade shows and five from participants) wherein the
declarants state that the PC EXPO name is well-known in the
computer exposition business and among computer companies
as a trademark of applicant, that no other computer show in
the United States uses PC EXPO, and that when persons in
the computer industry speak of PC EXPO, it is understood
that they are speaking of applicant’s trade shows. Also
accompanying the Terranella declaration are copies of
correspondence between applicant and Pace Membership
Warehouse, Inc., which used “PC Expo” to identify a
computer sale involving LEADING EDGE computers. In
response to applicant’s cease and desist letter, Pace
stated that it would make no further use of “PC Expo.”
A review of the numerous press articles submitted by
applicant reveals that all of the articles refer to
applicant as the source of PC EXPO trade shows. The
following are representative of these uses (emphasis
added):
Lotus Development Corp. and WordPerfect
Corp. will unveil significant upgrades to
their software suites at the PC Expo trade
show in New York on June 28 that they hope
will challenge Microsoft’s near monopoly
on the market. Information Week; June 27,
1994;
The massive Fall-Comdex trade show in Las
Vegas is essentially a marketing festival
and is not worth the hassles involved in
Ser No. 74/565,448
7
attending; it attracts massive crowds and
displays few surprises. Spring Comdex;
PC Expo and the Software Publishers
Association conference are better places
for networking with fellow professionals.
PC Magazine; February 8, 1994;
Such large shows as the Interface Group’s
COMDEX, Bruno Blenheim’s PC EXPO and
Advanstar Communication Group’s VOICE
offload a majority of their calls and
registration procedures to an unattended
phone and fax machine. Convention South;
April 1994.
Further, applicant submitted six additional
declarations (one from a magazine publisher, one from an
officer of a major computer manufacturer, and four from
trade group representatives) wherein the declarants state
that the primary significance of the name PC EXPO is the
computer industry trade show organized and sponsored by
applicant; that it is not a generic term for a personal
computer exposition; that whenever people in the computer
industry refer to PC EXPO they are referring to applicant’s
trade show; and that PC EXPO is not used in the industry
other than to refer to applicant’s trade show. Applicant
also submitted a survey taken at applicant’s 1996 New York
trade show, and the results of applicant’s search of the
NEXIS data base of PC EXPO per se.
The critical issue in genericness cases is whether
members of the relevant public primarily use or understand
Ser No. 74/565,448
8
the term sought to be registered to refer to the genus
(category or class) of goods or services in question. H.
Marvin Ginn Corporation v. International Association of
Fire Chiefs, Inc., 782 F.2d 987, 228 USPQ 528 (Fed. Cir.
1986).
We agree with applicant that the Examining Attorney
has not produced sufficient evidence that the relevant
public would regard PC EXPO as a term for a trade show or
exhibition in the field of computer hardware and software.
Rather, considering all of the evidence of record, it
appears to us that the primary significance to the relevant
public of the designation PC EXPO is a trade show in the
field of computer hardware and software arranged and
conducted by applicant and not a generic expression for
such a trade show.
First, there is no evidence that the relevant public
uses the designation PC EXPO to refer to a trade show other
than applicant’s. The NEXIS excerpts submitted by the
Examining Attorney are not particularly probative of how PC
EXPO is perceived inasmuch as they refer to designations
other than PC EXPO. There were no appearances in the NEXIS
excerpts of the term PC EXPO per se, and only four
appearances of the designation closest thereto, “PC
Exposition,” which, in any event, is a weak showing. It is
Ser No. 74/565,448
9
also important to note that three of these excerpts
appeared in 1984, a number of years ago.
On the other hand, applicant’s search of the NEXIS
data base for PC EXPO per se returned 958 articles
published between November 1, 1995 and November 8, 1996.
Of this number, 897 stories referred to applicant’s trade
show and 22 stories referred to the Best of PC Expo Award,
an honorarium related to applicant’s trade show. Of the
remaining stories, 28 referred to trade shows that use PC
Expo in their titles, but are outside of the United States;
three refer to another entity that uses PC Expo in its
title; and eight stories contained no reference to PC EXPO
at all.
Second, we are not convinced from the dictionary
entries that the relevant public would use PC EXPO to refer
to a trade show in the field of computer hardware and
software. While there is no question that “PC” is an
initialism commonly used to refer to a personal computer,
this record does not establish that “PC” is a term which
would ordinarily be used with EXPO to refer to a trade show
such as applicant’s. Stated differently, while “computer
exposition” or even “computer expo” may be understood to
refer to a trade show in the field of computer hardware and
software, it does not automatically follow that PC may be
Ser No. 74/565,448
10
substituted for computer in these expressions and the
relevant public would understand the designation PC EXPO to
refer to such a trade show. To us, PC EXPO creates a
somewhat different commercial impression from either
“computer exposition” or “computer expo.”
Finally, it is important to note that trade shows
featuring computer hardware and software are not new
services such that we should simply look at the dictionary
definitions of the separate terms PC and EXPO to determine
the issue of genericness herein. Compare, In re Gould
Paper Corp., 834 F.2d 1017, 5 USPQ2d 1110, 1112 (Fed. Cir.
1987) [SCREENWIPE for a premoistened, antistatic cloth for
cleaning computer and television screens is not
registrable]. Trade shows of this type have been around
for a number of years, and if PC EXPO were the generic term
members of the trade and consumers used for these services,
one would expect to see it used as a generic name in at
least some NEXIS excerpts. See In re Ferrero S.p.A, 24
USPQ2d 1155, 1156 (TTAB 1992) [“[F]or an established
product such as milk chocolate, the fact that no one else
has used the term [EXTRA-MILK MILK CHOCOLATE] is
significant.”] Similarly, this case is different from the
situation referred to in J. Kohnstam, Ltd. v. Louis Marx &
Company, Inc., et al., 280 F.2d 437, 126 USPQ 362, 364
Ser No. 74/565,448
11
(CCPA 1960). In finding that MATCHBOX SERIES for toy
vehicles was generic, the court noted that, “where there is
only one source for a particular kind of merchandise over a
period of time, the public might come to associate that
source with the name by which the merchandise is called.”
In this case, the record indicates that at least two other
entities have conducted trade shows similar to applicant’s.
We are cognizant of those cases cited in the dissent
wherein terms were held to be generic where the applicant
was apparently the first and only user of the term.
However, as we have often stated, each case must be decided
on its own set of facts. In this case, it is the totality
of the record, not simply the fact that there are no uses
of PC EXPO other than by applicant, that leads us to
conclude that PC EXPO is not a generic name for applicant’s
trade shows.
Having found that PC EXPO is not a generic name for
applicant’s trade shows, we turn to the evidence submitted
to prove distinctiveness. As noted above, applicant
submitted its advertising and revenue figures which are
certainly impressive, twelve declarations, over fifty press
clippings, and the results of its search of the NEXIS data
base of PC EXPO per se. As discussed above, the results of
applicant’s NEXIS search are particularly noteworthy.
Ser No. 74/565,448
12
Taken together, this evidence demonstrates that the
relevant public has come to identify PC EXPO with
applicant’s trade shows. We conclude that applicant has
made a sufficient showing of distinctiveness to justify
publication of the mark for opposition.3
To the extent that any evidence of record raises a
doubt about our conclusion on the issue of genericness, we
elect to resolve that doubt in favor of applicant.
Any person who has a legitimate interest in the use of PC
EXPO may file an opposition. Cf. In re Merrill Lynch,
Pierce, Fenner, and Smith Inc., 828 F.2d 1567, 4 USPQ2d
1141, 1144 (Fed. Cir. 1987).
Decision: The refusal to register is reversed.
E. J. Seeherman
P. T. Hairston
Administrative Trademark
Judges, Trademark Trial and
Appeal Board

3 In reaching this decision, we have accorded little weight to
the survey conducted by applicant at its 1996 New York trade
show. It is not surprising that persons attending applicant’s
trade show would identify the name of the show as PC EXPO.
Ser No. 74/565,448
13
Simms, Administrative Trademark Judge, dissenting:
Because I believe that applicant’s asserted mark PC
EXPO is a generic term for applicant’s services of
arranging and conducting trade shows in the field of
computer hardware and software, I dissent.
The original application was filed under Section 2(f)
of the Act, a concession of the descriptive (or non-
inherently distinctive) nature of applicant’s asserted
mark, and, in the application, applicant has disclaimed
exclusive rights to use the term “EXPO” apart from the mark
as a whole.4 Also, in applicant’s request for
reconsideration, 17, and in its main brief, 19, applicant
has conceded the descriptiveness of the asserted mark. And
in a prior registration applicant disclaimed the words “PC
EXPO.”
A term is generic if it names the class of the goods
or services to which it is applied. See: H. Marvin Ginn
Corp. v. International Association of Fire Chiefs, Inc.,
782 F.2d 987, 228 USPQ 528 (Fed. Cir. 1986), and In re

4 In a response filed February 21, 1996, applicant attempted to
withdraw this disclaimer. The Examining Attorney did not
Ser No. 74/565,448
14
Northland Aluminum Products, Inc., 777 F.2d 1556, 227 USPQ
961 (Fed. Cir. 1985). The test for determining whether a
term is generic is its primary significance to the relevant
public, that is, whether the term is used or understood, by
purchasers or potential purchasers of the goods or services
at issue, primarily to refer to the class of such goods or
services. See: Magic Wand Inc. v. RDB Inc., 940 F.2d 638,
19 USPQ2d 1551 (Fed. Cir. 1991); In re Merrill Lynch,
Pierce, Fenner, and Smith Inc., 828 F.2d 1567, 4 USPQ2d
1141 (Fed. Cir. 1987); H. Marvin Ginn Corp. v.
International Association of Fire Chiefs, Inc., supra; and
In re Leatherman Tool Group, Inc., 32 USPQ2d 1443 (TTAB
1994).
Applicant’s vice president and general counsel has, in
a declaration, recognized that PC is a “well-used acronym
for personal computer…”. With respect to the term “EXPO,”
the Examining Attorney has relied upon materials discussed
by the majority indicating that this word is an abbreviated
word for “exposition.” In addition to the materials which
the Examining Attorney has relied upon, I also note that
the Random House Compact Unabridged Dictionary defines
“expo” as

acknowledge this withdrawal of the disclaimer. The disclaimer
remains entered in the file.
Ser No. 74/565,448
15
1. a world’s fair or international
exposition: Expo ’67 in Montreal. 2.
any exhibition or show: an annual
computer expo. [1960-65; by shortening]
Also, The Oxford Dictionary and Thesaurus has the following
listing for “expo”:
a large international exhibition.
[abbr. of EXPOSITION 4]…see
EXHIBITION 1.
The Thesaurus of Slang, under the word “EXPOSITION,” lists
“expo.” And, as noted, applicant has even disclaimed
exclusive rights to this word apart from the mark as a
whole. Therefore, not only is “PC” widely recognized as an
abbreviation for “personal computer,” but also the word
“expo” is a dictionary word meaning “exposition” or
“exhibition.” These individual words, used in connection
with a trade show featuring computer hardware, including
personal computers, and software, have unambiguously
descriptive meanings which, when joined, have a meaning
identical to the meaning that common usage would ascribe—-
that is, a personal computer (or PC) exposition. Together,
the combined term PC EXPO identifies the type of services
offered by applicant—-a PC exposition. In this regard, the
Examining Attorney has made of record evidence that the
expression “PC exposition” has been used in the trade press
as a generic term. See, for example, references to “Comdex
Ser No. 74/565,448
16
PC exposition” and “regional IBM PC exposition.” I
believe, therefore, that, in accordance with case law, the
Examining Attorney has met his evidentiary burden by
submitting materials including dictionary definitions
establishing a prima facie case of genericness. See In re
Gould Paper Corp., 834 F.2d 1017, 5 USPQ2d 1110 (Fed. Cir.
1987) (SCREENWIPES held generic for wipes for computer and
television screens). See also In re Pennzoil Products Co.,
20 USPQ2d 1753 (TTAB 1991) (MULTI-VIS held generic for
multiple viscosity motor oil).
While applicant argues that its services are “not
focused on personal computers” (brief, 4), it is clear
that, at applicant’s trade shows, exhibitors include such
companies as Compaq, Microsoft, Dell and IBM. These
companies show their latest products, including PC hardware
and software. It is clear, therefore, that applicant’s
expositions prominently feature PCs. While it may be true
that applicant’s expositions feature more than just PCs,
such as desktop publishing, mass storage, imaging,
printers, Internet software, on-line services, mobile
computing, etc., the salient fact in this case is that the
display by exhibitors of PCs is a significant or important
part of applicant’s trade shows.
Ser No. 74/565,448
17
While applicant’s attorney has argued that the
dictionary definitions do not show the understanding or the
primary significance of its asserted mark to the relevant
public (attendees and exhibitors), applicant has admitted
that individuals who buy PCs for their home use, as well as
professionals, attend applicant’s trade shows.
Accordingly, I believe that the dictionary definitions are
significant in determining the understanding of applicant’s
asserted mark to the relevant public.
Incredibly, in applicant’s briefs, main brief, 10, and
reply brief, 8, applicant has even disputed that such terms
as “personal computer exposition” and “PC exposition” are
generic terms for computer industry trade shows. To take
applicant’s arguments, presented in its briefs and at the
oral hearing, to their logical conclusion, applicant would
argue that these and even such other clearly generic
expressions as “Computer Exposition” and “Automobile
Exposition,” though they tell nothing about the source of
those services, are not generic. However, I believe that
applicant (as well as the majority) misreads the case law
with regard to genericness. While of course the PTO has
the burden of demonstrating genericness, case law indicates
that this burden is satisfied if the Office shows that the
expression sought to be registered inherently has a generic
Ser No. 74/565,448
18
meaning in the ordinary language. See Gould, supra, and In
re DC Comics, Inc., 689 F.2d 1042, 215 USPQ 394, 405 (CCPA
1982) (Nies J., concurring)(“Thus, to refuse registration
on the ground that an applicant seeks to register the
generic name of the goods, the PTO must show that the word
or expression inherently has such meaning in ordinary
language, or that the public uses it to identify goods of
other producers as well.” [Footnote and case citation
omitted]). Where an applicant combines two obviously
generic terms to form a phrase which loses no generic
significance in the combination (for example, “Automobile
Exposition”), the Office has satisfied its burden of
demonstrating genericness by, at a minimum, introducing
dictionary definitions of those generic words.
Inexplicably, the majority would apparently find
“Computer Expo” to be a generic term for a computer trade
show but not “Personal Computer Expo” or the equivalent “PC
Expo.” This distinction is baffling. The majority seems
to think that an applicant may take a generic expression,
say “Automotive Trade Show” or “Automotive Expo” or
“Motorcycle Expo” and, through long use and extensive
promotion, convert this term into a registrable service
mark. That, of course, is contrary to hornbook law. Truly
generic terms are almost never capable of being registered
Ser No. 74/565,448
19
trademarks or service marks for the goods or services of
which they are generic. I can only hope that the Examining
Attorneys and the outside bar, whose task it is to try to
understand the case law, including our decisions, and apply
it to the facts before them, are able to divine the
difference between “Computer Expo” and “PC Expo.” I
certainly cannot.
It is also noteworthy to observe that there seem to be
no commonly used alternatives (say, “Personal Computer
Trade Show”) which communicate the same information as
quickly as applicant’s asserted mark. Since all generic
terms should be freely available, none should be registered
to any one entity. The competitive need to use all such
terms should be of paramount importance.
Also, the majority places too much weight on the fact
that there is of record no use by third parties. While it
is generally important to determine if others have used a
term descriptively or generically, it is not necessary, in
order to find a term generic, for the record to reflect
such third-party use. See, for example, In re Sun Oil Co.,
426 F.2d 401, 165 USPQ 718 (CCPA 1970) [CUSTOMBLENDED for
gasoline held unregistrable because category of gasoline
Ser No. 74/565,448
20
was blended personally for the motorist];5 In re Helena
Rubinstein, Inc., 410 F.2d 438, 161 USPQ 606 (CCPA 1969)
[PASTEURIZED for face cream held generic]; In re Preformed
Line Products Co., 323 F.2d 1007, 139 USPQ 271 (CCPA 1963)
[PREFORMED for preformed electrical equipment held
generic]; Servo Corp. of America v. Servo-Tek Products Co.,
289 F.2d 955, 129 USPQ 352 (CCPA 1961) [SERVO for
servomechanisms stated to be generic]; J. Kohnstam, Ltd. v.
Louis Mark & Co., 280 F.2d 437, 126 USPQ 362 (CCPA 1960)
[MATCHBOX for toy vehicles held generic because that
category of toy cars was sold in matchbox-sized boxes];6 In

5 In a concurring opinion, Judge Rich commented, in a manner that
I believe also applies to this case, that if a term is incapable
of registration, then:
registration must be refused…no matter what
evidence of alleged “secondary meaning” is
adduced; in other words, under the facts of
this case the law proscribes the possibility
of a de jure “secondary meaning.”…[fn. cont’d.]
In my opinion, CUSTOM-BLENDED is so highly
descriptive that it cannot, under the law, be
accorded trademark rights even though at some
times, or to some people, or in some places, it
has de facto secondary meaning…
…Because one merchandiser has latched onto
one of the descriptive terms does not mean it can
force its competitors to limit themselves to the
use of the others, which appellant, it seems to
me, is trying to do here. All of the generic
names for a product belong in the public domain.
6 The Court noted, 126 USPQ at 364:
We will concede, arguendo, that under such
circumstances, where there is only one source
for a particular kind of merchandise over a
Ser No. 74/565,448
21
re Central Sprinkler Company, ___USPQ2d___ (TTAB October
22, 1998, Application Serial No. 74/505,190) [ATTIC for
automatic sprinklers for fire protection of attics held
generic]; In re Pennzoil Products Co., supra [MULTI-VIS for
multiple viscosity motor oil held generic]; In re Reckitt &
Colman, North America Inc., 18 USPQ2d 1389 (TTAB 1991)
[PERMA PRESS for soil and stain removers held generic]; In
re National Patent Development Corp., 231 USPQ 823 (TTAB
1986) [ULTRA PURE for biological interferons for medical
use held generic]; Fluid Energy Processing & Equipment Co.
v. Fluid Energy, Inc., 212 USPQ 28 (TTAB 1981) [FLUID
ENERGY for hydraulic/pneumatic equipment held generic];
Ethicon, Inc. v. Deknatel, Inc., 183 USPQ 503 (TTAB 1963)
[COTTONY for sutures held generic]; and In re Demos, 172
USPQ 408 (TTAB 1971)(CHAMPAGNE held generic for salad
dressing). These cases are illustrative of situations
where we have found terms to be generic where the applicant
was apparently the first and only user of the term in
question in connection with its goods. Therefore, the fact

period of time, the public might come to
associate that source with the name by
which the merchandise is called. But such
a circumstance cannot take the common descrip-
tive name of an article out of the public
domain and give the temporarily exclusive
user of it exclusive rights to it, no matter
how much money or effort it pours into pro-
moting the sale of the merchandise.
Ser No. 74/565,448
22
that competitors do not currently use PC EXPO as the name
for their services is not determinative. What the Gould
court said, 5 USPQ2d at 1111-12, is noteworthy:
We hold, however, that the PTO has satis-
fied its evidentiary burden if, as it did
in this case, it produces evidence including
dictionary definitions that the separate
words joined to form a compound have a mean-
ing identical to the meaning common usage
would ascribe to those words as a compound…
` The Board concluded that because Gould’s
wipes are used on television and computer
screen, and the combination of “SCREEN” and
“WIPE” does not render Gould’s mark unique or
incongruous, the common descriptive aspect of
applicant’s mark is not lost in the combined
form. We agree.
…Nothing is left for speculation or
conjecture in the alleged trademark. The
compound immediately and unequivocally describes
the purpose, function and nature of the goods as
Gould itself tell [sic] us. Gould has simply
joined the two most pertinent and individually
generic terms applicable to its product, and then
attempts to appropriate the ordinary compound
thus created as its trademark…
Nor is this the first time that the Office has refused
registration of terms which have achieved some level of
recognition. While I do not doubt that there may be people
who have come to associate the asserted mark PC EXPO with
applicant’s services, the law calls such secondary meaning
of generic terms “de facto secondary meaning.” That is,
this is recognition in fact which is not entitled to legal
Ser No. 74/565,448
23
protection. See J.T. McCarthy, McCarthy on Trademarks and
Unfair Competition, §§12:47, 15:22 and 15:24 (4th ed. 1998).
The Board and the courts have repeatedly said that the
length of time and even high level of exposure of the
public to a designation does not mean that it automatically
functions as a mark and is registrable. For example, in In
re E.I. Kane, 221 USPQ 1203, 1204 (TTAB 1984), the Board
said:
In that case there was a survey showing 31 percent
recognition of the term as the name of a company and nine
affidavits attesting to recognition as a mark. In In re
Paint Products Co., 8 USPQ2d 1863, 1866 (TTAB 1988),
applicant had sold 600,000 cans of paint in ten years under
the asserted mark PAINT PRODUCTS CO. and spent around
Ser No. 74/565,448
24
$500,000 per year on advertisements. The mark had been
used since 1957. There were ten affidavits from people in
the trade who had dealt with applicant. We said, however,
that the unambiguously descriptive meaning of the words
PAINT PRODUCTS CO. was more convincing of public
perception, and that these words were generic. In In re
Half Price Books, Records, Magazines, Inc., 225 USPQ 219
(TTAB 1984), applicant submitted evidence that those in the
industry recognized the term to be applicant’s mark. We
said the evidence of recognition was de facto secondary
meaning. These cases and others presented situations, like
this one, where the words sought to be registered were so
inherently descriptive as to be generic from the outset. I
agree with the Examining Attorney that the evidence,
including dictionary definitions, is simply more compelling
of the public perception of these clearly generic terms
than are the declarations (some of which appear to be form
declarations) submitted by applicant.
In conclusion, it may be helpful to remember what our
primary reviewing court (then called the U. S. Court of
Customs and Patent Appeals) stated in Weiss Noodle Co. v.
Golden Cracknel and Specialty Co., 290 F.2d 845, 129 USPQ
411, 414 (1961):
While it is always distressing to contem-
Ser No. 74/565,448
25
plate a situation in which money has been
invested in a promotion in the mistaken belief
that trademark rights of value are being
created, merchants act at their peril in
attempting, by advertising, to convert common
descriptive names, which belong to the public,
to their own exclusive use. Even though they
succeed in the creation of de facto secondary
meaning, due to lack of competition or other
happenstance, the law respecting registration
will not give it any effect.
For these reasons, I would affirm the refusal of
registration.
R. L. Simms
Administrative Trademark
Judge, Trademark Trial
and Appeal Board
Ser No. 74/565,448
26