Douglas E. Langham

Trademark Trial and Appeal Board

Sep 30, 2012

No. 77935888 (T.T.A.B. Sep. 30, 2012)

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB

Mailed:
September 30, 2012

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Langham
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Serial No. 77935888
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Douglas E. Langham, pro sé.

Michael S. Levy,1 Supervisory Senior Attorney, Law Office 110 (Chris A. F. Pedersen,
Managing Attorney).
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Before Kuhlke, Cataldo and Taylor, Administrative Trademark Judges.

Opinion by Taylor, Administrative Trademark Judge:

Douglas E. Langham (“applicant”) filed an application to register on the Principal
Register the mark XXX DVD RENTALS (in standard character form) for “Entertainment
services, namely, providing a web site featuring photographic and prose presentations featuring
erotic entertainment and listings” in International Class 41.2 Applicant claimed January 15,
2010, as the date of first use of his mark anywhere and in commerce.
Prosecution History
In the first office action issued May 24, 2010, the examining attorney refused registration
under Section 2(e)(1) of the Trademark Act, 15 U.S.C. §1052(e)(1), on the ground that the

1 An examining attorney was assigned to this case prior to the January 6, 2011, Office Action.
2 Application Serial No. 77935888 was filed on February 15, 2010.
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proposed mark is merely descriptive of the identified services, and further advised applicant that
his mark appeared to be generic such that neither an amendment to proceed under Section 2(f)
of the Trademark Act, 15 U.S.C. § 1052(f), nor an amendment to the Supplemental Register
could be recommended. The examining attorney also required applicant to submit a substitute
specimen supported by a verified statement pursuant to Trademark Act Sections 1 and 45, 15
U.S.C. § 1051, 1127; 37 C.F.R. §§ 2.35(a)(1)(iv), 2.56(a). In response, applicant presented
arguments in favor of registration, claimed acquired distinctiveness under Section 2(f) and
provided a substitute specimen unsupported by verification. A second Office Action issued on
August 20, 2010, maintaining the requirement for a verified specimen and the mere
descriptiveness refusal under Section 2(e)(1), and “advising” applicant that its proposed mark is
generic for the identified services under Section 2(e)(1).3 Applicant responded on December 18,
2011, with arguments in favor of registration and a second unverified specimen. On January 4,
2011, the Office reassigned the application to the senior attorney presently responsible for the
application, who issued an Office Action on January 6, 2011, making clear that the mark is
additionally refused as generic under Section 2(e)(1) of the Act, 15 U.S.C. § 1052(e)(1),
maintaining the mere descriptiveness refusal under Section 2(e)(1), finding applicant’s Section
2(f) claim insufficient, and addressing the specimen issue by explaining in detail how to submit a
verified statement. Applicant responded on May 14, 2011, with additional arguments in support
of registration with regard to the Section 2(e)(1) refusals, additional evidence in support of his
claim of acquired distinctiveness and the requirement for a verified statement supporting his
substitute specimen. In an order issued June 3, 2011, the senior attorney finally refused
registration on the Section 2(e)(1) grounds of mere descriptiveness and genericness, the

3 This Office action superseded the one issued on August 8, 2010.
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insufficiency of applicant’s 2(f) claim and the requirement for a verified substitute specimen of
use.
Applicant appealed and both applicant and the senior attorney filed briefs on the issues on
appeal, and applicant filed a reply brief. For the reasons set forth below, we affirm the refusals
to register, as clarified below.
Issues on Appeal
As a preliminary matter, as stated above, the senior attorney finally refused registration of
applicant’s proposed mark XXX DVD RENTALS as both generic and merely descriptive under
Section 2(e)(1). We point out, however, inasmuch as applicant seeks registration of his mark on
the Principal Register pursuant to a claim of distinctiveness under Section 2(f), applicant
effectively 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; and
applicant’s reliance on Section 2(f) during prosecution presumes that the mark is descriptive.”).
Accordingly, the only Section 2(e)(1) ground of refusal at issue is genericness. Also at issue is
the requirement that applicant submit a substitute specimen supported by a verified statement
pursuant to Trademark Act Sections 1 and 45.
Preliminary Matter
Applicant submitted evidence as a supplement to his reply brief. To the extent that it is
the same evidence previously submitted, it is already of record as part of the application file, and
its submission was unnecessary. See ITC Entertainment Group Ltd. v. Nintendo of America,
Inc., 45 USPQ2d 2021, 2022-2023 (TTAB 1998). To the extent this evidence had not previously
been submitted, it is manifestly untimely and has not been considered. See Trademark Rule
2.142(d); and In re Zanova Inc., 59 USPQ2d 1300, 1302 (TTAB 2001).
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Genericness
“Generic terms are common names that the relevant purchasing public understands
primarily as describing the genus of goods or services being sold. They are by definition
incapable of indicating a particular source of the goods or services.” In re Dial-A-Mattress
Operating Corp., 240 F.3d 1341, 57 USPQ2d 1807, 1810 (Fed. Cir. 2001) (citations omitted).
The ultimate test for determining whether a term is generic is the primary significance of the
term to the relevant public. See Section 14(c) of the Act. See also In re American Fertility
Society, 188 F.3d 1341, 51 USPQ2d 1832 (Fed. Cir. 1999); Magic Wand Inc. v. RDB Inc., 940
F.2d 638, 19 USPQ2d 1551 (Fed. Cir. 1991). The burden of proving genericness falls on the
trademark examining attorney, who must present “clear evidence of generic use.” See In re
Merrill Lynch, Pierce, Fenner, and Smith, Inc., 828 F.2d 1567, 1571, 4 USPQ2d 1141, 1143
(Fed. Cir. 1987).
Our primary reviewing court has set forth a two-step inquiry to determine whether a mark
is generic: First, what is the genus (category or class) of goods or services at issue? Second, is
the term sought to be registered understood by the relevant public primarily to refer to that genus
of goods or services? H. Marvin Ginn Corp. v. International Association of Fire Chiefs, Inc.,
782 F.2d 987, 228 USPQ 528, 530 (Fed. Cir. 1986).
With respect to the first part of the Marvin Ginn inquiry, we begin by noting that, in
general, the genus is defined by the goods or services identified in the application. See Reed
Elsevier Properties Inc., 482 F.3d 1376, 82 USPQ2d 1378 (Fed. Cir. 2007); Magic Wand, supra
(a proper genericness inquiry focuses on the description of services set forth in the certificate of
registration). Moreover, to fully understand what is encompassed by this genus, it is appropriate
to look to other evidence of record when defining the genus. See In re Steelbuilding.com, 415
F.3d 1293, 75 USPQ2d 1420 (Fed. Cir. 2005) (to derive the correct genus of goods and services,
Serial No. 77935888

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the court looked to the actual website and other evidence of record); In re DNI Holdings Ltd. 77
USPQ2d 1435 (TTAB 2005) (where a single website was offering a variety of interrelated,
interactive services, the Board found it appropriate to take all of the undifferentiated services into
consideration in determining the genus of the services). Here, we begin by focusing our inquiry
on the services as identified, i.e., “entertainment services, namely, providing a web site featuring
photographic and prose presentations featuring erotic entertainment and listings.” Because the
services are so broadly identified, we look to the record for guidance to derive the correct genus.
We particularly find the proposed specimen submitted on June 25, 2010, instructive. It
prominently features applicant’s mark and describes applicant’s services as follows (emphasis in
original):
Rent Watch Buy Adult
Rent by mail and watch online!
Rent adult dvds and have xxx movies delivered to your door.
Watch full length pay per view video on demand xxx dvds on your computer.
xxx dvd rentals has the most adult video renting and viewing choices.
Choose your favorite way to watch adult videos below!

It is clear from the specimen that rental of xxx dvds is a significant aspect of the erotic
entertainment services provided on applicant’s website. Although the senior attorney stated that
the services as identified “may serve” as the genus, he looked to the specimens and concluded
that the recitation encompassed the video on demand service mentioned therein. Though a bit
narrower, his position is consistent with our finding, and applicant is silent on the issue.
Accordingly, for the reasons discussed, we find the genus of applicant’s services to include xxx
dvd rentals.
That brings us to the second part of the inquiry: the public’s understanding of the term.
That is, who are the members of the relevant public for the identified services and will they
Serial No. 77935888

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understand the term XXX DVD RENTALS to refer to the services of providing xxx dvd rentals?
In this case, we conclude that the relevant public is comprised of those members of the general
public who rent xxx dvds. Evidence of the public's understanding of the term may be obtained
from any competent source, such as purchaser testimony, consumer surveys, listings in
dictionaries, trade journals, newspapers, and other publications. In re Merrill Lynch, 4 USPQ2d
at 1143.
We note, first, that applicant’s applied-for mark, XXX DVD RENTALS, is a phrase and
should be analyzed according to the test set forth in the case of In re American Fertility Society,
supra, and further clarified in the case of In re Dial-A-Mattress, 57 USPQ2d at 1810:
[W]here the proposed mark is a phrase (such as “Society for
Reproductive Medicine”), the Board cannot simply cite definitions
and generic uses of the constituent terms of a mark”; it must
conduct an inquiry into the “meaning of the disputed phrase as a
whole.”
In re American Fertility, 51 USPQ2d at 1836. We recognize that under this test the definitions
taken from various reference sources set forth below would not, in and of themselves, support a
finding that the phrase XXX DVD RENTALS is generic. However, they confirm the impression
conveyed by the phrase as a whole.
In that regard, there is substantial evidence to support a finding that the relevant public
readily understands the designation XXX DVD RENTALS to identify the services of providing
xxx dvd rentals. The examining and senior attorneys submitted the following evidence to
demonstrate that the phrase “xxx dvd rentals” is generic when used in connection with “xxx dvd
rental services”:
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1. The definition of “XXX” from Dictionary.com4 derived from The American
Heritage Abbreviations Dictionary (3rd ed. 2005): “pornographic.”
2. The definition of “XXX” from Wikitionary5: Adjective X-rated,
pornographic.
3. The definition of “XXX” from Wikipededia6:
• Pornography
• An identifier for pornography, especially x-rated
movies

4. The definition of “XXX” from the Free Dictionary:7

5. The definition of “DVD” from AskOxford.com8 derived from The Compact

Oxford English Dictionary of Current English: abbreviation “digital versatile disc.”

6. Definitions of “rental” from Rhymezone.com:9 “the act of paying for the use of
something” and “property that is leased or rented out or let.”
7. Excerpts from websites showing common use of the phrase “xxx dvd rentals” in
the adult entertainment industry to refer to the service of rental of dvd’s with pornographic or
adult entertainment content, retrieved from a search of the Google search engine:10
a. The website of AmazingDVDs.com (www.amazingdvds.com)
states:
Take advantage of these Free Rental Offers and xxx dvd
rental offers.
b. The website of Adult DVD Rentals (www.staticusers.net)
features “XXX DVD Rental Services.”

4 http://dictionary.reference.com/browse/XXX?r_66, retrieved on May 21, 2010.
5 http://en.wiktionary.org, retrieved June 3, 2011. Exhibits to Office Actions issued June 3, 2011.
6 http://en.wikpedia.org, retrieved June 3, 2011. Exhibits to Office Actions issued June 3, 2011.
7 www.freedictioary.org, retrieved June 3, 2011. Exhibits to Office Actions issued June 3, 2011.
8 http://www.askoxford.com/consise_oed/dvd?view=uk, retrieved on May 21, 2010.
9 (http://www.rhymezone.com/r/rhyme.cgi?Word+rental), retrieved on May 21, 2010.
10 Exhibits to Office Actions issued January 6, 2011, and June 3, 2011.
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c. The website of PornFlix.com (www.pornflix.net) states:
Are you too horny now? And you can’t wait 1 to 3 business
days for your xxx dvd rentals to arrive by first class mail?
d. The website of Gay XXX DVD (www.gaydvds .biz/gay) states:
Gay XXX DVD rental sent directly to your door by mail!
e. The website of Adult Dvd Rentals Online
(www.adminstudio.com) features “XXX DVD Rentals.”
f. The website of Screen Junkies (www.screenjunkies.com) states:
Thumbnail galleries feature a one-click accessibility to
…the best XXX DVD rentals.
g. The website fightdivx.com (www.fightdivx.com) states:
They [WantedList.com] offer a Free 10-day free trial to test
out their XXX DVD Rentals service.
h. The website of dvdrentals.yellinyovine.yi.org (http://
dvdrentals.yellinyovine.yi.org) offers “[f]ree shipping with your
XXX dvd rentals.”
i. The website of Club Eva Angelina (www.clubevaangelina.net)
states:
Rent 300 different XXX DVDs featuring Eva Angelina
today for free for 2 weeks!!
j. The website of Shyla Stylez Pics (http://shylastylezpics.com)
states:
Join Sugar DVD now for a 10 day free trial of xxx dvd
rentals to see all of these titles for free!!
k. The website of Ashley’s Sex Toys (www.ashley’ssextoys.com)
features adult “XXX DVD RENTALS.”
l. The website www.pornsamplesblog.com states:
Forget XXX dvd rentals, all you need is here!
m. The website www.flixrentals.com states:
Seriously, our flix rentals are one of the best xxx DVD
rental in the world.
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8. Excerpts from websites showing use of the phrase “xxx dvd
rentals” in the adult entertainment industry to refer to the service of rental of
dvd’s with pornographic content, retrieved from a search of WikiPages Link
Directory:11
a. The blog at www.kazper.sentual.writer.com features a
“Monthly Giveaway” and offers as a prize “A free month of XXX
DVD Rentals from either Porn on A Stick, Wanted List, or Sugar
DVD’s.”
Based on this evidence, we find that the senior attorney has met his burden to show that
the phrase “xxx dvd rentals” would be understood by the relevant public to refer to the genus of
the services, i.e., xxx dvd rentals, and therefore, is incapable of functioning as a mark for these
services.
Applicant has advanced several arguments in support of his position that XXX DVD
RENTALS is not generic for his identified services. We do not find any of them persuasive we
address them below. First, applicant argues that he is the “original creator” of the name XXX
DVD RENTALS. Even if the record reflected no use of the phrase by others, and even if
applicant were the only user of the phrase XXX DVD RENTALS, it would not be dispositive,
where here, the term unquestionably conveys a generic connotation. See In re Active Ankle
Systems Inc., 83 USPQ2d 1532, 1538 (TTAB 2007) (“Even if applicant was the first and/or sole
use of a generic term or phrase, … that does not entitle applicant to register such a term or phrase
as a mark.”).
Second, applicant questions how the Office allowed registration of a similar mark for
similar adult services. Even though the mark in that registration may “have some characteristics
similar” to the mark herein, as the Federal Circuit has stated, “the PTO’s allowance of such prior

11 Exhibits to Office Actions issued June 3, 2011.
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registrations does not bind the Board or this court.” In re Nett Designs Inc., 236 F.3d 1339, 57
USPQ2d 1564, 1566 (Fed. Cir. 2001). It is well settled that each case must be decided on its
own facts, based on the particular mark, the particular goods or services, and the particular
record in each application.
Applicant also argues that “there is no definition of XXX DVD RENTALS in the
dictionary as it isn’t a common phrase thus it is a unique name!” Br. p. 2. The fact that a
descriptive or generic name is not found in the dictionary is not controlling on the question of
registrability. In re Gould Paper Corp., 834 F.2d 1017, 5 USPQ2d 1110 (Fed. Cir. 1987); In re
Orleans Wines, Ltd., 196 USPQ 516 (TTAB 1977).
Applicant further argues that his mark is not descriptive or generic because there are
other terms that describe his services. That there are other ways to describe applicant’s services
does not mean that applicant’s mark is not descriptive or generic. See Roselux Chemical Co. v.
Parson Ammonia Co., 299 F. 2d 855, 132 USPQ 627, 632 (CCPA) (“Sudsy Ammonia” held to
be common descriptive name for aqua ammonia containing synthetic detergent despite the fact
that the product had other names).
To the extent applicant argues certain constitutional rights such as “free speech,”
“fairness” and “censorship,” we point out that the Board is an administrative tribunal of limited
jurisdiction empowered solely to determine the registrability of trademarks. See Trademark Act
Sections 17, 18, 20, and 24, 15 U.S.C. §§ 1067, 1068, 1070, and 1092. The Board is not
empowered to determine the right to use, nor may it decide broader constitutional questions. See
Paramount Pictures Corp. v. White, 31 USPQ2d 1768, 1771 n. 5 (TTAB 1994).
Serial No. 77935888

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Last, while we recognize the value of a Federal trademark registration, to be registrable a
mark must comply with all relevant statutes and requirements. Here, applicant mark is
unregistrable because it is incapable of distinguishing applicant’s services from those of others.
Acquired Distinctiveness
Because we have found the phrase XXX DVD RENTALS to be generic of applicant’s
identified services, and thus incapable of distinguishing applicant’s services from those of others,
we need not address the sufficiency of the evidence supporting applicant’s Section 2(f) claim of
acquired distinctiveness.
Verified Specimen
Applicant was required to submit a substitute specimen because his initial specimen was
merely a rendering of the applied-for mark. Applicant was advised that any new specimen must
be “verified with an affidavit or signed declaration under 37 C.F.R. § 2.20, indicating that it was
in use in commerce as early as the filing date of the application. Applicant’s substitute specimen
was not accompanied by such affidavit or declaration. There was some confusion as to whether
applicant conceded this requirement when he did not address it in his main brief. Apparently, he
assumed he had complied by virtue of his submission of additional specimens which also were
not verified. Although it is apparent that applicant’s failure to comply with the requirement was
solely due to his misunderstanding of the examining attorney’s requirement, even so, 37 C.F.R. §
2.20 requires that substitute specimens must be accompanied by an affidavit or declaration
verifying use. Because applicant did not submit a proper verification statement supporting his
substitute specimens, the requirement remains unsatisfied.
Decision: The refusal under Section 2(e)(1) of the Act on the ground that the proposed
mark is generic is affirmed, and the requirement for a verified substitute specimen is affirmed.