F+W Media, Inc.

Trademark Trial and Appeal BoardJul 9, 2013

No. 85223604 (T.T.A.B. Jul. 9, 2013)

THIS OPINION IS NOT A PRECEDENT OF THE TTAB Mailed: July 9, 2013 UNITED STATES PATENT AND TRADEMARK OFFICE _____ Trademark Trial and Appeal Board _____ In re F+W Media, Inc. _____ Serial No. 85223604 _____ Michael G. Frey of Wood, Herron & Evans, LLP for applicant. Brian Pino, Trademark Examining Attorney, Law Office 114 (K. Margaret Le, Managing Attorney). _____ Before Seeherman, Wellington, and Hightower, Administrative Trademark Judges. Opinion by Hightower, Administrative Trademark Judge: On January 21, 2011, applicant F+W Media, Inc. applied to register on the Principal Register the mark BANK NOTE REPORTER (in standard character form) for “magazines featuring collectible paper money, stocks, and bonds from around the world” in International Class 16.1 The examining attorney has refused registration on the grounds that the mark is generic or, alternatively, merely descriptive of the identified goods pursuant 1 Application Serial No. 85223604, alleging first use and first use in commerce at least as early as April 2010, under Section 1(a) of the Trademark Act, 15 U.S.C. § 1051(a). Serial No. 85223604 2 to Trademark Act Section 2(e)(1), 15 U.S.C. § 1052(e)(1), and without a sufficient showing of acquired distinctiveness to allow registration under Section 2(f) of the Act, 15 U.S.C. § 1052(f). Applicant timely appealed. Both the applicant and the examining attorney filed briefs, and applicant filed a reply brief. Genericness A mark is a generic name if it refers to the class or category of goods and/or services on or in connection with which it is used. In re Dial-A-Mattress Operating Corp., 240 F.3d 1341, 57 USPQ2d 1807, 1811 (Fed. Cir. 2001); In re Tennis Industry Ass’n, 102 USPQ2d 1671, 1674 (TTAB 2012). The critical issue is to determine whether the record shows that members of the relevant public primarily use or understand the term sought to be registered to refer to the genus of services in question. H. Marvin Ginn Corp. v. Int’l Ass’n of Fire Chiefs, Inc., 782 F.2d 987, 228 USPQ 528, 530 (Fed. Cir. 1986) (“Marvin Ginn”); In re Women’s Publ’g Co., 23 USPQ2d 1876, 1877 (TTAB 1992). When a proposed mark is refused registration as generic, the Patent and Trademark Office bears the burden of proving genericness by “clear evidence.” In re Hotels.com, L.P., 573 F.3d 1300, 91 USPQ2d 1532, 1533 (Fed. Cir. 2009); In re Merrill Lynch, Pierce, Fenner & Smith, Inc., 828 F.2d 1567, 4 USPQ2d 1141, 1143 (Fed. Circ. 1987) (“Merrill Lynch”). Doubt on the issue of genericness is resolved in favor of the applicant. In re DNI Holdings Ltd., 77 USPQ2d 1435, 1437 (TTAB 2005). Serial No. 85223604 3 The examining attorney argues that BANK NOTE REPORTER is the apt name of applicant’s goods. Aptness, however, is insufficient to prove genericness. The Federal Circuit Court of Appeals has drawn a clear distinction between an apt name and a generic one, providing the following example by way of illustration: AMERICAN BAR ASSOCIATION is certainly an apt name for a national association of lawyers; however, it is not used as a generic name for national associations of lawyers (see, e.g., NATIONAL ASSOCIATION OF WOMEN LAWYERS; FEDERAL BAR ASSOCIATION; AMERICAN HEALTH LAWYERS ASSOCIATION; NATIONAL LAWYERS ASSOCIATION). In re American Fertility Soc’y, 188 F.3d 1341, 51 USPQ2d 1832, 1836 (Fed. Cir. 1999); see also In re Country Music Ass’n Inc., 100 USPQ2d 1824, 1828 (TTAB 2011). Our primary reviewing court has set forth a two-step inquiry to determine whether a mark, including a magazine title like the one at issue here, is generic: “First, what is the class of publications or magazines at issue? Second, is the title understood by the relevant public to refer primarily to that class of magazines?” Marvin Ginn, 228 USPQ at 531-32 (holding FIRE CHIEF not generic for “a magazine directed to the field of fire fighting”). Evidence of the public’s understanding of a term may be obtained from any competent source, including purchaser testimony, consumer surveys, listings in dictionaries, trade journals, newspapers, and other publications. Merrill Lynch, 4 USPQ2d at 1143. Our first task under Marvin Ginn is to determine, based on the evidence of record, the genus of applicant’s goods. Although applicant suggests that its goods Serial No. 85223604 4 can be classified as “hobby magazines concerning paper money collecting,”2 we find that the class of magazines in this case is adequately defined by the goods identified in the application: “magazines featuring collectible paper money, stocks, and bonds from around the world.” See In re Reed Elsevier Props. Inc., 482 F.3d 1376, 82 USPQ2d 1378, 1380 (Fed. Cir. 2007); In re Trek 2000 Int’l Ltd., 97 USPQ2d 1106, 1112 (TTAB 2010). The second part of the Marvin Ginn test is whether the term sought to be registered is understood by the relevant public primarily to refer to that class of magazines. Although neither applicant nor the examining attorney directly identified the relevant purchasing public for applicant’s goods, we conclude that collectors of currency, and particularly of paper money, are the consumers of applicant’s goods. See Affidavit of James Ogle, applicant’s chief financial officer (“Ogle Affidavit”), at 1 ¶ 7 (stating that applicant’s mark “is well-known among currency collectors, particularly, paper money collectors”).3 This conclusion is supported by applicant’s specimen, a copy of its magazine stating on the masthead: “No. 1 Guide for Paper Money Collectors.” With this in mind, we must ascertain whether the designation BANK NOTE REPORTER is understood by the relevant purchasing public as primarily referring to a class of magazines featuring collectible paper money, stocks, and bonds from around the world. We begin by finding that the designation BANK NOTE REPORTER is a phrase that should be analyzed according to the test set forth in 2 Applicant’s Brief at 7. 3 October 19, 2011 response to Office action at 2. Serial No. 85223604 5 In re American Fertility Soc’y, 51 USPQ2d at 1836, and further clarified in In re Dial-A-Mattress Operating Corp., 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.’” A. Evidence of the Relevant Purchasing Public’s Understanding We turn now to the evidence of record. Sources competent to show the relevant purchasing public’s understanding of a contested term include purchaser testimony, consumer surveys, dictionary definitions, trade journals, newspapers, and other publications. In re Dial-A-Mattress Operating Corp., 57 USPQ2d at 1810; In re Bed & Breakfast Registry, 791 F.2d 157, 229 USPQ 818, 819 (Fed. Cir. 1986). The examining attorney made of record two dictionary definitions of the term “bank note,” one of which is “Paper currency of a country issued by its central bank.”4 The record also contains numerous clearly generic references to “bank note” and “banknote,” including on applicant’s own website and specimen.5 The record does not contain any contemporary use of the phrase “BANK NOTE REPORTER” except in reference to applicant’s goods. There are, however, a handful of references to publications using that title in the early- to mid- 4 November 8, 2011 Office action at 3 (from BusinessDictionary.com); see also April 22, 2011 Office action, at 4-5 (“A note issued by a bank representing its promise to pay a specific sum to the bearer on demand and acceptable as money.”). 5 See, e.g., April 22, 2011 Office action at 15-21 (Bank Note Reporter article titled “Samoa Takes ‘Bank Note of the Year’” and World Coin News articles titled “Sri Lanka to Dump Bank Note for Coin” and “It’s Coins Vs. Bank Notes in Sweden,” all three from applicant’s website Numismaster.com); November 8, 2011 Office action at 2 (screenshot of website titled “Banknote$ of the modern world”), 14-22 (Wikipedia.com entry titled “Banknote”). Serial No. 85223604 6 19th century. This evidence includes two screenshots from the University of California Digital Library, one referencing a supplement to “Thompson’s Bank note reporter” published in 18506 and the other to “The autographical counterfeit detector: companion to the bank note reporter” published in 1852.7 Screenshots from other websites explain that “bank note reporters” were published beginning in 1830 to help merchants and bankers distinguish between legitimate and counterfeit state-issued bank notes, but that such guides were out of publication by 1866, when state-issued notes were no longer used.8 It appears that these guides were different from applicant’s magazines and were not marketed to consumers or collectors. The record before us does not contain a single modern example of use of “bank note reporter” other than in reference to applicant’s goods. Moreover, record evidence indicates that applicant’s goods are the only species in the small universe of “magazines featuring collectible paper money, stocks, and bonds from around the world” that the relevant public calls by the name BANK NOTE REPORTER. Applicant’s Internet evidence includes the following:9 6 June 5, 2012 final Office action at 9-10. 7 Id. at 20-21. 8 See id. at 11-12, 13-19 (referencing publication dates in the 1830s through 1850s for “the Bank Note Reporter,” “Dye’s American Bank Note Reporter,” and “Thompson’s Bank Note Reporter”). 9 This evidence is also relevant to the question of acquired distinctiveness, discussed infra. Serial No. 85223604 7 • A printout from WikiFAQ.com titled “Paper Currency FAQ.” The printout includes the following partial response to the question “Are there any relevant periodicals?” “The main periodicals are Bank Note Reporter and the IBNS [International Bank Note Society] Journal. The SPMC [Society of Paper Money Collectors] and LANSA [Latin American Paper Money Society] have periodicals, too.” The response also references Green Sheets from “The Currency Dealer Newsletter.”10 • A page on “Coin Collecting Magazines” from BluePage.org listing “Coins Magazine,” “World Coin News,” “Coin Prices,” “Bank Note Reporter,” and “Numismatic News.” Applicant’s publication is described on this page as “probably the best monthly magazine for paper currency collectors. In every volume, you can expect to find reports, values, articles and other information about paper currency collection. There is usually a great deal of historical information which is enjoyable for the history buff.”11 • “Paper Money Guide Recommended Reading” from “Paper Money Guide, the US Currency Collector Resource” (papermoneyguide.com). This site references online resources, currency books, and three currency magazines: Bank Note Reporter (“Complete monthly guide for paper money collectors”); Greensheet (“the Currency Dealer Newsletter”); and Paper Money Values (“80+ page bi-monthly magazine that offers collectors current values for 17,000 U.S. notes actively collected and traded.”).12 • A two-page list of currency references from the Collectors Universe U.S. & world currency forum (forums.collectors.com) which includes three magazines and periodicals: 1) “Bank Note Reporter” published by Krause Publications13 2) “Paper Money Values” published by Coin World 3) “Paper Money: The magazine of the SPMC”14 10 October 19, 2011 response to Office action, Exhibit C at 24. 11 Id., Exhibit D at 33. 12 Id. at 35. 13 Krause Publications is applicant’s magazine publishing division. Reply Brief at 12. 14 October 19, 2011 response to Office action, Exhibit D at 37. Serial No. 85223604 8 B. Third-Party Registrations Between them, the applicant and the examining attorney made of record a large number of third-party registrations incorporating “REPORTER” and similar terms for magazines in Class 16, on-line magazines in Class 41, and other goods. The examining attorney makes the point that “reporter” is disclaimed from each of the following registrations on the Supplemental Register, indicating the generic nature of that term: FEDERAL EQUAL OPPORTUNITY REPORTER,15 WINE REPORTER,16 ACTORS REPORTER,17 and THE LIBERAL EDUCATION REPORTER.18 Applicant, in turn, offers examples of marks with the “______ REPORTER” structure that are registered on the Principal Register, albeit some with “reporter” disclaimed, for Class 16 periodical publications. These include TOBACCO REPORTER,19 LAB REPORTER,20 REINSURANCE REPORTER,21 THE FAMILY LAW REPORTER,22 and THE TRADEMARK REPORTER,23 all but the first of which were registered on the basis of acquired distinctiveness under Trademark Act 15 Registration No. 1492746. 16 Registration No. 3808758. 17 Registration No. 3665315. 18 Registration No. 2880527. Two other registrations of record, for U.S. INVESTMENT REPORTER (Registration No. 3022196) and PSYCHIATRIC REPORTER (Registration No. 3074879), have been cancelled. 19 Registration No. 2177879. 20 Registration No. 2034907. 21 Registration No. 1301622. 22 Registration No. 3930703. 23 Registration No. 0626226. Serial No. 85223604 9 Section 2(f). Applicant also submitted printouts of many marks on both registers for otherwise similar formatives with “NEWS,” “MAGAZINE,” or “JOURNAL” in place of “REPORTER.” Acknowledging that these registrations do not mandate registration of its own mark, applicant contends that they are probative to the extent they show how similar marks have been treated by the Trademark Office.24 Although applicant is correct that we are not bound by these registrations, we find them to be persuasive evidence that the Office has often treated marks analogous to BANK NOTE REPORTER as capable of acquiring trademark significance rather than as generic. See, e.g., In re Waverly Inc., 27 USPQ2d 1620 (TTAB 1993) (finding MEDICINE not generic, but a highly descriptive term that had acquired distinctiveness, for medical journals); In re Women’s Publ’g Co., 23 USPQ2d at 1877 (finding DECORATING DIGEST not generic for magazines but descriptive with secondary meaning).25 As we have said: “A certain degree of flexibility and an understanding of the commercial realities of both the publishing business and of the business or industry to which a particular publication is directed are very helpful in making the necessarily subjective decision whether a particular title qualifies as a valid trademark. From the publisher’s point of view, it is important to select a title, especially for a trade or technical journal, that conveys some idea of the subject matter of the contents; without at least a suggestive title, it would be hard for the publisher to reach and interest the relatively small (as compared to the general population) number of potential subscribers. From the point of view of competitors of the publisher, it is important not to grant, by way of a trademark 24 Applicant’s Brief at 13. 25 But see In re Kalmbach Publ’g Co., 14 USPQ2d 1490 (TTAB 1989) (finding RADIO CONTROL BUYERS GUIDE generic for magazines). Serial No. 85223604 10 registration, rights so broad and encompassing as to render unavailable, at least without the threat or possibility of litigation, the most apt or the only appropriate words to describe a journal’s contents. “From the viewpoint of subscribers, we must recognize that there is a need to locate publications of potential professional interest (which tends toward tolerating greater suggestiveness in titles) while, at the same time, permitting competition among publications (which tends toward forbidding proprietary acquisition of titles that would foreclose effective competition by the preemption of the most, or only, effective names) and enabling subscribers to differentiate among publications in the same field (which tends toward protecting names by their registration as marks whenever this is appropriate).” Waverly, 27 USPQ2d at 1623 (quoting In re Distribution Codes, Inc., 199 USPQ 508, 511 (TTAB 1978)). Genericness is a fact-intensive determination and the Board’s conclusion must be governed by the record which is presented to it. In re Country Music Ass’n, Inc., 100 USPQ2d at 1832. As noted above, the evidentiary burden of establishing that a term is generic rests with the Office and the showing must be based on clear evidence. Merrill Lynch, 4 USPQ2d at 1143. Based on this record, we find that the Office has not met its difficult burden of establishing by clear evidence that the designation BANK NOTE REPORTER, as a whole, is used by the public to refer to the class of magazines featuring collectible paper money, stocks, and bonds from around the world, and therefore is generic. We resolve any doubt, as we must, in applicant’s favor. Serial No. 85223604 11 Descriptiveness and Acquired Distinctiveness Because we find that BANK NOTE REPORTER in its entirety is not generic for applicant’s goods,26 we next address the refusal based on descriptiveness and whether applicant has submitted sufficient evidence to demonstrate that its mark has become distinctive of its goods in commerce under Section 2(f) of the Trademark Act. In this case, applicant amended its application to include a claim of acquired distinctiveness after registration was initially refused on the ground of mere descriptiveness under Section 2(e)(1) of the Act.27 When an applicant responds to a refusal based on mere descriptiveness of a mark by claiming acquired distinctiveness, such amendment to seek registration under Section 2(f) of the Trademark Act is considered an admission that the proposed mark is not inherently distinctive and, thus, not registrable on the Principal Register absent proof of acquired distinctiveness. See Yamaha Int’l Corp. v. Hoshino Gakki Co., 840 F.2d 1572, 6 USPQ2d 1001, 1005 (Fed. Cir. 1988). In addition, applicant characterizes its mark as descriptive in its briefing.28 We therefore find BANK NOTE REPORTER to be merely descriptive of applicant’s goods. 26 See discussion infra about genericness of REPORTER per se. 27 October 19, 2011 response to Office action. 28 See Applicant’s Brief at 16 (“For the foregoing reasons, Applicant submits that its mark, BANK NOTE REPORTER, is not generic, but is instead a descriptive mark which has acquired distinctiveness.”); Reply Brief at 5 (“Descriptive designations, like Applicant’s mark, describe something about the goods – a characteristic, quality or feature, for example.”). Serial No. 85223604 12 The applicant has the burden to establish secondary meaning by a preponderance of the evidence. Yamaha Int’l Corp., 6 USPQ2d at 1008. The amount and character of evidence required to establish acquired distinctiveness depends on the facts of each case and particularly on the nature of the mark sought to be registered. In re Owens-Corning Fiberglas Corp., 774 F.2d 1116, 227 USPQ 417, 422 (Fed. Cir. 1985); Roux Labs., Inc. v. Clairol Inc., 427 F.2d 823, 166 USPQ 34, 39 (CCPA 1970); In re Gammon Reel, Inc., 227 USPQ 729, 730 (TTAB 1985). Typically, more evidence is required where a mark is so highly descriptive that purchasers seeing the matter in relation to the named goods or services would be less likely to believe that it indicates source in any one party. See, e.g., In re Seaman & Assocs. Inc., 1 USPQ2d 1657, 1659 (TTAB 1986); In re Packaging Specialists, Inc., 221 USPQ 917, 919 (TTAB 1984). The applicant may present any competent evidence to establish that a mark has acquired distinctiveness. In addition to the evidence discussed supra with respect to genericness, applicant submitted the following evidence relevant to our secondary meaning analysis: • Ogle Affidavit. The affidavit from applicant’s chief financial officer, dated October 14, 2011, states in part that: ¶ 2. “The mark was first used in 1973, and has been in continuous use by Applicant and its predecessors-in-interest since then as a trademark identifying the source of a magazine whose subject matter includes collectible paper money, stocks, and bonds from around the world.” ¶ 3. “The magazine is presently published in both print and electronic formats. Circulation figures have varied over the years. Presently, the magazine’s print circulation is approximately 4200.” Serial No. 85223604 13 ¶ 5. “Applicant also promotes its BANK NOTE REPORTER mark by sponsoring the Chicago Paper Money Expo, an annual event which has been held seventeen times through 2011. The BANK NOTE REPORTER mark is displayed prominently at the expo.” ¶ 6. “Applicant’s BANK NOTE REPORTER magazine and mark also garner recognition through Applicant’s bestowal of the Bank Note Reporter Most Inspired Exhibit Award, given annually at the International Paper Money Show.”29 • Third-party recommendations: o an article titled “How to Buy Banknotes” printed from eHow.com that includes the following instruction: “Watch for information on upcoming shows in local publications or subscribe to monthly publications, such as the ‘Bank Note Reporter,’ which provide current prices for bank notes and information on how to buy and sell paper money.”30 o a page titled “Paper Money Collecting FAQ 1.3. What’s the best way to get started collecting?” that begins: “Probably the best way to start is to subscribe to Bank Note Reporter.” The answer describes applicant’s magazine and characterizes it as “a very good source of information.”31 o a printout from the Boy Scouts of America website on coin collecting referencing applicant’s magazine among the periodicals on its list of resources.32 The examining attorney questions whether these sites are truly independent or paid by the applicant,33 but the references are not from applicant’s own website Numismaster.com and there is no indication that they are sponsored or authored by applicant. Also, a party’s own promotional activities can be used as evidence of 29 October 19, 2011 response to Office action at 2-3. 30 Id., Exhibit C at 30. 31 Id. at 15. The name and date below the answer are Numismatica / 15 Sep 2003, and the URL is http://www.limunltd.com/numismatica/paper-money-faq/paper-money-faq- 1.03.html. 32 Id., Exhibit D at 55. 33 Examiner’s Brief at unnumbered pages 15-16. Serial No. 85223604 14 acquired distinctiveness, so this evidence would still have probative value even if applicant were somehow involved in the mentions of BANK NOTE REPORTER. The record evidence indicates that the universe of paper money collectors is a tiny one. Applicant made of record a printout from the website of the Society of Paper Money Collectors stating that it has “over 1,750 members from around the world,”34 while the Wikipedia article provided by the examining attorney states: “There are many different organizations and societies around the world for the hobby [banknote collecting], including the International Bank Note Society (IBNS), which currently has over 1800 member [sic] in more than 100 countries.”35 Applicant argues that its monthly circulation of 4200 should be viewed in context of the size of the relevant consumer market.36 Although applicant does not indicate how many of its subscribers are in the United States, we note that applicant’s address is in Iola, Wisconsin, and its specimen and website are in English. To address certain arguments made by the examining attorney, first, the examining attorney contends that applicant’s claim of nearly 40 years of use “is not accurate as the dates of use in the application as filed only show use since 2010.”37 It is not clear to us why applicant used the 2010 date in its current application, but applicant may rely on the affidavit of its chief financial officer to prove use by it and its predecessors-in-interest dating to 1973. See, e.g., Threshold.TV, Inc. v. 34 October 19, 2011 response to Office action, Exhibit B at 13 (printout from spmc.org). 35 November 8, 2011 Office action at 21. 36 See Reply Brief at 12. 37 Examiner’s Brief at unnumbered page 13. Serial No. 85223604 15 Metronome Enters., Inc., 96 USPQ2d 1031, 1036 (TTAB 2010); Ohio State Univ. v. Ohio Univ., 51 USPQ2d 1289, 1294 (TTAB 1999). We also note that applicant’s expired registration for the following composite mark: for “magazines featuring collectible paper money, stocks, and bonds from around the world” in International Class 16 claimed first use and first use in commerce as of April 28, 1973.38 Second, the fact that applicant disclaimed the phrase “SPONSORED BY BANK NOTE REPORTER” apart from the following registered mark:39 neither precludes applicant from obtaining registration of the mark in a subsequent application nor mandates a holding that applicant’s mark BANK NOTE 38 October 19, 2011 response to Office action, Exhibit A at 10-11, Registration No. 2415436 (with “REPORTER” disclaimed), registered on the Principal Register pursuant to Trademark Act Section 2(f) on December 26, 2000, cancelled August 17, 2011. The March 2, 2010 assignment from registrant Krause Publications, Inc. to applicant F+W Media, Inc. is recorded in the Office Records at Reel/Frame Numbers 4158/0667. 39 April 22, 2011 Office action at 2-3, Registration No. 2491858 for “arranging and conducting trade shows regarding paper money collectibles” in International Class 35, issued September 25, 2001, Combined Declaration of Use and Incontestability under Sections 8 & 15 of the Trademark Act Accepted and Acknowledged August 30, 2007, renewed October 17, 2011. Serial No. 85223604 16 REPORTER lacks secondary meaning.40 By asserting a claim under Section 2(f), applicant admits that its mark is descriptive, so the fact that it disclaimed admittedly descriptive material has no significance, particularly since the prior registration issued in 2001. Even if the term lacked source-identifying significance 12 years ago, that has no real bearing on a determination of acquired distinctiveness today. The examining attorney makes few other specific criticisms of applicant’s secondary meaning evidence, other than that it is insufficient because applicant’s mark is highly descriptive and that it fails to show that customers view the mark as a source indicator.41 We do not share the latter view, given that all of the evidence of record shows applicant’s mark used in the modern era as the title of a specific magazine; we find no evidence that customers view the mark other than as referring to a magazine from a single, even if anonymous, source. Nat’l Pork Bd. v. Supreme Lobster & Seafood Co., 96 USPQ2d 1479, 1495 (TTAB 2010). We find the undisputed evidence of applicant’s exclusive and continuous use of its mark for 40 years, the apparently widespread circulation of its magazine using that mark among the niche market of currency collectors, and circumstantial 40 Although applicant may have agreed to disclaim the term in prosecuting a prior application, we do not know the circumstances of that prosecution and only have the present record on which to make our determination. In re John Harvey & Sons Ltd., 32 USPQ2d 1451, 1455 (TTAB 1994) (“Applicant’s prior registrations which include disclaimers or claims of acquired distinctiveness are of little moment. We are not privy to the files of these registrations; moreover, the Board is not bound by any such prior determinations by the Office.”). 41 See Examiner’s Brief at unnumbered pages 12-14. Serial No. 85223604 17 evidence of recognition of the mark by third parties taken together demonstrate that applicant’s mark has acquired distinctiveness under Lanham Act § 1052(f). However, even when a mark has been shown to have acquired distinctiveness, generic matter in the mark must still be disclaimed. We note that applicant admits that “the term REPORTER, standing alone, may be generic for a particular type of periodical.”42 Furthermore, applicant’s own submissions of third- party registrations that issued pursuant to Section 2(f) with a disclaimer of REPORTER show that this term has been treated as being generic for publications. We also take judicial notice of a definition of the noun “reporter” in the online Oxford English Dictionary meaning “in the titles of newspapers and periodical publications.”43 Therefore, in light of applicant’s admission, the third-party registrations of record disclaiming the term “reporter,” and this dictionary definition, we find that REPORTER is generic, and that the mark cannot be registered without a disclaimer of this term. Accordingly, the refusal of registration pursuant to Section 2(e)(1) is affirmed in the absence of such a disclaimer. Decision: The refusal under Section 2(e)(1) of the Trademark Act on the ground that the proposed mark is generic for the goods identified in the application is reversed. We also find that the mark has acquired distinctiveness. However, because we have found that the term REPORTER is generic for the applied-for 42 Applicant’s Brief at 12. 43 Retrieved from http://www.oed.com/view/Entry/162925?redirectedFrom=reporter#eid. The Board may take judicial notice of dictionary definitions, Univ. of Notre Dame du Lac v. J.C. Gourmet Food Imps. Co., 213 USPQ 594, 596 (TTAB 1982), aff’d, 703 F.2d 1372, 217 USPQ 505 (Fed. Cir. 1983), including online dictionaries that exist in printed format or have regular fixed editions. In re Red Bull GmbH, 78 USPQ2d 1375, 1378 (TTAB 2006). Serial No. 85223604 18 goods, the mark cannot be registered pursuant to the provisions of Section 2(f) without a disclaimer of this word, and therefore the refusal under Section 2(e)(1) must be affirmed in the absence of a disclaimer. Applicant is allowed until thirty (30) days from the date of this decision to submit to the Board a disclaimer (in proper form) of the word “reporter,”44 in which case this portion of this decision will be set aside. Following submission of the required disclaimer, the application will be forwarded to publication for registration on the Principal Register pursuant to Section 2(f) of the Trademark Act. 44 The standardized printing format for the disclaimer is: “No claim is made to the exclusive right to use “REPORTER” apart from the mark as shown.” Trademark Manual of Examining Procedure § 1213.08(a)(i) (April 2013).