Madetoorder, Inc.

Trademark Trial and Appeal Board

Jun 29, 2012

No. 77861639 (T.T.A.B. Jun. 29, 2012)

Mailed: June 29, 2012

UNITED STATES PATENT AND TRADEMARK OFFICE
Trademark Trial and Appeal Board
________

In re Madetoorder, Inc.
________

Serial No. 77861639
Filed October 30, 2009
_______

Raymond E. Roberts, Patent Venture Group, for applicant.

Michael W. Baird, Managing Attorney, Law Office 116.1
_______

Before Seeherman, Mermelstein, and Ritchie, Administrative
Trademark Judges.

Opinion by Mermelstein, Administrative Trademark Judge:

Madetoorder, Inc. seeks registration of MADETOORDER
(in standard characters)2 for “on-line design services for
others in the field of personalized and custom design
transfers, namely, text, pictures and graphics for

1 The managing attorney was assigned to this case on appeal,
after the retirement of Cynthia Sloan, the originally-assigned
examining attorney. To simplify matters, we refer to the
managing attorney and examining attorney collectively as the
“examining attorney” or “he.”
2 The drawing in the application depicts the mark as
“MadeToOrder.” Because a standard-character mark covers the
wording in any font style, size, or color, Citigroup Inc. v.
Capital City Bank Group Inc., 637 F.3d 1344, 98 USPQ2d 1253,
1258-59 (Fed. Cir. 2011), including any capitalization scheme, we
use our standard convention of printing the mark in all capital
letters in this opinion, as applicant itself has done in its
brief.
THIS DECISION IS NOT A
PRECEDENT OF THE TTAB
Serial No. 77861639

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imprinting on apparel,” in International Class 42.3
Applicant claimed the benefit of Trademark Act section 2(f)
in its application as originally filed.
The examining attorney issued a final refusal to
register on the ground that applicant’s mark is merely
descriptive pursuant to Trademark Act Section 2(e)(1), and
that applicant’s claim of acquired distinctiveness under
Trademark Act Section 2(f) is unacceptable because the mark
is generic, and in the alternative, because the evidence is
insufficient to show that the mark has acquired
distinctiveness.
We affirm the refusal to register.
I. Applicable Law
To the extent relevant here, the Trademark Act
provides as follows:
No trademark by which the goods[4] of the
applicant may be distinguished from the goods of
others shall be refused registration on the
principal register on account of its nature
unless it —

...

(e) Consists of a mark which, (1) when used on
or in connection with the goods of the

3 Based on use in commerce, and claiming first use and use in
commerce as of August 9, 1999.
4 References in Trademark Act Section 2 to trademarks used on
goods are construed to apply to service marks used in connection
with services. Trademark Act § 3.
Serial No. 77861639

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applicant is merely descriptive ... of
them....

(f) Except as expressly excluded ... nothing
herein shall prevent the registration of a
mark used by the applicant which has become
distinctive of the applicant’s goods in
commerce. The Director may accept as prima
facie evidence that the mark has become
distinctive, as used on or in connection
with the applicant’s goods in commerce,
proof of substantially exclusive and
continuous use thereof as a mark by the
applicant in commerce for the five years
before the date on which the claim of
distinctiveness is made. ...

Trademark Act § 2; 15 U.S.C. § 1052.
The ultimate issue before us is whether applicant’s
mark “has become distinctive of applicant’s [services] in
commerce.” Trademark Act § 2(f). “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.”5 Cold War Museum, Inc. v. Cold War Air

5 A claim to registrability under Trademark Act Section 2(f) is
essentially an admission of nondistinctiveness, usually (as here)
because the mark is merely descriptive of the identified goods or
services. “An applicant can avoid the admission that its mark is
not inherently distinctive if it makes the claim of acquired
distinctiveness in the alternative and files an appeal of the
refusal on the basis that the mark is not inherently distinctive
(e.g., the mark is merely descriptive).” In re Thomas Nelson
Inc., 97 USPQ2d 1712, 1713 (TTAB 2011).
In the subject application, the claim of acquired
distinctiveness was made in the application as originally filed
without reservation, and applicant has not made or preserved an
alternative claim that its mark is inherently distinctive.

Serial No. 77861639

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Museum, Inc., 586 F.3d 1352, 92 USPQ2d 1626, 1629 (Fed.
Cir. 2009) (citing Yamaha Int’l Corp. v. Hoshino Gakki Co.
Ltd., 840 F.2d 1572, 6 USPQ2d 1001, 1005 (Fed. Cir. 1988)).
To this extent, Trademark Act Section 2(f) is remedial in
nature; it permits registration of some marks which would
otherwise be found unregistrable — usually under
Sections 2(e)(1), (2), and (4) — provided the applicant can
show that its mark has acquired distinctiveness. See Two
Pesos v. Taco Cabana, Inc., 505 U.S. 763, 23 USPQ2d 1081,
1083-84 (1992). Unlike the other provisions of Trademark
Act Section 2, Section 2(f) is not itself a ground for
refusal of registration, so a refusal to accept a showing
of acquired distinctiveness under Section 2(f) in
mitigation of a refusal to register results in maintenance
of the appropriate underlying refusal under Section 2(e)
(or other relevant provision of the Trademark Act).
In this case, the examining attorney declined to
accept applicant’s Section 2(f) claim for two reasons:
First, the mark is asserted to be generic. Although
genericness is not mentioned in Trademark Act Section 2(f),
generic terms cannot, by definition, “become distinctive of

Indeed, applicant concedes in its brief that the applied-for mark
is “at least descriptive” of its services. App. Br. at 7.
Accordingly, we begin with the presumption that applicant’s mark
is descriptive.
Serial No. 77861639

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the applicant’s goods in commerce,” Trademark Act § 2(f),
and such terms are categorically excluded from registration
under Section 2(f) or any other provision. In re Northland
Aluminum Prods., 777 F.2d 1556, 227 USPQ 961, 964 (Fed.
Cir. 1985) (“Having affirmed the Board’s conclusion that
BUNDT is a [generic] name, ... evidence of secondary
meaning can not change the result.”); In re Noon Hour Food
Prods. Inc., 88 USPQ2d 1172, 1181 (TTAB 2008) (“a generic
term cannot be appropriated exclusively as a trademark
irrespective of the length of use or level of promotional
efforts”); J. Thomas McCarthy, MCCARTHY ON TRADEMARKS AND UNFAIR
COMPETITION, § 12:1 (4th ed. rev. 2012) (“The terms ‘generic’
and ‘trademark’ are mutually exclusive”). Second, the
examining attorney contends that if the term is not
generic, applicant’s Section 2(f) evidence is insufficient
to demonstrate that it “has become distinctive of
applicant’s goods....” In other words, the examining
attorney objected to the quantity or quality of applicant’s
evidence as not being sufficient to demonstrate the mark’s
distinctiveness.6

6 Thus, while the examining attorney (properly) sets out two
separate arguments as to registrability, the statutory basis
underlying both is that the mark is merely descriptive under
Trademark Act Section 2(e)(1): The examining attorney rejects
applicant’s Section 2(f) claim, arguing that the mark is generic

Serial No. 77861639

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A. Trademark Act Section 2(f)
Under Trademark Act Section 2(f), a mark which is
merely descriptive may nonetheless be registered on the
Principal Register if it has acquired distinctiveness or
“secondary meaning”:
A term which is descriptive . . . may, through
usage by one producer with reference to his
product, acquire a special significance so that
to the consuming public the word has come to mean
that the product is produced by that particular
manufacturer. This is what is known as secondary
meaning.

The crux of the secondary meaning doctrine is
that the mark comes to identify not only the
goods but the source of those goods. To
establish secondary meaning, it must be shown
that the primary significance of the term in the
minds of the consuming public is not the product
but the producer. This may be an anonymous
producer, since consumers often buy goods without
knowing the personal identity or actual name of
the manufacturer.

TRADEMARK MANUAL OF EXAMINING PROCEDURE (“TMEP”), § 1212 (8th ed.
2011) (quoting Ralston Purina Co. v. Thomas J. Lipton,
Inc., 341 F. Supp. 129, 133, 173 USPQ 820, 823 (SDNY 1972)
(citations omitted)); see also Inwood Labs., Inc. v. Ives
Labs., Inc., 456 U.S. 844, 214 USPQ 1, 4 n.11 (1982) (“To
establish secondary meaning, a manufacturer must show that,

and cannot become distinctive, and even if the mark could become
distinctive, applicant has not shown that it is. In either case,
the basis of the refusal to register is that the mark is merely
descriptive under Trademark Act Section 2(e)(1). See In re
Women’s Publ’g Co. Inc., 23 USPQ2d 1876, 1877 n.2 (TTAB 1992).
Serial No. 77861639

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in the minds of the public, the primary significance of a
product feature or term is to identify the source of the
product rather than the product itself.”).
The determination of whether a mark has acquired
distinctiveness is a question of fact, Coach Servs. Inc. v.
Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1729
(Fed. Cir. 2012) (citing Yamaha Int’l, 1581 USPQ2d at
1008), which applicant bears the burden of proving. “There
is no doubt that Congress intended that the burden of proof
[under Trademark Act Section 2(f)] should rest upon the
applicant for registration.” In re Hollywood Brands, Inc.,
214 F.2d 139, 102 USPQ 294, 295 (CCPA 1954). That burden
“increases with the level of descriptiveness; a more
descriptive term requires more evidence of secondary
meaning.” In re Steelbuilding.com, 415 F.3d 1293, 75
USPQ2d 1420, 1424 (Fed. Cir. 2005) (citing In re Bongrain
Intern. (Am.) Corp., 894 F.2d 1316, 1317, 13 USPQ2d 1727,
1727 n.4 (Fed. Cir. 1990)).
The examining attorney may consider several categories
of evidence in assessing secondary meaning, including (1)
ownership of one or more prior registrations on the
Principal Register of the same mark for the same or related
services, Trademark Rule 2.41(b); (2) a verified statement
that the mark has become distinctive of the applicant’s
Serial No. 77861639

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services by virtue of applicant’s “substantially exclusive
and continuous use” of the mark in commerce for five years
next preceding the claim, Trademark Act Section 2(f);
Trademark Rule 2.41(b); and (3) evidence of the public
perception of the mark, which may consist of direct
evidence (such as consumer surveys), or indirect evidence
from which distinctiveness may be inferred, such as
“copying, advertising expenditures, sales success, length
and exclusivity of use, [and] unsolicited media coverage.”
Steelbuilding.com, 75 USPQ2d at 1424. “On this list, no
single factor is determinative. A showing of secondary
meaning need not consider each of these elements. Rather,
the determination examines all of the circumstances
involving the use of the mark.” Id.
B. Genericness
A mark is a generic name if it refers primarily to the
class, genus or category of services in connection with
which it is used. See In re Dial-A-Mattress Operating
Corp., 240 F.3d 1341, 57 USPQ2d 1807, 1810 (Fed. Cir. 2001)
(citing H. Marvin Ginn Corp. v. Int’l Ass’n of Fire Chiefs,
Inc., 782 F.2d 987, 228 USPQ 528, 530 (Fed. Cir. 1986)).
In determining whether a mark is generic, the appropriate
focus is its primary significance to the relevant public.
Trademark Act § 14(3); Magic Wand Inc. v. RDB Inc., 940
Serial No. 77861639

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F.2d 638, 19 USPQ2d 1551, 1552-53 (Fed. Cir. 1991); H.
Marvin Ginn Corp., 228 USPQ at 530. Whether a mark is
generic is a question of fact, In re Hotels.com LP, 573
F.3d 1300, 91 USPQ2d 1532, 1533-34 (Fed. Cir. 2009), and
the examining attorney has the burden of establishing by
clear evidence that a mark is generic and thus
unregistrable. In re Merrill Lynch, Pierce, Fenner and
Smith, Inc., 828 F.2d 1567, 4 USPQ2d 1141, 1143 (Fed. Cir.
1987). Evidence of the relevant public’s understanding of
a term may be obtained from any competent source, including
testimony, surveys, dictionaries, trade journals,
newspapers, and other publications. See In re Northland
Aluminum Prods., Inc., 227 USPQ at 963.
II. Discussion
A. Genericness
1. What is the Relevant Genus of Services?
The first task in a genericness inquiry is to identify
the genus of applicant’s services. The examining attorney
suggests that the appropriate genus is “the most
fundamental aspect of the services claimed by applicant, a
custom design service.” Ex. Att. Br. at 5. By contrast,
applicant urges that the appropriate genus in this case is
its recitation of services, namely, “on-line design
services for others in the field of personalized and custom
Serial No. 77861639

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design transfers, namely, text, pictures and graphics for
imprinting on apparel.” App. Br. at 3.
In considering the genus, the Federal Circuit has
noted that
[t]he description in the registration certificate
identifies the services in connection with which
the registrant uses the mark. The Lanham Act
permits cancellation when a “registered mark
becomes the generic name for the goods or
services ... for which it is registered....” 15
U.S.C. § 1064(3). Thus, a proper genericness
inquiry focuses on the description of services
set forth in the certificate of registration.
Octocom Sys., Inc. v. Houston Computers Servs.,
Inc., 918 F.2d 937, 942, 16 USPQ2d 1783, 1787
(Fed. Cir. 1990).

Magic Wand Inc. v. RDB Inc., 19 USPQ2d at 1552. Although
it is not always the case, the Board has often found that
the relevant genus is defined by the recitation of services
in the application or registration at issue. In re Tennis
Indus. Ass’n, 102 USPQ2d 1671, 1675 (TTAB 2012) (citing In
re Trek 2000 Int’l Ltd., 97 USPQ2d 1106, 1112 (TTAB 2010)
(“the genus of goods at issue in this case is adequately
defined by applicant’s identification of goods”)); In re
Greenliant Sys. Ltd., 97 USPQ2d 1078, 1081-82 (TTAB 2010).
We agree with applicant that in this case the
appropriate genus is defined by applicant’s recitation of
services.
Serial No. 77861639

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2. Does Applicant’s Mark Refer Primarily to the
Relevant Genus?

Applicant’s mark consists of the term MADETOORDER,
without stylization or design. The examining attorney
submitted a definition of “made-to-order,” as meaning (in
the first sense) “[m]ade in accordance with particular
instructions or requirements,” www.answers.com/topic/made-
to-order (Apr. 12, 2010), see Ofc. Action, Apr. 12, 2010,
or “made according to the specific requests of a particular
person,” MACMILLAN DICTIONARY (online),
www.macmillandictionary.com/dictionary/american/made-to-
order (Nov. 3, 2010), see Ofc. Action Nov. 3, 2011.
Applicant explicitly agreed with the first definition and
did not take issue with the second. App. Resp. Oct. 11,
2011.
We find that the subject mark would be readily
perceived by potential purchasers of applicant’s services
as essentially equivalent to the phrase “made to order” (or
“made-to-order”). Cf. Minn. Mining & Mfg. Co. v.
Addressograph-Multigraph Corp., 155 USPQ 470, 472 (TTAB
1967) (“It is almost too well established to cite cases for
the proposition that an otherwise merely descriptive term
is not made any less so by merely omitting spaces between
the words. . . .”) (citations omitted). And we join
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applicant in accepting the examining attorney’s definition
as the likely meaning of the term. “Made to order” in this
context refers to something that is not “off the shelf,”
but is instead made specially for the customer, often to
the customer’s particular specifications.
The examining attorney also submitted numerous
examples of websites using the term “made to order,” many
in connection with the offering of goods and services
similar to those offered by applicant, further supporting
the likely public perception of the mark. A few examples
follow:
• thefancyattic.com — a website offering a variety of
“unique accessories and gifts,” including aprons,
bouquets, Christmas stockings, games, jewelry,
ornaments, quilts, and wedding party favors. The
list concludes with the notation “(Made to order,
design services available).”
• Dazzling Designs & Apparel Inc.:
Dazzling Designs and Apparel uses the latest
technology turning any logo or image into a
stunning crystal or rhinestone heat transfer....
By manufacturing your hotfix heat transfers on
site with our robotic equipment, we are able to
produce and ship your designs in days — not
weeks.
. . .
Browse our design Catalog to view just some of
our stock hotfix transfers. We have one of the
largest online design catalogs on the web. All
designs are made to order and completely
customizable. Pick and choose your colors and
element. If you don’t find exactly what you are
looking for, give us a call. Our customer
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service staff works closely with our art
department to ensure your designs are just what
you’re looking for.
• www.photo-coffee-mug.com:
Here at photo coffee mug, we can take any photo,
logo, image, picture, or text. [sic] Put it
onto any of our novelty gifts. We never charge
extra for scanning or sizing photographs. All of
our products are listed on the left and all the
extra transfers for these products are on the
bottom on [sic] the page. . . .
. . .
Personalized Clip Boards. Full Color, key
chains, luggage tags, golf tags and more custom
made to order using your graphics Plastic
sublimation.
• www.ioffer.com:
YOU CAN DO IT WITH . . .
Iron-On Heat Transfers
. . .
RETURNS
All of our items are “made to order" and are
unique to the buyer. Therefore we do not offer a
return policy. All sales are final. See our
feedback for ease of use, great communication and
so much more.

Ofc. Action Apr. 12, 2010 (all websites visited April 12,
2010).7
It is abundantly clear that this evidence would be
sufficient to show that MADETOORDER is descriptive of an
aspect of applicant’s “on-line design services for others

7 More such websites — particularly concentrating on “made to
order” services — were attached to this Office action, the final
Office action of November 3, 2010, and the response to
applicant’s request for reconsideration of March 17, 2011.
Serial No. 77861639

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in the field of personalized and custom design transfers,
namely, text, pictures and graphics for imprinting on
apparel,” in that applicant’s on-line services include the
design of transfers to the order and specification of its
customers (although as explained, descriptiveness is
presumed in this application even without this evidence).
But while descriptiveness will be found if the mark
immediately conveys information about a significant
feature, function, or characteristic of the identified
services, a finding of genericness requires that the mark
be understood primarily to refer to the genus (which in
this case is the identified services). See In re Dial-A-
Mattress Operating Corp., 57 USPQ2d at 1810 (citing H.
Marvin Ginn Corp., 228 USPQ at 530).
Although the line between descriptiveness and
genericness is not always clear, the distinction is
critical here. Generic terms are often a common noun or
“name” for the goods or services at issue, see e.g., In re
ING Direct Bancorp, 100 USPQ2d 1681 (TTAB 2011)
(PERSON2PERSON PAYMENT generic for “electronic funds
transfers”); In re Active Ankle Systems Inc., 83 USPQ2d
1532 (TTAB 2007) (DORSAL NIGHT SPLINT generic for
“orthopedic splints for the foot and ankle”), but that is
not always the case. We have found, for instance, that
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ATTIC is generic for “automatic sprinklers for fire
protection,” where the goods included sprinklers
specifically for use in attics (and applicant’s actual
sprinklers were in fact intended for such use). In re
Central Sprinkler Co., 49 USPQ2d 1194, 1199 (TTAB 1998)
(“In this case, because the term ATTIC directly names the
most important or central aspect or purpose of applicant’s
goods, that is, that the sprinklers are used in attics,
this term is generic and should be freely available for use
by competitors.”). See also In re Pennzoil Prods. Co., 20
USPQ2d 1753, 1758-60 (TTAB 1991) (“MULTI-VIS” generic for
multiple viscosity motor oil); Miller Brewing Co. v. G.
Heileman Brewing Co., Inc., 561 F.2d 75, 195 USPQ 281, 285
(7th Cir. 1977) (“The fact that ‘light’ is an adjective
does not preclude it from being a generic or common
descriptive word” as applied to beer). Indeed, while it
has sometimes been said that “generic names are nouns and
descriptive names are adjectives,” such a rule is not
consistent with the Board’s precedent or that of many
courts; genericness cannot be determined simply by applying
prescriptivist rules based on parts of speech. J. Thomas
McCarthy, MCCARTHY ON TRADEMARKS AND UNFAIR COMPETITION § 12:10 (4th
ed. rev. May 2012).
Applicant argues that MADETOORDER is not generic for
Serial No. 77861639

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the identified services because
[w]hile the phrase “make to order” is proper
English grammar to describe a service, the phrase
“made to order” is proper English grammar to
describe goods. The term “made” is the past
tense or past participle of “make” (thus, “[a]
verb form indicating past or completed action or
time that is used as a verbal adjective in
phrases...,” see e.g., http://www.answers
.com/topic/past-participle.... Accordingly,
essentially as a matter of definition in the
English language, Applicant submits that the mark
MADETOORDER is not descriptive[8] of providing a
service or services.

App. Br. at 3. See also App. Br. at 4 (“Services are not
made, they are provided, and here Applicant provides on-
line services for others to design personalized and custom
design transfers. . . .”).
We need not examine applicant’s grammatical arguments
in depth. A dictionary definition of a term at issue can
be helpful, but it is not controlling. As discussed,
genericness does not depend on grammatical constructs, but
on the primary significance of the applied-for mark to the
relevant public. As Judge Learned Hand famously asked,
“[w]hat do the buyers understand by the word for whose use
the parties are contending?” Bayer Co., Inc. v. United
Drug Co., 272 F. 505, 509 (SDNY 1921). Here, the examining

8 We assume applicant meant to say that the mark “is not generic
for providing a service or services,” as it elsewhere concedes,
both directly and implicitly by seeking registration pursuant to
Section 2(f), that MADETOORDER is at least descriptive.
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attorney has provided evidence indicating that others with
services similar to applicant’s do in fact use the term
“made to order” in connection with their services. Whether
that is proper grammatical usage or not is beside the
point; we are concerned here with how the relevant public
actually uses and understands these words in the relevant
market or industry. A dictionary is useful to the extent
it sheds light on the usage of a term by the public. But
the relevant question remains the public perception of the
mark, not what a dictionary or the rules of grammar say is
proper usage, so to the extent that they differ, evidence
of actual usage of the term in question in the relevant
field is much more probative than a general dictionary
entry.9
In light of the evidence of record, we conclude that
services such as applicant’s can be “made to order.” But
all that establishes is that applicant’s mark is at least
merely descriptive of the identified services — the
presumption with which we started.
While we reject applicant’s arguments that its mark

9 That is not to say that we would necessarily be swayed by a
small number of odd, non-standard usages of a term. Given the
resources of the internet, it is possible to find all sorts of
mis-uses, mistakes, and idiosyncratic uses of language. But the
examining attorney’s evidence convinces us that the uses here are
not mere outliers or unusual errors.
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cannot be generic, we are likewise unconvinced by the
examining attorney’s evidence and argument that it is
generic. The mark clearly does not comprise the name of a
service — there is no evidence that applicant’s customers
or the purchasers of similar services call or search for
the identified services as “made to order” or “made to
order services.” And while attributes of goods or services
(such as ATTIC for sprinklers, LITE for beer) have been
held generic, that is usually the case only when the
attribute “directly names the most important or central
aspect or purpose of applicant's goods.” Central
Sprinkler, 49 USPQ2d at 1199. While MADETOORDER clearly
names a feature or characteristic of applicant’s services,
i.e., that they are “performed on a custom basis,” Ex. Att.
Br. at 8, the mark does not describe a key or essential
aspect of the services. Rather, it describes how the
services are rendered or performed, while providing no
information as to what the services are, namely the
provision of “design transfers . . . for imprinting on
apparel.” In other words, the mark does not refer
primarily to the genus to which the services belong.
Although we acknowledge that the distinction between
descriptive and generic terms is not always an easy one to
draw, the Office bears the burden of establishing by clear
Serial No. 77861639

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evidence that a mark is generic. Merrill Lynch, 4 USPQ2d
at 1143. This is a high standard, and we cannot say that
it has been met in this case.
B. Acquired Distinctiveness
Having concluded that applicant’s mark is not generic
for the identified services, we consider whether
applicant’s evidence is sufficient to establish that its
mark has, in fact, acquired distinctiveness. In support of
its Section 2(f) claim, applicant relies on ownership of a
prior registration and a declaration of five years’ use.
1. Prior Registration
On November 28, 2000, the USPTO issued Registration
No. 2408618 to applicant for the following mark:

(“.COM” disclaimed) on the Principal Register for use in
connection with the same services as are identified in the
current application.
As noted above, “in appropriate cases,” a prior
registration “may be accepted as prima facie evidence of
distinctiveness.” Trademark Rule 2.41. However,
notwithstanding any other arguments made by applicant, we
need not consider at length whether this registration is
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sufficient (by itself or in combination with other
evidence) to establish acquired distinctiveness. This is
because — as the examining attorney points out in his
brief, Ex. Att. Br. at 12 — this registration was cancelled
and it expired for failure to file the required affidavit
of continued use and application for renewal, see Trademark
Act §§ 8-9, and a cancelled or expired registration cannot
be relied upon as evidence of distinctiveness.10 See In re
BankAmerica Corp., 229 USPQ 852, 853-54 (TTAB 1986);
Anderson, Clayton & Co. v. Krier, 478 F.2d 1246, 178 USPQ

10 The ‘618 Registration issued November 28, 2000, making
applicant’s Section 8 & 9 filings due November 28, 2010, or upon
payment of a surcharge, within a six-month grace period after
that, i.e., by May 28, 2011, at the very latest. If the required
filings are not received by the due date, the Post-Registration
Division defers processing cancellations for a short time further
to ensure that any timely-mailed correspondence would have been
received and matched with the file. In this case, applicant’s
prior registration was not listed in the USPTO’s records as
cancelled/expired until July 1, 2011, after applicant filed its
notice of appeal and shortly before its brief was filed. While
the examining attorney was thus unable to point out the
cancellation prior to appeal, it has long been our practice that
once evidence of a registration is properly submitted, we will
take notice of any relevant changes in its status prior to
decision. E.g., Kellogg Co. v. Western Family Foods, Inc., 209
USPQ 440, 441-42 (TTAB 1980); Volkswagenwerk Aktiengesellschaft
v. Clement Wheel Co., Inc., 204 USPQ 76, 80 n.3 (TTAB 1979).
While we are mindful that the cancellation of applicant’s prior
registration was not raised during examination, there is no
unfairness or undue surprise in our consideration of it on
appeal, as we must assume applicant was aware of the status of
its own registration. In any event, as a matter of law, a dead
registration cannot be used as evidence of distinctiveness, so
any evidence or argument applicant might have submitted on this
issue would have been futile. (We note that applicant did not
opt to file a reply brief responding or objecting to the
examining attorney’s brief on this subject.)
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46, 47 (CCPA 1973) (“Whatever benefits a registration
conferred upon appellee were lost by him when he
negligently allowed his registration to become canceled.”);
Sunnen Prods. Co. v. Sunex Int’l Inc., 1 USPQ2d 1744, 1747
(TTAB 1987) (a dead registration is evidence of nothing but
the fact that it once issued). Accordingly, we conclude
that applicant’s prior, now-cancelled registration cannot
be considered as evidence of acquired distinctiveness.
2. Declaration of Five Years’ Use
The only other evidence applicant has submitted in
support of its claim of acquired distinctiveness is the
following declaration, included in the application as
originally filed:
The mark has become distinctive of the goods/
services through the applicant’s substantially
exclusive and continuous use in commerce for at
least the five years immediately before the date
of this statement.

As noted, the USPTO “may accept as prima facie
evidence that the mark has become distinctive . . . proof
of substantially exclusive and continuous use . . . as a
mark by the applicant . . . for the five years before the
date on which the claim of distinctiveness is made.”
Trademark Act § 2(f); see Trademark Rule 2.41(b).
Applicant’s statement of five years’ use is worded
consistently with Section 2(f) and Rule 2.41(b), and is
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thus acceptable in form. Nonetheless, the acceptance of
such a declaration as sufficient evidence of
distinctiveness is discretionary, see Trademark Act § 2(f)
(“[t]he Director may accept. . .”); In re Deister
Concentrator Co., Inc., 289 F.2d 496, 129 USPQ 314, 320
(CCPA 1961) (USPTO not required to accept five years’ use
as evidence of distinctiveness), and the analysis depends
significantly on the nature of the mark and the refusal to
register. In this case, the mark is descriptive, and we
must consider its degree of descriptiveness in determining
the sufficiency of applicant’s declaration as evidence of
acquired distinctiveness. See Bongrain, 13 USPQ2d at 1727
n.4 (“the greater the degree of descriptiveness the term
has, the heavier the burden to prove it has attained
secondary meaning”). The weight to be accorded a
declaration of five years’ use “depends on the facts and
circumstances of the particular case.” In re ic! berlin
brillen GmbH, 85 USPQ2d 2021, 2024 (TTAB 2008). We have
not hesitated to reject a declaration of five years’ — or
even much more — use as insufficient to demonstrate
acquired distinctiveness when the mark in question is
significantly descriptive. In re Noon Hour Food Prods.
Inc., 88 USPQ2d at 1181 (showing of “nearly a hundred years
of use in commerce” held insufficient, absent specific
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evidence of sales, advertising, market share, and the
like).
In this case, we find applicant’s declaration of five
years’ use insufficient to show that MADETOORDER has become
distinctive of the identified goods. Although we do not
find the mark to be generic, we nonetheless conclude that
it is highly descriptive of applicant’s services in that it
clearly conveys to the prospective purchaser that the
“personalized and custom design transfers” which are the
subject of applicant’s services are “made to order,” i.e.,
made by applicant to the order and specification of its
customers.
Considered in this context, a bare statement of five
years’ use is insufficient for us to conclude that the
public has come to perceive applicant’s highly descriptive
mark as an indication of source, rather than as a mere
description of a feature or characteristic of the services.
The record does not reveal, for instance, the nature and
extent of any advertising or promotional efforts applicant
has made using the mark, the level of applicant’s sales
under the mark, or applicant’s market share. Nor is there
evidence of copying, media recognition of applicant’s mark,
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or its exclusivity of use.11 See Steelbuilding.com, 75
USPQ2d at 1424. Indeed, while we assume based on
applicant’s declaration that its mark has been in use for
at least five years, it cannot be discerned from this
record whether applicant provides its services to more than
a small number of customers on an infrequent basis. We
conclude that given the descriptiveness of applicant’s
mark, a bare declaration of five years’ use — without more
— does not satisfy applicant’s burden to show that its mark
has acquired distinctiveness.
III. Conclusion
We have carefully considered all of the argument and
evidence of record, including that which is not
specifically discussed here. We conclude that although
applicant’s mark has not been shown to be generic,
applicant’s evidence is insufficient to establish that its
mark has acquired distinctiveness under Trademark Act

11 Applicant’s declaration states that its use of the mark has
been “substantially exclusive” for the five-year period in
question. Nonetheless, the examining attorney's evidence
demonstrates that others have used the term “made to order” in
connection with the same or similar services, casting doubt on
the exclusivity of applicant’s use. See Levi Strauss & Co. v.
Genesco, Inc., 742 F.2d 1401, 222 USPQ 939, 940-41 (Fed. Cir.
1984) (“When the record shows that purchasers are confronted with
more than one (let alone numerous) independent users of a term or
device, an application for registration under Section 2(f) cannot
be successful, for distinctiveness on which purchasers may rely
is lacking under such circumstances.”).
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Section 2(f).
Decision: The refusal to register under Trademark Act
Section 2(e)(1) is AFFIRMED.