Plan-A-Day Enterprises, Ltd.

Trademark Trial and Appeal Board

Jul 3, 2002

No. 75807556 (T.T.A.B. Jul. 3, 2002)

Mailed: July 3, 2002
Paper No. 11
HRW
UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Plan-A-Day Enterprises, Ltd.
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Serial No. 75/807,556
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Nathaniel D. Kramer of Cobrin & Gittes for Plan-A-Day
Enterprises, Ltd.
Ronald McMorrow, Trademark Examining Attorney, Law Office
105 (Thomas G. Howell, Managing Attorney).
_______
Before Wendel, Bucher and Drost, Administrative Trademark
Judges.
Opinion by Wendel, Administrative Trademark Judge:
Plan-A-Day Enterprises, Ltd. has filed an application
to register the mark THE DAILY PLANNER and design, in the
format shown below, for “mail order catalog services
featuring stationery and related gift items, especially
desk accessories, globes, atlases, travel clocks and
timepieces; computerized on-line retail services featuring
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT
OF THE TTAB
Ser No. 75/807,556
2
stationery and related gift items, especially desk
accessories, globes, atlases, travel clocks and
timepieces.”1
Registration has been finally refused on the basis of
applicant’s failure to comply with the requirement that a
disclaimer be filed of the words THE DAILY PLANNER apart
from the mark as shown. Section 6(a) of the Trademark Act;
TMEP Sections 1213 and 1213.02(a). Although applicant
amended the application to one seeking registration under
the provisions of Section 2(f) with respect to the words
THE DAILY PLANNER, the claim of acquired distinctiveness
was deemed insufficient to overcome the requirement on the
basis that the wording is generic and must be disclaimed.
TMEP Section 1213.02(b).
Applicant and the Examining Attorney have filed briefs
but an oral hearing was not requested.
1 Serial No. 75/807,556, filed September 24, 1999, claiming first
use and first use in commerce of the mark in a different form in
1990 and first use and first use in commerce of the mark in the
current form in April 1999.
Ser No. 75/807,556
3
The Examining Attorney maintains that since THE DAILY
PLANNER is a common descriptive name for a central
characteristic of applicant’s services, the words must be
disclaimed as being generic when used in connection with
applicant’s services. In making this requirement, the
Examining Attorney relies upon the principle set forth by
the Board in In re Bonni Keller Collections Ltd., 6 USPQ2d
1224, 1227 (TTAB 1987), with the citation of several other
cases in support thereof, that “a term that is a common
descriptive name for a central characteristic of a service
is incapable of distinguishing the service from like
services of others.”
As evidence of the generic nature of the term “daily
planner” when used to designate a particular type of
stationery item, the Examining Attorney has made of record
five registrations in which the “daily planner” is included
as one of the items in the identification of goods, a
sampling of advertisements taken from the Internet in which
“daily planners” are included as specific goods being
offered for sale, and numerous excerpts retrieved from the
Nexis database using the term “daily planner” in a generic
manner. As representative of the latter, we note the
following:
Ser No. 75/807,556
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Thomas Nelson Gifts introduced updated daily planners
in eight different styles. Gifts & Decorative
Accessories (December 1, 1999);
... and their fellow students each received a daily
planner as a gift. It looks like a spiral notebook,
but it has many added features, such as a calendar for
writing... Newsday (September 25, 1995);
An organizer notebook or daily planner. News & Record
(Greensboro, NC) (April 24, 1995);
Calendars and Daily Planners: Silver Creek Press
consistently prints some of the prettiest calendars
and daily planners for sportsmen. The Dallas Morning
News (December 5, 1993); and
My first step was to call all of the major department
and stationery stores to ask if they carried a daily
planner targeted for kids. Portland Skanner (October
6, 1993).
As evidence that applicant deals in goods of this
nature, the Examining Attorney points to applicant’s
specimens which show various types of “organizers” as
featured items for sale in connection with its mail order
or on-line retail services. The Examining Attorney
concludes that the sale of daily planners is a central
feature of applicant’s recited services and thus
applicant’s mark cannot be registered without a disclaimer
of the generic wording THE DAILY PLANNER.
Applicant contends that the Examining Attorney has
failed to offer any evidence that THE DAILY PLANNER is
generic for applicant’s services. Instead, applicant
argues, all of the evidence is directed to the question of
Ser No. 75/807,556
5
whether the term “daily planner” is generic for a type of
goods, namely, organizers. Applicant insists that although
a term may be generic for a type of goods sold by a
retailer, it cannot simply be concluded, without further
evidence, that the term is also generic for retail sale
services featuring those goods. Applicant argues, there is
no showing that “daily planner” is a commonly used generic
term for a store featuring the sale of organizers.
Applicant claims that Bonni Keller case relied upon by
the Examining Attorney does not support the broad
application of the principle that a term which is generic
for a type of goods is also generic for retail store
services featuring those goods. Applicant notes that in
the Bonni Keller case the mark was LA LINGERIE and there
was evidence of record that retail stores selling lingerie
were called “lingerie” shops or stores. 6 USPQ2d at 1226.
Here, applicant notes, there is no evidence that “daily
planner” is a commonly used term for a type of store and
thus the Bonni Keller case is not applicable.
Applicant further argues that the controlling decision
in this case is In re Seats, 757 F.2d 274, 225 USPQ 364
(Fed. Cir. 1985) in which, according to applicant, the
Court found a showing of genericness of the term SEATS in
relation to chairs or bleachers insufficient to show that
Ser No. 75/807,556
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it was also generic for the service of selling seats at
various events. Applicant insists the same is true here;
that whether or not DAILY PLANNER may be generic for
particular goods, there is no showing or evidence that it
is equally generic for the recited retail services.
Finally, applicant points to several third-party
registrations in which the Office has registered a mark for
services, without any disclaimer, despite the fact that the
mark is generic for a type of goods typically sold by the
retailer. These registrations include marks such as
LETTUCE, THE RIPE TOMATO, and BLUE ONION for restaurant
services, THE BUCKLE for clothing store services, and
STAPLES for office supply store services.
As a general principle a term which is a generic name
for a central characteristic of a service is incapable of
distinguishing the services from like services of others.
See In re Bonni Keller Collections Ltd., supra (LA LINGERIE
held incapable of distinguishing applicant’s retail store
services in the field of lingerie); In re Wickerware, Inc.,
227 USPQ 970 (TTAB 1985)(WICKERWARE held incapable of
functioning as a service mark to identify applicant’s mail
order and distributorship services in the field of wicker
furniture and accessories); In re Half Price Books,
Records, Magazines, Inc., 225 USPQ 219 (TTAB 1984)(HALF
Ser No. 75/807,556
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PRICE BOOKS RECORDS MAGAZINES held incapable of designating
origin).
From the evidence of record, we find that the term
“daily planner” is a generic name for a type of stationery
item. There is no real controversy on the applicability of
the term to a type of goods. Nor does there appear to be
any argument on applicant’s part that the term “daily
planner” is not used interchangeably with “organizer.”
Furthermore, from the specimens of record we find that
applicant touts as a special feature of its mail order and
on-line retail services its full line of personal
organizers from the FILOFAX line, ranging from mini or
pocket organizers to desk diaries. While pointing out that
applicant also carries a wide selection of other items,
such as pens, desk accessories and leather bags, the
emphasis in the catalog as well as in the photographs on
the cover is obviously on organizers, otherwise known as
“daily planners.”
As such, we find the evidence sufficient to
demonstrate that the sale of daily planners is a basic
feature of applicant’s mail order and on-line retail
services. Or to put it in the words previously used by the
Board, the term DAILY PLANNER, as used by applicant in
connection with its services, is a generic name for a
Ser No. 75/807,556
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central characteristic of applicant’s retail services.
Applicant sells daily planners as its main product; its
retail services focus on the sale of daily planners.
While applicant argues that there is no evidence that
“daily planner” is a commonly used term for a store
featuring the sale of organizers, we do not find specific
evidence of the prior use of the term in a generic manner
for stores of this type necessary. It is true that in the
Bonni Keller case, there was actual evidence of the use of
the term “lingerie” in connection with the stores selling
these goods, as well as the goods per se. But the same did
not hold true in the Wickerware case. There the evidence
was of use of the term “wickerware” generically with
respect to products made of wicker; from this evidence the
Board concluded that “the term ‘wickerware’ is as incapable
of distinguishing the services of selling wicker as it is
for the products themselves.” 227 USPQ at 971. The Board
went on to state:
That the evidence which the Examining Attorney
introduced does not specifically demonstrate use
in connection with services does not dissuade us
from our conclusion as it is obvious that the only
conceivable significance of the term in relation to
the service of retail selling is to inform prospective
customers that the services involve the sale of
wickerware.
Id. at 971.
Ser No. 75/807,556
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The critical issue in determining genericness of a
term under any circumstances is whether members of the
relevant public would primarily use or understand the
designation sought to be registered to refer to the genus
or category of goods or services in question. See H.
Marvin Ginn Corp. v. International Association of Fire
Chiefs, Inc., 782 F.2d 987, 228 USPQ 528 (Fed. Cir. 1986).
In making this determination in this case, we must follow
the two-step inquiry set forth in Marvin Ginn and
reaffirmed by the Court in In re American Fertility
Society, 188 F.3d 1341, 51 USPQ2d 1832 (Fed. Cir. 1999),
namely;
(1) What is the genus or category of services at
issue?, and
(2) Is the designation sought to be registered
understood by the relevant public primarily
to refer to that genus or category of
services.
Here the category of services is mail order or on-line
retail sale services featuring as the main products various
types of daily planners. Thus, we can only conclude that
THE DAILY PLANNER, when used in connection with sales of
this nature, would be understood by the relevant purchasing
public as referring to retail services in which products of
this type were the featured items.
Ser No. 75/807,556
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Although applicant attempts to draw an analogy here to
In re Seats, Inc., supra, the Court clearly drew a
distinction between the generic use of the term “seats” for
chairs or couches or bleachers and the non-generic use of
the term in connection with reservation services, as
opposed to the selling of seats per se, “as would for
example a furniture merchant.” 225 USPQ at 368. No such
distinction can be made here; applicant is selling the very
product that the term THE DAILY PLANNER names.
Finally, we can give little weight to the third-party
registrations which applicant has submitted in which,
although a certain type of product sold by the retailer is
named in the mark, no disclaimer was required. It is
readily apparent that items such as “lettuce,” when used in
connection with restaurant services, or “buckles,” when
used in connection with clothing store services, do not
name a central characteristic or basic feature of the
services involved. By comparison, the Examining Attorney
has introduced several third-party registrations in which
the item named in the mark is a basic feature of the retail
services involved, such as “shoes” or “clothing,” and in
these instances, disclaimers have been required.
Accordingly, we find the wording THE DAILY PLANNER as
used in applicant’s composite mark to be generic, when used
Ser No. 75/807,556
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in connection with applicant’s recited services, and thus
the requirement for a disclaimer thereof is proper.
Pursuant to Trademark Rule 2.142(g), this decision will be
set aside and applicant’s mark will be published for
opposition if applicant, no later than thirty days from the
mailing date hereof, submits a disclaimer of THE DAILY
PLANNER apart from the mark as a whole.
Decision: The requirement for a disclaimer is
affirmed.