Tennis Industry Assn.

Trademark Trial and Appeal Board

Mar 20, 2012

No. 77836610 (T.T.A.B. Mar. 20, 2012)

Mailed: March 20, 2012

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Tennis Industry Assn.
________

Serial No. 77836610
_______

Nathan J. Breen of Howe & Hutton Ltd. for Tennis Industry
Assn.

Andrew C. Leaser, Trademark Examining Attorney, Law Office
112 (Angela Wilson, Managing Attorney).1
_______

Before Seeherman, Cataldo and Lykos,
Administrative Trademark Judges.

Opinion by Cataldo, Administrative Trademark Judge:

Tennis Industry Assn. (“applicant”) filed an
application to register in standard characters on the
Principal Register TENNIS INDUSTRY ASSOCIATION as a mark
for the following services, as amended:
association services, namely, promoting the
interests of tennis facilities, tennis
manufacturers, tennis retailers and tennis court
contractors; providing market research services

1 The above application originally was examined by another
examining attorney, but was reassigned after the first Office
action to the attorney whose name is shown.
THIS OPINION IS A
PRECEDENT OF
THE T.T.A.B.
Ser. No. 77836610
2
to track the economic vitality of the tennis
industry

in International Class 35.2
Prosecution History
In the first Office action, 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
proposed mark merely describes a function, feature or
characteristic of the recited services. In addition, the
examining attorney required a disclaimer of ASSOCIATION,
suggested that applicant amend its application to seek
registration on the Supplemental Register, and required
amendment of the recitation of services. In response,
applicant submitted the required disclaimer, but did not
respond to the requirement to amend its recitation of
services and did not seek amendment of the application to
seek registration of its mark on the Supplemental Register.
In the second Office action, the examining attorney
continued the refusal to register under Section 2(e)(1),
and further advised applicant that amendment to the
Supplemental Register was no longer recommended because the

2 Application Serial No. 77836610 was filed on September 28, 2009
based upon applicant’s assertion of March 15, 1974 as a date of
first use of the mark anywhere and April 15, 1974 as a date of
first use of the mark in commerce in connection with the
services.

Ser. No. 77836610
3
proposed mark appeared to be generic. The examining
attorney continued the requirement of applicant to amend
its recitation of services. In response, applicant amended
its recitation of services as shown above and submitted
arguments and evidence of its use of the mark which the
examining attorney construed as an amendment to seek
registration under Trademark Act Section 2(f), 15 U.S.C. §
1052(f). In the third Office action, the examining
attorney rejected applicant’s showing of acquired
distinctiveness because the proposed mark appeared to be
generic, but also asserted that, even if the mark were not
generic, applicant’s showing of acquired distinctiveness
was insufficient, and continued the refusal to register on
the ground of genericness. When the refusals were made
final, applicant appealed. Applicant and the examining
attorney filed briefs on the issues under appeal, and
applicant filed a reply brief.
Propriety of the Refusals to Register
Applicant argues at length in its responses to the
second and subsequent Office actions and in its briefs that
the current examining attorney “violated TMEP §§ 704.01 and
706”3 in his examination of the involved application.

3 Applicant’s brief, p. 4.

Ser. No. 77836610
4
Specifically, applicant argues that TMEP § 704.01 requires
the examining attorney to raise all grounds for refusal and
all requirements in the initial examination of the
application, and that “[i]t was not until Applicant had
already responded to the first Office Action that the issue
of genericness that is the subject of this Appeal was
raised for the first time.”4 Applicant further argues that
“in raising the genericness issue without any additional
explanation or apology, the Examiner has violated TMEP
§ 706.”5
We disagree. In fact, and contrary to applicant’s
assertion, the Examining Attorney did refuse the
application on the ground of genericness at the appropriate
time, which was not until applicant raised the issue of
acquired distinctiveness in its response of February 5,
2010. TMEP § 1209.02(a)(ii). As explained in TMEP §
1209.02(a), “the examining attorney must not initially
issue a refusal in an application for registration on the
Principal Register on the ground that a mark is a generic
name for the goods or services” except for a situation not
applicable to the instant application, and that “even if it
appears that the mark is generic, the proper basis for the

4 Id.
5 Id.
Ser. No. 77836610
5
initial refusal is Section 2(e)(1) descriptiveness.” In
this case, both the initial and subsequent Office actions
refused the application under Section 2(e)(1). Although
the examining attorney initially suggested that applicant
amend its application to the Supplemental Register,
subsequent direction that such amendment would be
inappropriate does not constitute a new requirement or
refusal. Further, applicant did not amend its application
to seek registration on the Supplemental Register in
response to the examining attorney’s initial
suggestion, and therefore the examining attorney’s
subsequent withdrawal of that suggestion did not cause
applicant any inconvenience or wasted effort.6
Issues on Appeal
The issues under appeal in this case are whether the
designation TENNIS INDUSTRY ASSOCIATION is generic for the
recited services and, if not found to be generic, whether
applicant has made a sufficient showing of acquired
distinctiveness under Section 2(f) with regard thereto.
Genericness Refusal

6 We also point out that if an applicant believes assertion of a
refusal is procedurally deficient, the appropriate procedure is
to file a petition to the Commissioner within two months of the
complained-of action. See Trademark Rule 2.146(a) and 2.146(d);
In re Greenliant Systems Ltd., 97 USPQ2d 1078, 1080, n.3 (TTAB
2010), citing In re Jump Designs LLC., 80 USPQ2d 1370, 1373 (TTAB
2006); and In re Sambado & Sons Inc., 45 USPQ2d 1312 (TTAB 1997).
Ser. No. 77836610
6
As a preliminary matter, we note that inasmuch as
applicant seeks registration of the mark TENNIS INDUSTRY
ASSOCIATION on the Principal Register pursuant to Section
2(f), applicant has effectively conceded that the mark is
descriptive. See The Cold War Museum, Inc. v. Cold War Air
Museum, Inc., 586 F.3d 1352, 92 USPQ2d 1626, 1629 (“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.”). See also In re
Country Music Association Inc., 100 USPQ2d 1824 (TTAB
2011).
Now we turn to our genericness analysis. 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 (Fed. Cir. 2001), citing H. Marvin Ginn Corp.
v. International Association of Fire Chiefs, Inc., 782 F.2d
987, 228 USPQ 528 (Fed. Cir. 1986) (“Marvin Ginn”). The
test for determining whether a mark is generic is its
primary significance to the relevant public. Section 14(3)
of the Trademark Act; 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);
Ser. No. 77836610
7
and H. Marvin Ginn, supra.
The USPTO 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 (Fed. Cir. 1987). See also In re
American Fertility Society, supra; and Magic Wand Inc. v.
RDB Inc., supra. “Doubt on the issue of genericness is
resolved in favor of the applicant.” In re DNI Holdings
Ltd., 77 USPQ2d 1435, 1437 (TTAB 2005).
Our first task under Marvin Ginn is to determine,
based on the evidence of record, the genus of applicant's
services. In this case, we agree with applicant that the
genus of services at issue is adequately defined by
applicant’s recitation of services, specifically,
association services, namely, promoting the
interests of tennis facilities, tennis
manufacturers, tennis retailers and tennis court
contractors; providing market research services
to track the economic vitality of the tennis
industry.

See e.g. 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…”). This is confirmed by applicant's specimen of use
(an excerpt from its web site), describing applicant's
mission as “promoting the growth and economic vitality of
Ser. No. 77836610
8
tennis.”
Next, we must determine whether the designation TENNIS
INDUSTRY ASSOCIATION is understood by the relevant
purchasing public primarily to refer to that genus of
services. Our first task is to define the “relevant
purchasing public.” We note that neither applicant nor the
examining attorney has defined the relevant purchasing
public in this case. Based upon the record evidence, we
find that the relevant purchasing public consists of those
whose interests are promoted by applicant’s identified
services.
With this in mind, we must now ascertain whether the
designation TENNIS INDUSTRY ASSOCIATION is understood by
the relevant purchasing public as primarily referring to
association services, namely, promoting the
interests of tennis facilities, tennis
manufacturers, tennis retailers and tennis court
contractors; providing market research services
to track the economic vitality of the tennis
industry.

We begin by finding that the designation TENNIS INDUSTRY
ASSOCIATION 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 Operating Corp., 57 USPQ2d at 1810:
[W]here the proposed mark is a phrase (such as
“Society for Reproductive Medicine”), the board
Ser. No. 77836610
9
“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 The Am. Fertility Soc'y, 51 USPQ2d at 1836. Cf. In
re Gould Paper Corp., 834 F.2d 1017, 1018, 5 USPQ2d 1110,
1110 (Fed. Cir. 1987). By way of illustration, the Federal
Circuit provided the following example in In re American
Fertility Society:
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).

Id. at 1836. See also In re Country Music Association
Inc., 100 USPQ2d 1824 (TTAB 2011).
We turn now to the evidence of record. Competent
sources 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., supra; and In re Bed & Breakfast
Registry, 791 F.2d 157, 160, 229 USPQ 818, 819 (Fed. Cir.
1986).
In this case, the examining attorney has made of
record the following five examples of “tennis industry
Ser. No. 77836610
10
association” displayed in lower case, i.e., a manner that
does not appear to indicate source in any particular
entity, taken from the Lexis/Nexis database and commercial
and informational Internet websites (emphasis added):
There have been times – a small handful of them –
when Alan Gifford Schwarts has not been well
served by his bottomless drive. …
On Jan. 1, the longtime Highland Park resident
took over as president of the U.S. Tennis
Association, overseeing an organization with
670,000 members, an annual budget of $200 million
and stewardship of one of the sport’s most
prestigious events, the U.S. Open. …
“I hope to forge more and better relationships
between teaching groups, parks and rec
associations, and tennis industry associations.
I want to burnish the image of tennis. I want us
to get out of our elitism.” …
(Chicago Tribune January 13, 2003 Sunday
Chicagoland Final Edition);

… Similar efforts are underway nationwide. In
1997, officials from the United States Tennis
Association, the men’s and women’s professional
tours, the tennis industry association and other
groups, concerned by a decline in participation
in the sport, joined forces to create the USA
Tennis Plan for Growth. The five-year, $50
million plan aims to expand the game by funding
programs in urban areas, offering lessons and
providing grants to talented minority youths to
offset the costs of training and competition. …
(The Times Picayune (New Orleans, LA) October 7,
2000);

Free tennis lessons will be offered to the public
June 9-18 during a national campaign to
revitalize the sport. More than 25 sites around
the metro area will offer free, 90-minute
introductory lessons during morning, afternoon
and evenings.
Ser. No. 77836610
11
The United States Professional Tennis Association
and the U.S. Tennis Association are spearheading
the local effort. The goal of the tennis
industry association Play Tennis America campaign
is to bring a half-million new players into the
sport.
(The Denver Post May 31, 1995);

Maintaining accurate and consistent information
is difficult to do in largely staffed programs,
however, it is important for the good of young
players. I refer to this as “Program Integrity.”
The tennis industry associations in general,
although amazing in their wealth of knowledge and
research, have remained flexible to change as
well as they have often adopted a “many ways to
teach tennis” attitude, still leaving much room
for a lack of accuracy in teaching by newly
certified instructors. …
(maxfabiani.com); and

My Three Main Initiatives are:
1. To integrate a component of mandatory
education into our certification process.
2. To grow our membership both domestically and
internationally, and to increase our efforts to
work in partnership and cooperatively with
other tennis industry associations, especially
in those areas that positively impact our job
market.
3. To form one unified tennis-teaching
organization in the United States.
(addvantageuspta.com).

The examining attorney further has made of record
evidence of non-trademark use of “tennis industry” from the
Lexis/Nexis database, of which the following examples are
illustrative:
… Founded in 1927, the USPTA is the world’s
oldest and largest trade association of tennis-
teaching professionals. The USPTA headquarters
Ser. No. 77836610
12
is in Houston, Texas.
The USPTA’s purpose is to raise the standards of
the tennis-teaching profession and to increase
interest and awareness in tennis. The USPTA is
the fastest growing association in the tennis
industry in the world.
(Tulsa World (Oklahoma) January 8, 1998);

… Fast-forward to 1994, when Sports Illustrated
asked “Is Tennis Dying?” The “Battle of the
Sexes,” with Billie Jean King and Bobby Riggs,
and rivalries between McEnroe/Connors and
Evert/Navratilova were way in the past;
participation had dropped 40 percent from more
than 30 million at tennis’ peak in the 1970s.
But leaders in the tennis industry – equipment
manufacturers, governing bodies and professionals
- took this as a challenge to change rather than
as match point.
They decided that, instead of marketing
individual brands, they would market “tennis,”
pouring millions of dollars into grassroots
programs geared to promoting participation
everywhere.
(The Denver Post August 24, 2009);

Tennis is a passion for Mike Sherer.
So is teaching tennis, which makes his newest
position at Indiana University East a perfect
fit.
Sherer will guide the Red Wolves’ men’s and
women’s tennis teams as they begin their
inaugural seasons this fall.
“I’ve been in the tennis industry all my life,”
said Sherer, 51. “I welcome the challenge, and
I’m very anxious to get started.” …
(Palladium-Item (Richmond, IN) May 17, 2009);

Tennis Welcome Centers are public or private
facilities that offer programs for new and
experienced players of all ages and abilities.
“The Tennis Welcome Center Awards is a wonderful
opportunity for the tennis industry to recognize
the locations that are taking the steps to create
Ser. No. 77836610
13
a positive experience for those who are
discovering and rediscovering tennis, which in
turn helps grow the sport,” Jolyn de Boer,
association executive director, said in a news
release. …
(Contra Costa Times (California) June 25, 2008);
and

A tennis professional and coordinator of junior
team tennis and junior excellence for the
Williamson County Parks & Recreation tennis
program, Hains is a veteran of 26 years in the
tennis industry. He has been a member of the
U.S. Professional Tennis Association since 1980,
has served as state president on the Southern
Division board of officers and has received
numerous awards, including “Tennessee State
Professional of the Year” and “Pride of the
South.” Hains began his tennis career as a high
school, state university and men’s tournament
player in Pennsylvania and Delaware. …
(The Tennessean (Nashville, Tennessee) August 24,
2006).

The examining attorney also submitted evidence from
applicant’s Internet website, of which the following
examples are illustrative:
The Tennis Industry Association, the not for
profit trade association for tennis, is THE
unifying force in the tennis industry whose
mission is to promote the growth and economic
vitality of tennis by working closely with the
U.S. Tennis Association and industry partners to
develop and implement initiatives to increase
tennis participation and improve the health of
industry businesses. …
(tennisindustry.org);

4th Annual TIA Tennis Forum
Held in conjunction with the 40th Annual USTA
Tennis Teachers Conference, the Forum will
present the latest news about the state of the
Ser. No. 77836610
14
tennis industry, including participation growth,
equipment sales data, grassroots initiatives and
more. Importantly, the Forum will outline
pathways to increasing the number of frequent
players in the U.S., ways to better define and
boost the economic growth and impact of the
tennis industry, and effective ways to distribute
clear, consistent messaging of health, fitness
and the reasons to play tennis. In addition, the
TIA will have the 3rd Annual Hall of Fame
Induction during the Tennis Forum.
(tennisindustry.org);

A new online registration system has been
developed to allow you to sign up your players
for the QuickStart Tennis play format, which has
become an integral component of tennis for kids
10 & under and a primary focus of the USTA and
tennis industry. In addition, you can collect
payment and communicate with consumers using
detailed, specific and targeted messaging to
enhance your business. …
(tennisindustry.org); and

The TIA’s mission is to unify the tennis industry
and the representative companies involved in the
manufacturing, marketing, and sales of tennis
products along with tennis publications, tennis
management firms, and other allied organizations
in tennis. The TIA holds trade shows, forums and
educational seminars to serve as the rallying
point for the industry.
(tennisindustry.org).

The Examining attorney submitted additional evidence
from third-party Internet websites, of which the following
examples are illustrative:
Ryan Melton (Francis Marion)
In spring of 2009 Ryan graduated top of his class
and received the Mark Blackwell Award for the
graduate with the highest GPA over their college
career (4.0). He also received the School of
Ser. No. 77836610
15
Business Management Award, the FMU Scholastic
Achievement Award, and the Duane P. Myers Honors
Award. In 2009 Ryan began working as a project
coordinator with the Tennis Industry Association,
a trade association for the tennis industry.
(jspr.sc.edu);

The tennis industry continues to boom, and brings
millions upon millions in annual revenues. The
ATP Tour, WTA Tour, Senior Tour, Satellites,
Challengers, Davis Cup, College tennis and more
continue to expand along with tennis-related
ventures by corporate giants, meaning job
opportunities are increasing daily.
JobsinTennis.com lists all levels of job
opportunities with the tennis industry including
internships, entry-level, management, and
executive level positions in the following fields
…
(jobsintennis.com);

The Tennis Channel, the only 24-hour, television-
based multimedia destination dedicated to tennis
and the healthy, active lifestyle that surrounds
it, today announced the hiring of longtime tennis
executive David Egdes as senior vice president,
Tennis Industry Relations, and Tennis Channel
Open tournament director. …
Based in Los Angeles, Egdes will report to the
Tennis Channel chairman and CEO Ken Solomon. In
this position he will guide the tennis industry
relations department, and act as a liaison
between the sponsors, manufacturers and
retailers. …
(tennischannel.com);

Webtennis24.com
Tennis lessons, techniques, drills and games…all
free!
This site has been created to provide free
quality tennis instruction, drills and tips for
players, coaches and parents from all over the
world. You can also find tennis videos of top
professionals and news from the tennis industry.
Ser. No. 77836610
16
Enjoy the site!
(webtennis24.com);

Popularity of tennis is surging once again.
The United States Tennis Association estimated
there were 35 million Americans playing the sport
in the early ‘80s. This country had a unique
interest in tennis for several reasons. …
“People left tennis in droves,” Jerry Noyce said.
“According to the USTA, we were down to 14
million tennis players in 1993. The way it was
going, we probably would be down to 10 million by
now, if the USTA and the tennis industry didn’t
get together and decide they had to do something
about it.” …
(highbeam.com);

In addition, the examining attorney made of record
third-party registrations for various marks incorporating
the terms INDUSTRY and ASSOCIATION and/or TENNIS in which
such terms are disclaimed in marks registered for a variety
of association and other services on the Supplemental
Register and on the Principal Register under Section 2(f).
The following examples are illustrative:
Registration No. 1295291 on the Supplemental
Register for TRAVEL INDUSTRY ASSOCIATION OF
AMERICA (“TRAVEL” “INDUSTRY” and “ASSOCIATION”
disclaimed) for “Association Services-Namely,
Promoting the Business and Interests of Members
by Promoting Tourism and Travel to and within the
Borders of the United States”;

Registration No. 2113112 on the Supplemental
Register for the mark BUILDING INDUSTRY
ASSOCIATION OF SOUTHEASTERN MICHIGAN (BUILDING
INDUSTRY ASSOCIATION disclaimed) for “association
services, namely, promoting the interests of
members of the building industry”;

Ser. No. 77836610
17
Registration No. 1967714 on the Principal
Register under Section 2(f) for UNITED STATES
TENNIS ASSOCIATION (TENNIS ASSOCIATION
disclaimed) for, inter alia, “association
services, namely promoting the interests of
tennis athletes and umpires”; and

Registration No. 3067251 on the Principal
Register under Section 2(f) for the mark HAMILTON
COUNTY COMMUNITY TENNIS ASSOCIATION (COMMUNITY
TENNIS ASSOCIATION disclaimed) for “Educational
services, namely, conducting workshops and
classes in the field of tennis; recreational
services in the nature of tennis and tennis
camps; entertainment services, namely, promoting
and conducting tennis tournaments and
exhibitions.”

Finally, the examining attorney submitted dictionary
definitions of the terms comprising TENNIS INDUSTRY
ASSOCIATION taken from merriam-webster.com. According to
these definitions, TENNIS is defined as “an indoor or
outdoor game that is played with rackets and a light
elastic ball by two players or pairs of players on a level
court (as of clay or grass) divided by a low net”; INDUSTRY
is defined as “a distinct group of productive or profit-
making enterprises ”; and ASSOCIATION
is defined as “an organization of persons having a common
interest.”
In support of its position that TENNIS INDUSTRY
ASSOCIATION is not generic for its recited services, but
rather has acquired distinctiveness under Section 2(f),
applicant submitted a voluminous number of articles from
Ser. No. 77836610
18
the Westlaw database, all discussing applicant and
displaying the applied-for designation in initial typed
capital letters, i.e., “Tennis Industry Association.” The
following examples are illustrative:
… Nothing kick-starts weight loss like chasing
down a drop shot with “Don’t Stop ‘Til You Get
Enough” playing courtside. Music is a major
component of cardio tennis because research shows
that it improves workout performance, said Jolyn
de Boer, the executive director of the Tennis
Industry Association. …
(New York Times, June 4, 2010);

… According to a recent survey by Taylor Research
and Consulting Group for the United States Tennis
Association and the Tennis Industry Association,
tennis has experienced a recreational upswing
across all age groups, especially among blacks
and Hispanics. This year participation in the
country rose above 30 million for the first time
in more than two decades. Between 2003 and 2008,
before the recession, youth racket sales rose by
50 percent. …
(New York Times, February 5, 2010);

… Nationally 30.1 million people play tennis,
according to a survey of the Tennis Industry
Association, with 7.1 million players taking up
the sport for the first time last year. …
(Tallahassee Democrat, February 5, 2010);

Royal Oak resident Ralph Colone, 64, has played
tennis for two decades. But it’s only in the
past two years that the sport has truly sent his
heart into a flutter. That’s when Colone first
heard of cardio tennis, a growing fitness trend.
More than a million people have tried it, said
Michele Krause, the national cardio tennis
manager for the Tennis Industry Association. …
(Detroit Free Press, November 8, 2009);
Ser. No. 77836610
19

While the recession has served its share of
double faults, Long Islanders are still out there
serving and volleying, perhaps in numbers even
greater than before. …
That’s the sentiment of those in the tennis
industry on Long Island, and a validation of the
Sporting Goods Manufacturers Association report
that cites tennis as the fastest-growing
individual sport in the first part of the 21st
Century. The Tennis Industry Association says
participation in the game has grown 43 percent
over the last eight years. …
(Newsday, October 18, 2009);

Cardio Tennis, a high-energy fitness routine that
gets the blood pumping, is growing in popularity.
… Part aerobics class, part tennis drills, the
concept debuted in New York in 2005, but it is
only now getting a toe-hold in Central Florida.
In large part, it’s an attempt by the USTA and
the Tennis Industry Association to compete with
YMCAs and gyms for the growing number of fitness-
minded customers – and to give teaching pros a
steady source of income. …
(Orlando Sentinel, April 3, 2007);

How’s the health of tennis in the United States?
… “The sport’s been basically flat in
participation for years,” said Jim Baugh,
president of the Tennis Industry Association,
which represents tennis marketers, facilities and
equipment makers. …
(Philadelphia Inquirer (PA) April 6, 2004);

Judy Levering is using the distinction of being
the first woman president of the U.S. Tennis
Association to her advantage. In no way does she
consider her gender to be a disadvantage. …
According to the latest census report from the
Tennis Industry Association, (TIA), play is up
this year based on first quarter sales of tennis
balls, which is considered the best measure. …
Ser. No. 77836610
20
(St, Paul Pioneer Press (MN) June 25, 2000);

… Other changes at the biggest non-Grand Slam
tournament in the United States include two
courts for a program called Play Tennis America
where coaches such as Nick Bollestieri and others
will host clinics and a charity concert two days
before play begins. … The national Tennis
Industry Association, based in North Palm Beach,
is bringing its free lessons program home next
month. New and former players, adults and kids
are eligible for a 90-minute group lesson and
introduction to the sport. …
(Palm Beach Post (FL) January 13, 1998);

SPORTS TENNIS First lesson’s free for new players
learning to play.
For anyone who ever wanted to learn to play
tennis, there may never be a better time in
Atlanta. … The nationwide program, called Play
Tennis America, is sponsored by the Tennis
Industry Association. The TIA’s national goal is
to introduce the game to a half-million players
in three years. …
(Atlanta Journal and Constitution (GA) April 27,
1995); and

Courting the Fans Tennis Has Hit A Pivotal Point
… “Tennis is taking a beating,” says Brad
Paterson, executive director of the Tennis
Industry Association. Participation has
plummeted from its height of 35 million in 1978
to 22 million last year. …
(USA Today, September 7, 1994).

Applicant further made of record third-party “INDUSTRY
ASSOCIATION” formative marks registered on the Principal
Register under Section 2(f) for a variety of association
services in which only ASSOCIATION was disclaimed. The
following examples are illustrative:
Ser. No. 77836610
21
Registration No. 3348669 for the mark OUTDOOR
INDUSTRY ASSOCIATION for, inter alia,
“association services, namely promoting the
interests of members of the Outdoor Industry
Association”;

Registration No. 3010643 for the mark PERSONAL
WATERCRAFT INDUSTRY ASSOCIATION for “association
services - namely promoting the interests of
manufacturers and users of personal watercraft”;

Registration No. 2954764 for the mark TREE CARE
INDUSTRY ASSOCIATION for “association services,
namely, promoting the interests of those in the
tree care industry”;

Registration No. 3840879 for the mark CONSUMER
DATA INDUSTRY ASSOCIATION for “association
services, namely, promoting the interests of
those involved in the consumer credit reporting
information industry”;

Registration No. 3770581 for the mark SOLAR
ENERGY INDUSTRIES ASSOCIATION for, inter alia,
“association services, namely, promoting the
interests of the solar energy industry”;

Registration No. 3348659 for the mark OUTDOOR
INDUSTRY ASSOCIATION for, inter alia,
“association services, namely promoting the
interest of members of the Outdoor Industry
Association”; and

Registration No. 2954764 for the mark TREE CARE
INDUSTRY ASSOCIATION for “association services,
namely, promoting the interests of those in the
tree care industry.”

Applicant also made of record copies of third-party
registrations for various ASSOCIATION-formative marks, all
registered on the Principal Register under Section 2(f)
with a disclaimer of only “ASSOCIATION” for a variety of
Ser. No. 77836610
22
association services. The following examples are
illustrative:
Registration No. 3831792 for the mark ASSOCIATION
OF CORPORATE COUNSEL for, inter alia,
“association services, namely, promoting the
interests, professional advancement and education
of corporate legal counsel, and fostering
relations, communications and exchanges of ideas
between corporate legal counsel, academics,
professionals, students and other persons”;

Registration No. 3271551 for the mark COMMERCIAL
MORTGAGE SECURITIES ASSOCIATION for “association
services, namely, an association that informs and
educates the public and the association’s members
of trends in the commercial mortgage-backed
securities market”;

Registration No. 3290586 for the mark ELECTRIC
POWER SUPPLY ASSOCIATION for, inter alia, “trade
association services, namely, promoting the
interests of power suppliers, independent
generators and power marketers”;

Registration No. 3079065 for the mark ETHICS
OFFICER ASSOCIATION for, inter alia, “association
services, namely, promoting the interests of
corporate executives in the field of ethics
compliance and business conduct”; and

Registration No. 3272039 for the mark
INTERNATIONAL MOUNTAIN BIKING ASSOCIATION for
“association services, namely, promoting the
interests of mountain bikers; to create, enhance
and preserve trail opportunities for mountain
bikers worldwide.”

Finally, applicant made of record copies of one of its
press releases and an annual report, excerpted below:
TIA Tennis Forum Reviews Industry, Sets Path for
Future
Increasing the number of frequent players,
promoting QuickStart Tennis and developing a
Ser. No. 77836610
23
single tennis web portal for consumers are cited
as ways to increase and sustain growth.
Hilton Head Island, S.C. (Sept. 24, 2009) – The
third annual Tennis Industry Association Tennis
Forum, presented by Tennis Magazine, took place
in New York City during the US Open and brought
together industry leaders and many others
interested in the future of the tennis business.
The audience heard about the state of the
industry, various TIA and Growing Tennis
initiatives, and plans for moving the sport and
industry forward. …
(September 24, 2009 press release); and

2008 Year-End Executive Summary
Research and Market Intelligence Highlights
The growth in tennis participation made headlines
in 2008, as the number of players in the U.S.
increased to nearly 27 million (see page 4) and
the number of play occasions grew, too. This
upward trend in participation is expected to
continue, which is the good news. The bad news
is the economy and changing consumer habits,
which are affecting many tennis businesses and
their profitability. …
(The Tennis Marketplace 2008 Executive Summary,
Volume 9 Issue 1).

As noted above, the Office bears the burden of proof
and genericness must be shown by clear evidence.
Furthermore, any doubts must be resolved in applicant's
favor. In re DNI Holdings Ltd, supra.
Genericness is a fact-intensive determination and the
Board's conclusion must be governed by the record which is
presented to it. On balance we find that the Office has
not met its difficult burden of establishing by clear
evidence that the designation TENNNIS INDUSTRY ASSOCIATION,
Ser. No. 77836610
24
as a whole, is generic for the genus of
association services, namely, promoting the
interests of tennis facilities, tennis
manufacturers, tennis retailers and tennis court
contractors; providing market research services
to track the economic vitality of the tennis
industry.

We begin by noting the paucity of evidence of record
(five examples) showing the phrase TENNIS INDUSTRY
ASSOCIATION displayed in a manner that does not appear to
be trademark use. That is to say, there are only five
examples, excerpted above, displaying the applied-for mark
as “tennis industry association[s]” without any
capitalization or other indication that the term is
intended to indicate source in any particular entity.
Further, in two of the articles, despite the fact that the
term is not capitalized, it is not clear that the term is
being used generically. In fact, applicant states that one
of these examples, the May 31, 1995 Denver Post article,
actually is a reference to itself;7 and applicant’s evidence
of record supports a finding that the article indeed
discusses applicant and its Play Tennis America program.
The examining attorney argues that the record
demonstrates that TENNIS INDUSTRY is generic and
ASSOCIATION is generic and that, as a result, when these

7 Applicant’s reply brief, p. 5.
Ser. No. 77836610
25
“terms are combined, the applied-for mark as a whole
maintains its generic nature, as it refers to a specific
type of association, namely, an association that promotes
the interests of the tennis industry.”8 In support of this
position, the examining attorney primarily relies upon
cases involving marks consisting of the top level domain
indicator (TLD) “.com” combined with a generic term. See
1800Mattress.com IP LLC, 92 USPQ2d 1682 (Fed. Cir. 2009)
(MATTRESS.COM); In re Hotels.com, L.P., 91 USPQ2d 1532
(Fed. Cir. 2009) (HOTELS.COM); and In re Oppendahl & Larson
LLP, 71 USPQ2d 1370 (Fed. Cir. 2004) (PATENTS.COM).
However, those cases all involved marks that consist
of a single generic term and the TLD “.com” which was found
to have no source-identifying capacity. As discussed
above, TENNIS INDUSTRY ASSOCIATION is a phrase as
contemplated by American Fertility Society and we cannot
base our determination on the meanings of its constituent
terms, i.e., TENNIS INDUSTRY and ASSOCIATION, but must
consider the meaning of the phrase constituting the mark as
a whole. Id. at 1836. A mere three unambiguous examples
of generic usage of TENNIS INDUSTRY ASSOCIATION simply is
insufficient to support the genericness refusal. The
examining attorney’s remaining Lexis/Nexis and Internet

8 Examining attorney’s brief, unnumbered page 10.
Ser. No. 77836610
26
evidence suggests that TENNIS INDUSTRY has a recognized
meaning and that TENNIS INDUSTRY ASSOCIATION is an apt name
for an association of tennis industry members, but not that
the mark is generic for the recited association services.
Id. Again, we note that the Federal Circuit has drawn a
clear distinction between an apt name and a generic one:
“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.” Id.
The third-party registrations made of record by applicant
and the examining attorney serve to illustrate that, as has
been said many times, each case must be decided on its own
facts. See, e.g., AMF Inc. v. Am. Leisure Products, Inc.,
177 USPQ 268 (CCPA 1973); and In re Sunmarks, Inc., 32
USPQ2d 1470 (TTAB 1994).
Thus, based on the entirety of the record before us,
we have substantial doubt about whether TENNIS INDUSTRY
ASSOCIATION is perceived by the relevant public as a
generic name for the recited services. Such doubt must be
resolved in applicant's favor.
Acquired Distinctiveness
Applicant has the burden to establish a prima facie
case of acquired distinctiveness when registration is
sought under Section 2(f). See Yamaha International Corp.
Ser. No. 77836610
27
v. Hoshino Gakki Co., Ltd., 840 F.2d 1572, 6 USPQ2d 1001,
1006 (Fed. Cir. 1988). The greater the degree of
descriptiveness, the greater the evidentiary burden on the
user to establish acquired distinctiveness. See Yamaha
Int'l. Corp. v. Hoshino Gakki Co., 6 USPQ2d at 1008; and In
re Merrill Lynch, Pierce, Fenner & Smith, Inc., 4 USPQ2d at
1144. The sufficiency of the evidence offered to prove
secondary meaning must be evaluated in light of the nature
of the designation. Highly descriptive terms are less
likely to be perceived as trademarks, and therefore more
substantial evidence of secondary meaning thus will
ordinarily be required to establish their distinctiveness.
In support of its claim of acquired distinctiveness,
applicant submitted a copy of its September 24, 2009 press
release, a copy of its 2008 annual report containing an
overview of its research into the tennis industry for that
year, and 499 articles from the Westlaw database discussing
applicant and its various programs, in which applicant is
identified as “Tennis Industry Association.” In addition,
applicant relies upon its use in commerce of TENNIS
INDUSTRY ASSOCIATION as a mark since 1974, and a statement
by its counsel in its August 19, 2010 response to the
examining attorney’s Office action that between 1995 and
Ser. No. 77836610
28
2006, applicant “spent $465,785 in promotional expenses and
nearly $16.5 million on grassroots tennis programs.”
The 499 Westlaw articles, while voluminous, are less
probative than they might otherwise be for several reasons.
Applicant asserts that “these articles represent the full
results of a search for ‘tennis industry association’ in
the Westlaw legal research software United States news
database, and the results extend back nearly twenty years.”9
We note, however, that several of the articles are
duplicates from the same publication on the same date, thus
reducing the number of articles of record. Second, certain
of the articles do not feature stories about applicant or
its programs, but simply mention applicant in the larger
context of stories concerning other tennis organizations or
the subject of tennis and fitness in general, such that
applicant’s mark is not likely to be noted. Third, the
articles span a 16 year period from 1994 to 2010. Even if
none of the articles were duplicates, publication of 499
articles over 16 years is not necessarily compelling
evidence that the relevant public has come to recognize
TENNIS INDUSTRY ASSOCIATION as a source-identifier for
applicant’s services, particularly when only a small

9 Applicant’s brief, p. 9.

Ser. No. 77836610
29
percentage of them appear to be from the 2009-10 time
period.
Similarly, the statement of applicant’s counsel
regarding applicant’s promotional expenditures and
expenditures on its grassroots tennis program over the 11-
year period between 1995 and 2006 list only the numbers
involved. Applicant’s mere assertion that it spent nearly
$500,000 in promotional expenses and $16.5 million in
promoting its grassroots tennis program does not provide
any explanation of how these expenses translate into
recognition of TENNIS INDUSTRY ASSOCIATION as a mark.
Applicant has provided no information regarding whether and
to what extent the promotions or grassroots tennis program
feature TENNIS INDUSTRY ASSOCIATION as a mark as opposed to
other terms such as “cardio tennis” and “Play Tennis
America” with which applicant is associated. Furthermore,
applicant has provided very little information regarding
the manner and extent of its promotions or to whom they are
directed. Simply put, applicant has provided insufficient
detail whereby we may ascertain the impact of its
expenditures on the relevant public. Sheer numbers alone
are not necessarily enough to prove secondary meaning. In
re Boston Beer Co. L.P., 198 F.3d 1370, 53 USPQ2d 1056
(Fed. Cir. 1999) (claim based on annual sales under the
Ser. No. 77836610
30
mark of approximately $85 million, and annual advertising
expenditures in excess of $10 million, not sufficient to
establish acquired distinctiveness in view of highly
descriptive nature of mark). As for applicant’s press
release and annual report, again applicant has provided
insufficient information to show the extent to which they
are disseminated to the relevant public such that we may
conclude whether they have contributed to the public’s
recognition of TENNIS INDUSTRY ASSOCIATION as a mark.
Thus, while the totality of applicant’s evidence
demonstrates its efforts to promote the sport of tennis, it
does not establish that the relevant public has come to
view the designation TENNIS INDUSTRY ASSOCIATION as
applicant’s source-identifying trademark. See In re
Bongrain International Corp., 894 F.2d 1316, 13 USPQ2d 1727
(Fed. Cir. 1990); and In re Recorded Books Inc., 42 USPQ2d
1275 (TTAB 1997). See also In re Lorillard Licensing Co.,
99 USPQ2d 1312 (TTAB 2011). The issue here is the
achievement of distinctiveness, and the evidence falls
short of establishing this. Notably, the record contains
little direct evidence that the relevant classes of
consumers to whom applicant’s services are directed view
TENNIS INDUSTRY ASSOCIATION as a distinctive source
indicator therefor. Compare In re Country Music
Ser. No. 77836610
31
Association Inc., supra, and the much greater quantity and,
in particular, probative value, of evidence of acquired
distinctiveness made of record in that case.
Accordingly, even though we have found that the
designation TENNIS INDUSTRY ASSOCIATION is not generic, but
merely descriptive, given the highly descriptive nature of
such designation, we would need to see a greater quantity
of probative evidence than what applicant has submitted in
order to find that the designation has become distinctive
of applicant’s services. As noted above, the greater the
degree of descriptiveness, the greater the evidentiary
burden on the user to establish acquired distinctiveness.
See Yamaha Int'l. Corp., supra; and In re Merrill Lynch,
Pierce, Fenner & Smith, Inc., supra.
Summary
In coming to our determination, we have considered all
of the arguments and evidence presented by applicant and
the examining attorney, including any arguments and
evidence not specifically discussed herein.
Decision:
The refusal under Section 2(e)(1) of the Act on the
ground that the proposed mark is so highly descriptive as
to be generic is reversed. However, because applicant has
not demonstrated that the mark has acquired distinctiveness
Ser. No. 77836610
32
and is registrable pursuant to the provisions of Section
2(f), we affirm the refusal under Section 2(e)(1) of the
Act on the ground that the mark is merely descriptive.