The Language Workshop for Children/ Cercle Franco Americain, Inc.

Trademark Trial and Appeal Board

Aug 14, 2003

No. 75516045 (T.T.A.B. Aug. 14, 2003)

Mailed: August 14, 2003
Paper No.20
GDH/gdh
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re The Language Workshop for Children/Cercle Franco Americain,
Inc.
________
Serial No. 75/516,045
_______
Charles H Knull of Graham, Campaign P.C. for The Language
Workshop for Children/Cercle Franco Americain, Inc.
Toni Y. Hickey, Trademark Examining Attorney, Law Office 115
(Tomas Vlcek, Managing Attorney).
_______
Before Hohein, Chapman and Rogers, Administrative Trademark
Judges.
Opinion by Hohein, Administrative Trademark Judge:
The Language Workshop for Children/Cercle Franco
Americain, Inc. has filed an application to register the term
"FOR TOTS" for "educational services, namely, providing classes
in foreign languages to children and distributing course material
in connection therewith."1
Registration has been finally refused under Section
2(e)(1) of the Trademark Act, 15 U.S.C. §1052(e)(1), on the
1 Ser. No. 75/516,045, filed on July 9, 1998, which alleges a date of
first use anywhere and in commerce of 1973.
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT
OF THE TTAB
Ser. No. 75/516,045
2
ground that, when used in connection with applicant's services,
the term "FOR TOTS" is merely descriptive of them and that the
evidentiary showing relied upon by applicant is insufficient to
establish that such term has acquired distinctiveness under
Section 2(f) of the Trademark Act, 15 U.S.C. §1052(f).2
Registration also has been finally refused under Sections 1, 2, 3
and 45 of the Trademark Act, 15 U.S.C. §§1051, 1052, 1053 and
1127, on the ground that, as used in connection with the
specimens furnished by applicant, the term "FOR TOTS" does not
function as a service mark for applicant's services.
Applicant has appealed. Briefs have been filed, but an
oral hearing was not requested. We affirm the refusal to
register as to the ground of mere descriptiveness, but reverse
the refusal to register with respect to the ground of failure to
function as a service mark.
Turning first to the latter ground of refusal, we note
that applicant originally submitted various advertisements and
promotional literature as specimens in which the term "FOR TOTS"
appears as part of such phrases as "French for Tots," "Spanish
for Tots," "Languages for Tots" and "Fun with French and Spanish
for Tots." While in none of those instances is the term "FOR
TOTS" used in such a manner that it makes a separate and distinct
commercial impression which serves to identify and distinguish
2 Thus, in the absence of a showing of acquired distinctiveness, if the
term "FOR TOTS" is considered to be merely descriptive of applicant's
services, it would remain unregistrable under Section 2(e)(1). See,
e.g., Yamaha Int'l Corp. v. Hoshino Gakki Co. Ltd., 840 F.2d 1572, 6
USPQ2d 1001, 1007 (Fed. Cir. 1988), citing In re Capital Formation
Counselors, Inc., 219 USPQ 916, 917 n. 2 (TTAB 1983).
Ser. No. 75/516,045
3
applicant's services, applicant submitted another specimen,
consisting of the advertisement reproduced below,
together with a declaration from its president properly verifying
that such additional specimen was in use in commerce since at
least as early as the filing date of its application.
As the Examining Attorney, citing In re Advertising &
Marketing Development Inc., 821 F.2d 614, 2 USPQ2d 2010, 2015
(Fed. Cir. 1987), indicates in her brief, whether a term has been
used as a mark for a particular service is a question of fact
which is determined primarily on the basis of the specimen or
specimens of use submitted with the application. In particular,
she correctly observes that:
The fact that the proposed mark appears
in an advertisement or brochure in which the
services are advertised does not in itself
show use as a mark. The record must show
that there is a direct association between
the mark and the service. See Peopleware
Systems, Inc. v. Peopleware, Inc., 226 USPQ
320 (TTAB 1985) ....
While a service mark does not have to be
displayed in any particular size or degree of
prominence, it must be used in a way that
Ser. No. 75/516,045
4
makes a commercial impression separate and
apart from the other elements of the
advertising matter or other material upon
which it is used, such that the designation
will be recognized by prospective purchasers
as a source identifier. In re C.R. Anthony
Co., 3 USPQ2d 1894 (TTAB 1987). Moreover,
the proposed mark must not blend so well with
other matter on [the] specimens that it is
difficult or impossible to discern what the
mark is. In re Royal Viking Line A/S, 216
USPQ 795 (TTAB 1982).
Factors to be considered in determining
whether the asserted mark is used as a
service mark include whether the wording
[claimed to constitute the mark] is
physically separate from textual matter,
whether [such] wording is displayed in
capital letters or enclosed in quotation
marks, and the manner in which a term is used
in relation to other material on the
specimens. See Smith International, Inc. v.
Olin Corp., 209 USPQ 1033 (TTAB 1981).
While a slogan can function as a ...
service mark, use of a phrase or slogan to
convey advertising or promotional
information, rather than to identify and
indicate the source of the services, is not
service mark use. See In re Brock Residence
Inns, Inc., 222 USPQ 920 (TTAB 1984) (FOR A
DAY, A WEEK, A MONTH OR MORE [held] so highly
descriptive and informational in nature that
purchasers would be unlikely to perceive it
as an indicator of the source of hotel
services).
Although asserting in her brief, in light of the above,
that "upon viewing the proposed mark on the ... specimens, the
ordinary customer sees the wording FOR TOTS couched between other
informational wording in such a way that it does not create a
separate and distinct commercial impression apart from the other
elements to constitute service mark use," the primary focus of
the Examining Attorney's argument is that such wording "is used
to convey to customers that the [applicant's] services are
Ser. No. 75/516,045
5
intended for use by children." Specifically, the Examining
Attorney maintains that "the phrase 'FOR TOTS' is a familiar
expression widely used to give customers, as the Applicant does,
information about services that are offered to young children."
Referring to various "Internet evidence which includes usage of
the phrase 'FOR TOTS,' and evidence retrieved from Lexis/Nexis®
which illustrates that the phrase 'FOR TOTS' is commonly used in
connection with goods and services targeted to, and for use by[,]
young children," the Examining Attorney contends that "[t]he
widespread use of such a phrase has more than likely conditioned
the public to look upon the proposed mark as merely an
informational advertising slogan and not as an indicator of the
source of the services."
With respect, in particular, to the additional specimen
furnished by applicant and reproduced above, the Examining
Attorney likewise argues that "[t]he proposed phrase FOR TOTS
merely utilizes ordinary words to convey information about the
Applicant's services, namely, that the services are 'for tots.'"
The evidence, the Examining Attorney reiterates, clearly
demonstrates that "the proposed mark is used to identify
characteristics of the services and is not likely to be
recognized by the public as a source indicator."
While the Examining Attorney thus concludes that "the
proposed mark fails to function as a service mark," we find that,
as used on the additional specimen submitted by applicant, the
term "FOR TOTS" is indeed used in the manner of a service mark.
Like the words and design comprising "THE LANGUAGE WORKSHOP FOR
Ser. No. 75/516,045
6
CHILDREN" mark, the term "FOR TOTS" is set off separately from
the other matter in the advertisement and it is also displayed in
larger type than the descriptive matter listing the locations in
which applicant appears to render its services. As so used,
there is a direct association between such term and applicant's
services. It plainly is used in a way that makes a commercial
impression which is separate and apart from the other matter in
the advertisement, such that the term "FOR TOTS" would be
recognized by prospective purchasers as a source identifier. In
short, unlike the other specimens submitted by applicant, the use
of the term "FOR TOTS" as shown in the additional specimen filed
by applicant is service mark use.
Moreover, intrinsically, the term "FOR TOTS" is clearly
different from such general informational or public service
advertising slogans as those at issue in, e.g., In re Volvo Cars
of North America Inc., 46 USPQ2d 1455, 1460-61 (TTAB 1998)
[phrase "DRIVE SAFELY" found an ordinary and commonly used safety
admonition which does not function as a mark for automobiles]; In
re Manco, Inc., 24 USPQ2d 1938, 1942 (TTAB 1992) [term "THINK
GREEN" held an informational slogan for environmental/ecological
concerns which does not function as a mark for mailing and
shipping boxes and weatherstripping]; In re Remington Products
Inc., 3 USPQ2d 1714, 1715 (TTAB 1987) [phrase "PROUDLY MADE IN
USA" found an informational slogan which does not function as a
mark for electric shavers]; In re Brock Residence Inns, Inc.,
supra at 922 [slogan "FOR A DAY, A WEEK, A MONTH OR MORE" held so
highly descriptive and informational in nature that it would not
Ser. No. 75/516,045
7
be perceived as an indicator of source for hotel services]; and
In re Tilcon Warren, Inc., 221 USPQ 86, 88 (TTAB 1984) [phrase
"WATCH THAT CHILD" is a familiar safety slogan which does not
function as a mark for crushed stone and concrete]. It is
apparent, therefore, that the Examining Attorney's argument that
the term "FOR TOTS" fails to function as a mark is, in essence, a
contention that such term is merely descriptive of applicant's
services, rather than one based on the manner in which the term
is used on the additional specimen.
Turning, then, to consideration of the issue of mere
descriptiveness, there is no doubt that the term "FOR TOTS" is
merely descriptive of applicant's educational services of
providing classes in foreign languages to children and
distributing course material in connection therewith. Applicant,
in fact, has in effect conceded such, having amended its
application to include a claim of acquired distinctiveness in
response to the refusal to register on the ground of mere
descriptiveness without arguing in the alternative against the
refusal to register. Such a claim is tantamount to an admission
that the term "FOR TOTS" is not inherently distinctive when used
in connection with applicant's services and that, because it is
merely descriptive thereof, it is unregistrable on the Principal
Register absent a showing of acquired distinctiveness.3 See,
3 This situation is to be distinguished from that where an applicant,
in response to a mere descriptiveness refusal, not only adds a claim
in the alternative that the matter sought to be registered has
acquired distinctiveness pursuant to Section 2(f), but also argues
against the merits of the Examining Attorney's position. In such
instance, it is permissible to advance the claim that such matter has
acquired distinctiveness, yet argue in the alternative that the matter
Ser. No. 75/516,045
8
e.g., Yamaha International Corp. v. Hoshino Gakki Co. Ltd., supra
at 1005; In re Cabot Corp., 15 USPQ2d 1224, 1229 (TTAB 1990); In
re Professional Learning Centers, Inc., supra at 71; and TMEP
Section 1212.02(b) (3d ed. 2d rev. May 2003). Applicant, in
essence, has also conceded the mere descriptiveness of the term
"FOR TOTS" inasmuch as its prior registrations on the Principal
Register of the marks "SPANISH FOR TOTS" and "FRENCH FOR TOTS"
for, respectively, "educational services, namely, providing
classes in the Spanish language to children and distributing
course material in connection therewith" and "educational
services, namely, providing classes in the French language to
children and distributing course material in connection
therewith," each registered pursuant to the provisions of Section
2(f) with a disclaimer of the generic term "SPANISH" or "FRENCH."
Because the entirety of each of such marks registered on the
basis of a showing of acquired distinctiveness, it is apparent
that each element of such marks, including the term "FOR TOTS,"
was initially considered to be merely descriptive of the
respective services. See TMEP Sections 1212.02(e) and 1213.03(b)
(3d ed. 2d rev. May 2003).
Furthermore, and aside from applicant's concessions, it
is well settled that a term is considered to be merely
descriptive of goods or services, within the meaning of Section
sought to be registered is not merely descriptive, inasmuch as the
former does not constitute a concession that the matter sought to be
registered is not inherently distinctive. See, e.g., In re E S
Robbins Corp., 30 USPQ2d 1540, 1542 (TTAB 1992); In re Professional
Learning Centers, Inc., 230 USPQ 70, 71 n. 2 (TTAB 1986); and TMEP
Section 1212.02(c) (3d ed. 2d rev. May 2003).
Ser. No. 75/516,045
9
2(e)(1) of the Trademark Act, if it forthwith conveys information
concerning any significant ingredient, quality, characteristic,
feature, function, purpose, subject matter or use of the goods or
services. See, e.g., In re Gyulay, 820 F.2d 1216, 3 USPQ2d 1009
(Fed. Cir. 1987); and In re Abcor Development Corp., 588 F.2d
811, 200 USPQ 215, 217-18 (CCPA 1978). It is not necessary that
a term describe all of the properties or functions of the goods
or services in order for it to be considered to be merely
descriptive thereof; rather, it is sufficient if the term
describes a significant attribute or idea about them. Moreover,
whether a term is merely descriptive is determined not in the
abstract but in relation to the goods or services for which
registration is sought, the context in which it is being used or
is intended to be used on or in connection with those goods or
services and the possible significance that the term would have
to the average purchaser of the goods or services because of the
manner of such use. See In re Bright-Crest, Ltd., 204 USPQ 591,
593 (TTAB 1979). Thus, "[w]hether consumers could guess what the
product [or service] is from consideration of the mark alone is
not the test." In re American Greetings Corp., 226 USPQ 365, 366
(TTAB 1985).
Applicant, in its initial brief, "contends that FOR
TOTS standing alone is a suggestive mark" because it "does not
describe the attributes" of applicant's educational services of
providing classes in foreign languages to children "other than
the possible recipients of the services, who would not even be
the decision-makers as to purchasing the services," which of
Ser. No. 75/516,045
10
course would instead be selected by the children's parents or
other interested adults. While acknowledging that the record
contains examples of third-party "uses of FOR TOTS in connection
with other services," as well third-party registrations in which
the term "TOTS" has been disclaimed, applicant points out that
none of such instances pertains to language instruction programs
or studies directed to children. Applicant admits, however, that
as to the third-party uses of the term "FOR TOTS," such "usages
are, in fact, similar to Applicant's use of FOR TOTS with
descriptive words denoting language, e.g., 'shots for tots,'
'Torah for Tots' and 'Tech for Tots.'"
The Examining Attorney, on the other hand, correctly
notes that a term which describes the intended users of, or
targeted audience for, a particular product or service is merely
descriptive thereof. See, e.g., Hunter Publishing Co. v.
Caulfield Publishing Ltd., 1 USPQ2d 1996, 1998 (TTAB 1986) [term
"SYSTEMS USER" found merely descriptive of a trade journal
directed toward users of large data processing systems]; In re
Camel Mfg. Co., Inc., 222 USPQ 1031, 1032 (TTAB 1984) [term
"MOUNTAIN CAMPER" held merely descriptive of retail mail order
services in the field of outdoor equipment and apparel]; In re
Gentex Corp., 151 USPQ 435, 435-36 (TTAB 1966) [term "PARADER"
found merely descriptive of protective helmets for persons who
parade]. She persuasively argues, in view thereof, that the
record demonstrates that the term "FOR TOTS" merely describes a
characteristic or feature of applicant's educational services in
Ser. No. 75/516,045
11
that such term specifies that the intended users for which it
provides classes in foreign languages to children are tots.
Specifically, she points out that The American Heritage
Dictionary of the English Language (3d ed. 1992) defines "tot" in
relevant part as "1. A small child." In addition, she indicates
in her brief that:
The examining attorney also provided
evidence of the descriptive nature of the
mark in the form of (1) excerpted articles
from ... LEXIS/NEXIS, a computerized database
in which FOR TOTS is a common phrase used to
describe products and services geared toward
a recognizable consumer group; (2) excerpted
articles from ... the Search Engine GOOGLE,
... which demonstrate that participants in
the market place need to use the term FOR
TOTS to describe the target audience for
their goods and services; and (3) a sample of
eight registrations wherein the term TOTS
when used in connection with children related
services is consistently disclaimed. The
applicant's specimens include a ... mailer
card, ... advertisements, and a ... brochure.
All of this evidence collectively
demonstrates that [applicant's] proposed mark
is merely descriptive of the services because
it describes the intended users of the
applicant's services.
Representative examples of the above mentioned evidence
include the following "LEXIS/NEXIS" excerpts (emphasis added):
"Children age 3 to 5 can enjoy a two-
week camp designed just for them at Time for
Tots ...." -- Press-Enterprise (Riverside,
CA), August 14, 2002;
"Kay Vandergrift, professor of
children's literature at Rutgers University,
says tracts for tots are akin to 19th century
chapbooks--'the child-sized books with good
illustrations at a time when there weren't
many books available to kids.'" -- USA Today,
November 6, 2000;
Ser. No. 75/516,045
12
"SCHAFFLER: Tech for tots. Your kids
may soon throw away their blocks. Alfy.com
is after your tech-savvy toddler, next." --
CNN Business Unusual, October 9, 2000;
"Water floats for tots are sold in toy
stores because they're toys, not lifesaving
devices." -- CNN News, July 27, 1997;
"Stocks for tots: If you want to buy a
couple shares of the Boston Celtics or
McDonald's for a child, Charles Schwab has
made the gift a bit cheaper." -- USA Today,
September 12, 1996; and
"... counties that didn't have a place
for children to get their shots.
....
'Shots for Tots' coordinator Donna
Sacknoff says the program has helped, since
70% of the immunizations in Louisiana are
done in public clinics." -- USA Today, April
19, 1994.
Articles excerpted from "GOOGLE" include the following
representative examples (emphasis added):
"'Tales for Tots,' the free monthly ...
storyhour for youngsters ages three to six,
will begin its Fall Program on ... September
21, in the Children's Room." -- http://www.-
hobokeni.com/fohl/tots/html;
"'ART FOR TOTS' with Julie Herold
....
Parents! Bring your wee ones (18 months
- 3 years) down and join in the fun! Julie
Herold has lots of neat art activities for
you and your child to share. ....
Note: 'All Art for Tots' classes meet
on Thursday mornings from 10:30-11:30 a.m."
-- http://www.muscatineartcenter.org/educa-
tion.htm;
"Torah For Tots is a wonderful
enrichment program .... The classes ...
provide an educational experience for three-
and four-year olds, and revolve around
holidays, and our wonderful Jewish culture
and traditions." -- http://uahc.org/congs/-
ny/ny037/torah_for_tots.htm; and
Ser. No. 75/516,045
13
"Wings For Tots is an innovative ...
program designed for children in preschool
through second grade. Each presentation uses
four birds of prey, plus touchable items such
as feathers, feet and wings. Through the
hands-on experience of Wings For Tots
children learn through teaching and tactile
experience how and why a bird differs from
other animals and what makes a raptor unique
among birds." -- http://www.worldbirdsanc-
tuary.org/educate.html.
The various third-party registrations, in which the
word "TOTS" has been disclaimed, include such marks and
associated services as "TOTALLY FOR TOTS" for "promoting shots
for children"; "TERRIFIC TOTS" for "conducting parent-child
interacting activity classes"; "TOTS OH MY!" for "day care
services for tots and children"; "TECHNO TOTS" for "providing
computer instruction to children"; "TITAN TOTS" for "child
daycare centers"; and "JOLLY TOTS" and design for "specialized
child care for infants age six weeks to pre-kindergarten." As to
applicant's advertising and promotional materials, such specimens
indicate, among other things, that its "FRENCH FOR TOTS" workshop
is "[a] special playgroup that teaches toddlers to love French,"
while its "LANGUAGES FOR TOTS" programs, which include its
"SPANISH FOR TOTS" as well as "FRENCH FOR TOTS" workshops, are
touted as being "conducted by native speakers," so that "tots
hear and absorb a correct form of pronunciation."
It is plain in light of the above that the term "FOR
TOTS," as contended by the Examining Attorney, merely describes
the intended users of or audience to whom applicant's educational
services are principally directed. Nothing in such term is
ambiguous or incongruous when considered in relation to
Ser. No. 75/516,045
14
applicant's educational services of providing classes in foreign
languages to children and distributing course material in
connection therewith. Consequently, no imagination, cogitation
or gathering of further information would be necessary in order
for customers to perceive precisely the merely descriptive
significance of the term "FOR TOTS." Such term immediately
describes, without the need for conjecture or speculation, that a
significant characteristic or feature of applicant's services is
that they are intended for tots, i.e., very young children.
In addition, the fact that none of the third-party uses
or registrations relates to the same services as those provided
by applicant does not lessen the probative value of such
evidence, since it shows, as applicant essentially admits, that
regardless of the particular services in connection with which
the term "FOR TOTS" is employed, it still conveys forthwith the
meaning that the services are intended for tots. Several of the
"GOOGLE" excerpts, in particular, illustrate such meaning with
respect to various educational services consisting of classes
designed for very young children. Furthermore, and in any event,
even if applicant is the first and/or only user of the term "FOR
TOTS" in connection with its specific educational services of
providing classes in foreign languages to children and
distributing course material in connection therewith, it is well
established that being the initial and/or sole user of a term
does not justify the registration thereof where, as here, the
term projects only a merely descriptive significance. See, e.g.,
In re Quik-Print Copy Shop, Inc., 616 F.2d 523, 205 USPQ 505, 507
Ser. No. 75/516,045
15
n. 8 (CCPA 1980); and In re National Shooting Sports Foundation,
Inc., 219 USPQ 1018, 1020 (TTAB 1983).
Turning to the remaining issue in this appeal, it is
settled that applicant has the burden of proof with respect to
establishing a prima facie case that the term "FOR TOTS" has
acquired distinctiveness. See Yamaha International Corp. v.
Hoshino Gakki Co. Ltd., supra at 1006. The amount and character
of evidence needed to demonstrate that a term has acquired
distinctiveness, however, necessarily varies, depending upon the
degree of descriptiveness involved, and becomes progressively
greater as the descriptiveness of the term increases. See, e.g.,
In re Bongrain International (American) Corp., 894 F.2d 1316, 13
USPQ2d 1727, 1728 n. 4 (Fed. Cir. 1990); Yamaha International
Corp. v. Hoshino Gakki Co. Ltd., supra at 1008; In re Mine Safety
Appliances Co., 66 USPQ2d 1694, 1697 (TTAB 2002); and In re
Leatherman Tool Group Inc., 32 USPQ2d 1443, 1451 (TTAB 1994).
In this regard, Trademark Rule 2.41(a) provides in
relevant part that an applicant may demonstrate that its mark has
acquired distinctiveness by submitting "affidavits, or
declarations in accordance with §2.20, depositions, or other
evidence showing duration, extent and nature of use in commerce
and advertising expenditures in connection therewith (identifying
types of media and attaching typical advertisements), and
affidavits, or declarations in accordance with §2.20, letters or
statements from the trade or public, or both, or other
appropriate evidence tending to show that the mark distinguishes
such goods." In the alternative, Trademark Rule 2.41(b) provides
Ser. No. 75/516,045
16
that "[i]n appropriate cases, ownership of one or more prior
registrations on the Principal Register ... of the same mark may
be accepted as prima facie evidence of distinctiveness" and that
an acquired distinctiveness claim may also be based on a verified
statement that the mark has been in "substantially exclusive and
continuous use in commerce ... by applicant for the five years
before the date on which the claim of distinctiveness is made".
Trademark Rule 2.41(b) additionally states that while either of
such showings "may, in appropriate cases, be accepted as prima
facie evidence of distinctiveness," "[i]n each of these
situations, however, further evidence may be required." In
addition, as set forth in TMEP Section 1212.05(a) (3d ed. 2d rev.
May 2003), it is the practice of the United States Patent and
Trademark Office, based upon the cases cited therein, that: "If
the mark is highly descriptive or misdescriptive of the goods or
services named in the application, the statement of five years'
use alone will be deemed insufficient to establish acquired
distinctiveness."
Applicant, as indicated earlier, amended its
application in response to the mere descriptiveness refusal to
set forth a claim of acquired distinctiveness. Initially,
applicant based such claim upon an assertion of five years
substantially exclusive and continuous use of the term "FOR TOTS"
in commerce in connection with its services. However, because
such basis was found insufficient, due to the contention that the
term sought to be registered was highly descriptive of its
Ser. No. 75/516,045
17
services, applicant subsequently submitted a declaration from its
president, Francois Thibaut.
In his declaration, which is dated April 13, 2000, Mr.
Thibaut avers, among other things, that applicant "first made use
of the service mark FOR TOTS in connection with our school in
1973; that "[s]ince that time, use of the mark has been extended
not only to many other new educational programs at our school in
New York City, but also to the establishment of other programs in
other states"; that "[t]he mark is now used on all the programs
just mentioned"; that sales of "[t]he services offered under the
FOR TOTS mark during each of the past five years have amounted
to" $802,309 in 1999, $360,183 in 1998, $169,238 in 1997,
$109,363 in 1996 and $108,566 in 1995; that in the same period
applicant "spent the following amounts on advertising to those
people (primarily parents) who purchase our services by enrolling
their children in our programs": $75,986 in 1999, $85,000 in
1998, $66,333 in 1997, $33,475 in 1996 and $35,165 in 1995; that
applicant has "advertised recently" in 18 different newspapers
and parenting guides published and distributed in New York City
and other localities in the States of New York, New Jersey and
Connecticut; that "[t]he service mark FOR TOTS is recognized in
the educational sector and among parents purchasing education for
their children as being a service mark of" applicant; that, as an
example of such, is "an [attached] article from the Wall Street
Journal [which appeared] pre-1992, concerning Spanish FOR TOTS
and our other programs"; that applicant "is not aware that the
service mark FOR TOTS has been used by any other school or
Ser. No. 75/516,045
18
educator to denote the providing of educational services to
children"; and that applicant accordingly believes that its "use
of the service mark FOR TOTS is and has been distinctive." As
additional evidence offered in support of its claim of acquired
distinctiveness, applicant relies upon ownership of its
previously noted registrations for the marks "FRENCH FOR TOTS"
and "SPANISH FOR TOTS."
Applicant insists that the above evidence suffices to
demonstrate acquired distinctiveness of the term "FOR TOTS" for
its educational services, asserting in its initial brief that,
among other things, the Examining Attorney has not shown how "a
business spending about 10% of its revenues on advertising and
marketing the services under its mark for a period of years does
not meet the threshold criteria for acquired distinctiveness."
We concur with the Examining Attorney, however, that the problem
with such figures, which likewise extends to evaluation of the
amounts of applicant's sales, lies in the fact that, as stated in
her brief, "applicant did not submit copies of the cited
advertisements" and, thus, there is no way of discerning whether
the term "FOR TOTS" has been used in such advertising in a manner
that the purchasing public has come to recognize it as a mark.
Of the sole advertising and promotional materials of record,
namely, the specimens originally submitted with the application
and the additional specimen subsequently filed in connection
therewith, only the latter shows use, as we held above, of the
term "FOR TOTS" in such a way that it functions as a mark for
applicant's educational services. The extent to which applicant
Ser. No. 75/516,045
19
has used such ad, including the percentage or other indication of
the amounts of its advertising and promotional expenditures spent
thereon, is unknown. In view thereof, and especially in light of
several instances of third-party use of the term "FOR TOTS"
(e.g., "Tales for Tots," "Art for Tots," "Torah For Tots" and
"Wings For Tots") in connection with educational services for
tots, it is plainly the case that such term is highly descriptive
of applicant's services and that sales and advertising figures,
in the abstract, are insufficient to demonstrate acquired
distinctiveness. Such figures, at best, may show the popularity
of applicant's services, but they do not establish recognition of
the term "FOR TOTS" as a mark. See, e.g., In re Bongrain
International (American) Corp., supra at 1729.
Furthermore, given the high degree of descriptiveness
demonstrated by the record with respect to the term "FOR TOTS,"
it is clear that a claim of five years substantially exclusive
and continuous use thereof in commerce is insufficient to
establish acquired distinctiveness. As to applicant's additional
argument, however, that its ownership of registrations on the
Principal Register of the marks "FRENCH FOR TOTS" and "SPANISH
FOR TOTS," for basically the same services as those set forth in
this application, entitles it to a finding of acquired
distinctiveness for the term "FOR TOTS," we agree with the
Examining Attorney that the former are not the "same mark" as the
latter for purposes of the showing permitted by Trademark Rule
2.41(b).
Ser. No. 75/516,045
20
Applicant, as reiterated in its reply brief, argues in
this regard that "[t]he difference between FOR TOTS and SPANISH
FOR TOTS and FRENCH FOR TOTS is that the latter two marks add the
descriptive names of languages which are the subject of the
services" and which "have been disclaimed in the registrations."
While conceding that "the marks are technically not the same
(being of different word count)," applicant contends that "the
difference is not in the distinctive portion." Applicant's
contention is misplaced since, as noted earlier, it is not the
term "FOR TOTS" which was shown to have acquired distinctiveness
but the entire phrases "SPANISH FOR TOTS" and "FRENCH FOR TOTS"
which, with disclaimers of, respectively, the generic words
"SPANISH" and "FRENCH," were found registrable pursuant to the
provisions of Section 2(f) of the statute. Nevertheless,
applicant further "urges the Board to adopt the view that in
considering registrations for new word marks within a Family of
Marks, ... the essential common element of the marks be the
measure of the same mark" (underlining in original).4
4 It should be pointed out that the fact that the record shows that
applicant is the owner of the two registrations mentioned above and
also uses the phrase "LANGUAGES FOR TOTS" does not prove that
applicant has created a "family of marks" which the purchasing public
recognizes by the surname "FOR TOTS." See, e.g., J & J Snack Foods
Corp. v. McDonald's Corp., 932 F.2d 1460, 18 USPQ2d 1889, 1891-92
(Fed. Cir. 1991). As the Examining Attorney properly observes in her
brief, to establish a family of marks "it must first be shown by
competent evidence 'that ... the marks containing the claimed 'family
feature[,] or at least a substantial number of them, were used and
promoted together ... in such a manner as to create public recognition
coupled with an association of common origin predicated on the
'family' feature; and second, that the 'family' feature is distinctive
(i.e. not descriptive or highly suggestive or so commonly used in the
trade that it cannot function as a distinguishing feature of any
party's mark)," citing Land-O-Nod Co. v. Paulison, 220 USPQ 61, 65-66
(TTAB 1983). Here, even assuming that proof of a family of marks
could be used to demonstrate acquired distinctiveness of the family
Ser. No. 75/516,045
21
We decline applicant's invitation to adopt its
viewpoint. As the Examining Attorney persuasively points out in
her brief:
Applicant's prior registrations involve
different marks. Even though the [marks in
the] prior registrations [each] include the
current proposed designation ..., the
applied-for mark, FOR TOTS, does not include
the word SPANISH or FRENCH. The public's
association of the designations SPANISH FOR
TOTS or FRENCH FOR TOTS with applicant does
not mean that the mark FOR TOTS will
automatically be seen by the public as also
indicating source in applicant; and applicant
has provided [virtually] no evidence at all
as to the public perception of the applied-
for mark. ....
Thus, we share the Examining Attorney's conclusion in her brief
that applicant's "prior registrations do not demonstrate that the
... proposed mark has acquired distinctiveness because ... the
additional terms SPANISH and FRENCH change the overall commercial
impressions of the marks" so that they are not the same mark as
the term "FOR TOTS." Consequently, applicant's claim under
Section 2(f) falls short of the necessary showing that the term
"FOR TOTS" has acquired distinctiveness with respect to its
educational services and is not registrable on the Principal
Register.
Decision: The refusal to register on the ground of
failure to function as a service mark is reversed, but the
refusal on the ground of mere descriptiveness, including the
element or surname, the Examining Attorney is correct in noting that
"the words FOR TOTS are highly descriptive of the [applicant's]
services[,] which ... are provided to young children, i.e., 'tots,'"
and thus application of the family of marks doctrine "does not support
registration of the designation FOR TOTS."
Ser. No. 75/516,045
22
insufficiency of the evidentiary showing with respect to the
claim of acquired distinctiveness, is affirmed.