William J. Hardie

Trademark Trial and Appeal Board

Jan 28, 2002

No. 75315021 (T.T.A.B. Jan. 28, 2002)

1/28/02

Paper No. 30
EJS

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re William J. Hardie
________

Serial No. 75/315,021
_______

Jill M. Pietrini, Edward M. Jordan and Michael B. Adlin of
Manatt, Phelps & Phillips, LLP for William J. Hardie

Jeffrey S. Molinoff, Trademark Examining Attorney, Law
Office 107 (Thomas Lamone, Managing Attorney)
_______

Before Cissel, Seeherman and Quinn, Administrative
Trademark Judges.

Opinion by Seeherman, Administrative Trademark Judge:

William J. Hardie has appealed from the final refusal
of the Trademark Examining Attorney to register HOOTENANNY
as a mark for “entertainment services in the nature of live
musical performances.”1 Registration has been refused on
the ground that applicant’s asserted mark is generic and
that, if the term is not generic, it is merely descriptive

1 Application Serial No. 75/315,021, filed June 26, 1997 and
asserting first use and first use in commerce as of May 15, 1995.
THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Ser No. 75/315,021
2
and has not acquired distinctiveness as a mark for
applicant’s services.
This appeal has had a rather complicated history. A
final refusal first issued on November 16, 1998, on the
ground that applicant’s mark is merely descriptive of his
identified services. Applicant appealed from that refusal,
both applicant and the Examining Attorney filed briefs, and
applicant filed a reply brief. An oral hearing was also
scheduled. A few days before that hearing was to be held,
applicant filed a consented motion to remand so that
applicant could amend his application to seek registration
pursuant to Section 2(f) of the Trademark Act, 15 U.S.C.
1052(f). Because the Examining Attorney consented to the
request for remand, the request was granted, and the
application was remanded to the Examining Attorney to
consider the Section 2(f) claim. See TBMP 1207.02. After
the Examining Attorney made final a refusal to accept that
claim, the appeal was then resumed, and applicant and the
Examining Attorney filed supplemental appeal briefs.2
Applicant withdrew his request for an oral hearing.

2 Applicant stated in his supplemental appeal brief that he
incorporated all of his previous filings by reference in their
entireties. In the reply brief filed as part of his first set of
appeal papers, applicant objected to certain exhibits submitted
by the Examining Attorney with his original appeal brief, namely,
two dictionary definitions and complete copies of articles,
excerpts of which had been previously submitted during the
Ser No. 75/315,021
3
There is some dispute as to the issues on appeal. The
Examining Attorney asserts that because applicant amended
his application to seek registration pursuant to Section
2(f), he has acknowledged that his mark is merely
descriptive. Therefore, the Examining Attorney contends
that the issue is whether applicant’s claimed mark is
generic or, if not, whether applicant has established that
the mark has acquired distinctiveness. Applicant argues
that the question of mere descriptiveness is still at
issue, pointing to that section of the Trademark Trial and
Board Manual of Procedure (TBMP) that provides that an

examination of the application. The basis for the objection was
that the exhibits had not been made of record prior to the
appeal. Trademark Rule 2.142(d). Because the application was
subsequently remanded (the course provided by Trademark Rule
2.146(d) if the applicant or Examining Attorney wishes to submit
additional evidence after an appeal is filed), it is assumed that
applicant’s objection has been withdrawn. In any event, the
Board may take judicial notice of dictionary definitions, and
complete copies of articles which were previously submitted in
excerpt form are not considered to be new evidence. See In re
Bed & Breakfast Registry, 791 F.2d 157, 229 USPQ 818 (Fed. Cir.
1986). Further, despite what might be characterized as technical
irregularities, we have considered the language quoted by
applicant from the prefaces of the dictionaries.
We also note that in his supplemental appeal brief applicant
complains that the Examining Attorney submitted with his final
Office action articles referring to third parties’ “alleged” uses
of HOOTENANNY rather than inquiring about the uses and giving
applicant time to investigate them. Although applicant has not
made a formal objection to the submission of the articles, we
confirm that the Examining Attorney did nothing inappropriate in
his examination. Examining Attorneys may, and generally do, make
evidence of record with final Office actions. If applicant had
wished to submit evidence to rebut the articles, he could have
done so by filing a request for reconsideration or even a request
for remand.
Ser No. 75/315,021
4
applicant may assert that its mark is not merely
descriptive and may, in the alternative, assert a claim of
acquired distinctiveness.
Applicant is correct that an applicant may argue
inherent distinctiveness and acquired distinctiveness in
the alternative. However, in this case applicant did not
make his claim of acquired distinctiveness as an
alternative position to his assertion that his mark is not
merely descriptive. His request for remand unequivocally
amends the application to assert a Section 2(f) claim, and
makes no mention that this is in the alternative, or that
he was maintaineing his claim that his mark is not merely
descriptive. Thus, the Section 2(f) amendment acts as a
concession that applicant’s mark is merely descriptive.
Yamaha International Corp. v. Hoshino Gakki Co., 840 F.2d
1572, 6 USPQ2d 1001 (Fed. Cir. 1988). We would add that
this discussion is largely irrelevant, in view of our
finding, discussed infra, that HOOTENANNY is generic for
applicant’s identified services.
The issues before us in this appeal, therefore, are
whether applicant’s claimed mark is generic or, if not,
whether applicant has established that it has acquired
distinctiveness as a mark identifying applicant’s services.
Ser No. 75/315,021
5
In support of his position that HOOTENANNY is generic,
the Examining Attorney has made of record, inter alia, the
following definitions of “hootenanny” taken from various
dictionaries:
1. an informal performance by folk
singers. 2. Informal. An unidentified
or unidentifiable gadget.3

1. a social gathering or informal
concert featuring folk singing and,
sometimes, dancing. 2. an informal
session at which folk singers and
instrumentalists perform for their own
enjoyment. 3. Older use. A thingumbob.
[1910-15; orig. uncert.]4

1. Music. An informal performance by
folk singers, typically with
participation by the audience.
2. Informal. An unidentified or
unidentifiable gadget.5

The Examining Attorney also submitted excerpts and/or
articles taken from the Nexis data base, including the
following:
This weekend, the hall celebrates its
first birthday, belatedly, with a
hootenanny and a benefit concert
honoring the legacy of Woody Guthrie.
“Newsday,” September 26, 1996
***

Arizona Roadhouse & Brewery: New Year’s
Eve Hootenanny with Grave Danger,

3 New Riverside University Dictionary, © 1988.
4 Random House Compact Unabridged Dictionary, Special 2d ed. ©
1996.
5 The American Heritage Dictionary of the English Language, 3d
ed. © 1992.
Ser No. 75/315,021
6
Trophy Husbands, Nitpickers, Chicken,
Tammy Patrick, Mark Insley, and Heather
Rae and the Moonshine Boys. 8 p.m.,
$15. 21 and over.
“The Arizona Republic,” December 28,
2000
***

The Ryan Adcock band hosts another Yule
hootenanny tonight at York Street
Cafe....
“The Cincinnati Enquirer,” December 15,
2000
***

The Temecula Art Gallery will present a
Hootenanny featuring folk group Wolf
Valley at 8:30 p.m. at 42031 Main
St....
“The Press-Enterprise,” (Riverside, CA)
September 12, 1997
***

An old-fashioned Saturday-night
hootenanny celebrating Woody Guthrie at
the Odeon rock club here stayed true to
form.
“Chicago Sun-Times,” October 1, 1996
***

July 6-9: Winnipeg Folk Festival.
Winnipeg. Folk music hootenanny
spotlights more than 200 performers.
Concertgoers can also enjoy a craft
village and an international food area.
“The Atlanta Journal and Constitution,”
April 2, 2000
***

Area residents are invited to share
song and fun this Sunday as the Santa
Monica Traditional Folk Music Club
gathers round for its hootenanny in
Pete’s Hollow at the Peter Strauss
Ranch....
“Ventura County Star” (CA), July 7,
1999
Ser No. 75/315,021
7
***

...“But were I sitting around with a
youth group at a summer camp or with
adults at a hootenanny, I’d think her
music was wonderful.”
“Star Tribune” (Minneapolis, MN)
June 19, 1999
***

James Kelly, a singer and guitarist,
has been performing at the Buffet since
1986, when Bearden agreed to host an
occasional hootenanny. “It was the
first place in the city that would
feature original country music,”....
“The Atlanta Journal and Constitution,”
December 31, 1999
***

...“I got started playing music right
after boot camp, and even did a
hootenanny in San Diego, and figured
that might be what I wanted to do
someday.
“The Arkansas Democrat-Gazette,”
July 16, 1999
***

...And the music: Country music was
never meant for stadiums and high-tech
hootenannies, regardless of how many
speakers and video screens you have....
“The Richmond Times Dispatch,” May 17,
1999
***

...Hudson River Sloop Clearwater
Festival. Hootenanny/fall sail, with
pumpkin pie, hot cider and music, 2-5
p.m. Saturday, Oct. 3
“The Times Union” (Albany, NY),
September 24, 1998
***

According to Mr. Golden, the hootenanny
was started six years ago by local
Ser No. 75/315,021
8
musician Eric Bruton as a winter
concert to benefit public radio. The
event became so popular that a summer
Hootenanny was added, and now the
series runs several times a year,
always benefiting a local group....
“Morning Star” (Wilmington, NC), July
14, 2000

Applicant has responded to this evidence with several
arguments. First, applicant states that the dictionary
definitions show that “hootenanny” has two meanings: an
informal performance by folk singers, and an unidentified
or unidentifiable object. Even if we accept that the
second meaning is known to the public (and the dictionaries
characterize this meaning as “informal” and “older use”),
when the word HOOTENANNAY is used in conjunction with
“entertainment services in the nature of live musical
performances,” clearly the second meaning would not apply.
Marks must be viewed in connection with the goods or
services with which they are used to determine their
meaning to the public. For example, the fact that a
“table” may mean one thing when used in connection with a
display of data does not preclude it from being generic
when used for a piece of furniture.
Applicant asserts that generic use of a term in
dictionaries is not dispositive of the issue of
genericness. Applicant points to the disclaimers in the
Ser No. 75/315,021
9
dictionaries, one of which is quoted by applicant as
stating that “no definition in this Dictionary is to be
regarded as affecting the validity of any trademark.”6 We
are not persuaded by this argument. Such a disclaimer is
typically made in case the dictionary includes as an
ordinary word what is, in fact, a trademark. However, in
this case, two of the dictionaries from which definitions
of “hootenanny” were quoted in this opinion, including the
dictionary in which the above disclaimer was made, were
printed prior to applicant’s claimed first use date in
1995. Therefore, the dictionaries cannot be said to have
inadvertently misused applicant’s trademark as a common
noun; on the contrary, the dictionaries show that
“hootenanny” was recognized as a common noun prior to
applicant’s use.
Applicant also argues that the dictionary definition
of “hootenanny” does not apply to his services because his
performances are not informal, having scheduled dates,

6 This language was quoted in applicant’s first appeal brief,
with the statement that it was taken from the preface of the New
Riverside University Dictionary. We note that, although
applicant strenuously objected to the Examining Attorney’s
submission of dictionary definitions and complete copies of
previously provided NEXIS articles with his appeal brief, see
discussion at footnote 2, applicant had no concern about
including the quote from the dictionary preface for the first
time with his appeal brief, without even the submission of the
actual preface. Despite what might be viewed as technical
irregularities, we have considered the quoted language.
Ser No. 75/315,021
10
times and places, and are events for which tickets are sold
in advance. Applicant points out that his specimens, an
advertisement for his HOOTENANNY ’97 concert,7 does not
feature folk singing or audience participation as a feature
of his services, and the performers are not folk singers.
This statement was made by applicant’s attorney in his
first appeal brief, rather than applicant, and it seems to
be contradicted by the record. It appears to us that
certain of the musicians listed in the specimen ad, for
example, Steve Earle, described in the July 7, 1997 “Los
Angeles Times” article submitted by applicant as a “Texas
‘hillbilly’”, would be considered a folk musician. There
is evidence that folk musicians have also performed at
applicant’s HOOTENANNY events in other years. The July 3,
1995 “Los Angeles Times” article submitted by applicant
describes the Lucky Stars band, which appeared at the
Hootenanny Festival that year, as having “traditional
country sounds”, and reports that the Reverend Horton Heat,
another act, performed the “hillbilly rocker ‘Baddest of
the Bad’” while Big Sandy & His Fly-Rite Boys played an
“old-fashioned set of country-fried music.” The July 7,

7 We make no comment as to whether the actual mark applicant is
using to identify his services is HOOTENANNY followed by the
particular year, rather than HOOTENANNY per se. The Examining
Attorney viewed the specimens as supporting the use of HOOTENANNY
per se, and this issue is therefore not before us.
Ser No. 75/315,021
11
1998 “Los Angeles Times” article, also submitted by
applicant, states that Buck Owens, “the Bakersfield
country-music patriarch,” was a featured performer at
Hootenanny ’98. In addition, the July 6, 1998 “Orange
County Register” article submitted by applicant states that
“audiences sang and cheered during an intensely tight and
clear set.”
Even assuming that applicant’s concerts do not
currently include folk musicians, there are still problems
with applicant’s argument. Leaving aside the question of
misdescriptiveness, what applicant fails to realize is that
his services are identified as “entertainment services in
the nature of live musical performances,” and these
services would certainly encompass the dictionary
definitions of “hootenanny.” A registration for HOOTENANNY
for live musical performances would thus give him the right
to HOOTENANNY for entertainment that fits the traditional,
dictionary definition of a hootenanny.
More importantly, the newspaper excerpts submitted by
the Examining Attorney show that the recognized meaning of
“hootenanny” has expanded so that it is no longer limited
to folk music entertainment. See, for example, the
following:
Ser No. 75/315,021
12
... The band crisscrossed the country
twice last year, bringing its greasy,
good-time rock ‘n’ roll party to crowds
from California to the Carolinas. The
hard-rock hootenanny continues
Saturday, when the band performs at the
Boardwalk in Orangevale.
“Sacramento Bee,” March 24, 2000
***

DFW HILTON: Sponsored by the Bula
Boys, a young professional party crowd,
this hootenanny features Slippery When
Wet running the gamut of rock, dance
and country to welcome the New Year.
“The Dallas Morning News,” December 31,
1993
***

If you don’t make it out to the blues-
jazz hootenanny this weekend at the
Liberty Memorial, you still can see two
of the festival’s best acts perform
(two who don’t come around here too
often), but in a smaller setting.
“The Kansas City Star,” July 16, 1999
***

Midway through the Thursday Night
Rhombus Room, a weekly hootenanny at
the Hexagon Bar during which a band
plays rock covers....
“Star Tribune (Minneapolis, MN),
November 17, 2000
***

...A drenching, icy downpour failed to
dampen spirits as American’s latest
arena-rock gods staged a funk
hootenanny for almost three hours.
“The Denver Post,” December 27, 1998
***

The guys are working with local bands
of all genres to bring an eclectic mix
of music and people together for this
Halloween hootenanny.
Ser No. 75/315,021
13
“Sarasota Herald-Tribune,” August 6,
1999
***

...The two are sponsoring The Melungeon
Mardi Gras, a “two-night crazy melting-
pot of a hoot-nanny” on Feb. 13 and 14
at the Mudpie.

Performing the first night will be the
Shaking Ray Levi’s Lil’ Rock Act with
special guests. They will perform
their “de-rangements” of Pink Floyd,
Yes, King Crimson, Capt. Beefheart and
Willie Nelson numbers. The show starts
at 8 p.m.
“Chattanooga Free Press,” February 12,
1997
***

A Barbecue Bash is scheduled at 7 p.m.
the same day at 1112 Whispering Pines,
followed by An Evening of Motown,
Downtown and Hoot Nanny Get Down from
the ‘60s at 7 p.m. May 16 at 830 Elm.
“The Daily Oklahoman,” May 1, 1992

The evidence retrieved from the NEXIS data base also
indicates that the term “hootenanny” is now particularly
applicable to rockabilly and roots-rock music which,
according to many of the articles submitted by applicant,
is the type of music featured at his HOOTENANNY events:8
... Saturday, IOTA hosts another “DC
Roots Rock Allstars” show, featuring
folks taking time off from their usual

8 See, for example, articles in the “Los Angeles Times”
submitted by applicant on March 14, 2000: “...Saturday’s roots-
rock oriented Hootenanny Festival” (June 30, 1995); “Hootenanny
’96 at Oak Canyon Ranch is geared to music fans who crave rock
‘n’ roll that has a strong sense of roots” (July 4, 1996);
“...third annual daylong, outdoor concert, Hootenanny ’99. The
roots-music celebration is July 3...” (April 24, 1999).
Ser No. 75/315,021
14
bands to put on a hootenanny of the
highest order. There’s Jake Flack,
Chris Watling, ... and they’ll be doing
the most eclectic selection of songs
(swing, country, holiday, blues,
rockabilly, jazz standards, Broadway
and lots of rock) you’ll possibly ever
hear coming from one stage.
“The Washington Post,” December 15,
2000
***
In honor of our nation’s 233rd birthday,
the Grand Emporium, 3832 Main St., is
throwing a Kansas City Americana
hootenanny Thursday night, featuring
three of the area’s best roots-rock
bands...
“The Kansas City Star,” June 27, 1999
***

It seems that all old punk rockers end
up going in one of two directions—
either into the roots rock/alt.
country/hot rod/hootenanny scene (as la
Social Distortion’s Mike Ness) or into
that experimental netherworld where
free jazz meets noise, punk....
“New Times Los Angeles,” November 11,
1999

Applicant also dismisses certain of the NEXIS excerpts
submitted by the Examining Attorney because they do not
spell “hootenanny” as applicant does. See, for example:
Highlights of the weekend include a
Cowboy Hoot-n-Nanny, with cowboy humor,
songs and storytelling….
“The Dallas Morning News,” November 26,
1995
***

Here’s a look at what’s happening at
the Orange County Fair today:
...“Hoot ‘n Nanny Hoe Down” contest
“Los Angeles Times,” July 8, 1995
Ser No. 75/315,021
15
***

...And maybe that’s the reason sultry
singer Victoria Boone is roping in
country-music fans with her hoote-nanny
blend of country and R&B.
“Essence,” April 1995

Again, we are not persuaded by this argument. These
variant spellings would still be clearly perceived as
referring to the word for which dictionaries give the
correct spelling as “hootenanny.” As such, the articles
provide evidence as to the generic nature of this term.9
At this point, we think it appropriate to make some
general comments about the evidence from the NEXIS data
base submitted by the Examining Attorney. First, applicant
points out that some of the articles made of record by the
Examining Attorney are from foreign publications. We have
not considered such articles, nor have we considered any
articles which are identified only as press service
reports, since we have no way of knowing whether they
actually appeared in newspapers. Applicant also,

9 As an aside, we note that, as opposed to applicant, who has
adopted the dictionary spelling of “hootenanny,” often applicants
who wish to register a generic term will apply for a variant
spelling of that term, and argue that it is different from the
actual generic term. That argument, too, is unavailing. See
Weiss Noodle Company v. Golden Cracknel and Specialty Company,
290 F.2d 845, 129 USPQ 411 (CCPA 1961) (defendant’s mark HA-LUSH-
KA held common descriptive name even though Hungarian word
spelled “haluska” because hyphenating the phonetic version of a
term does not destroy its identity).

Ser No. 75/315,021
16
throughout his brief, refers dismissively to the articles
as being hand-picked, and suggests that all the other
articles retrieved by the Examining Attorney’s searches
would have favored applicant. A review of the file shows
that the Examining Attorney submitted results from various
NEXIS searches with each of the four Office actions. In
the first Office action, nine stories were retrieved, and
excerpts from all nine were made of record.10 With the
second Office action, six entire articles were provided.
The file does not reflect the number of articles retrieved.
The exhibits attached to the third Office action show that
the Examining Attorney originally did a search for the word
“hootenanny,” and 1985 references were found. Of these,
the Examining Attorney printed five articles of the first
nine. Apparently the Examining Attorney decided to refine
the search, rather than read through almost 2000 articles,
because he then did another search for “hootenanny” within
10 words of “music.” That search retrieved 236 articles,
and he printed 16 of the first 42. He then did the same
search, and printed 8 articles of the first 53. Thus, he
submitted approximately 24 articles of the first 53

10 The Examining Attorney subsequently submitted complete
versions of the articles with his appeal brief, as discussed in
footnote 2.

Ser No. 75/315,021
17
articles which were retrieved. It would appear from this
that he did not read all 236 articles, but stopped his
review after reading approximately the first 53. With the
final Office action he did another search of “hootenanny”
which retrieved 2285 references. He printed 19 of the
first 20 articles, then refined the search further,
searching “hootenanny” within ten words of either
“performance” or “music” or “concert.” This search
retrieved 380 articles (presumably including the 236 found
in the earlier search with this same strategy), and he made
of record 41, taken from the first 145. Again, presumably
he stopped his review of the articles at about this point.
He also did a search of “hootenanny” within ten words of
“rock” or “jazz,” which retrieved 85 articles, of which he
printed 43.11
We find no fault with the Examining Attorney’s
decision not to make of record every article retrieved by
the NEXIS searches. On the contrary, this Board has often
criticized Examining Attorneys for overburdening the file
with repetitive or irrelevant articles, as may happen when
a NEXIS search will retrieve “noise.” In this case, the
Board would not expect the Examining Attorney to review

11 Some of the articles submitted with the final Office action
were duplicates.
Ser No. 75/315,021
18
almost 2300 articles retrieved by the various searches, and
would certainly not want the Examining Attorney to make all
these articles of record. This is also true of a search
which retrieves 236 articles, or 380. As we have said
before, it is not necessary that an Examining Attorney
submit all stories found, especially where there are a
large number of them. It is only necessary that a
sufficient number of them should be made available to
enable a determination to be made as to the meaning of the
term to the relevant public. In re Homes & Land Publishing
Corporation, 24 USPQ2d 1717 (TTAB 1992). The number of
articles made of record in this case by the Examining
Attorney--well over 100--is certainly sufficient for that
purpose. We have also said that the Examining Attorney
should indicate whether the articles submitted constitute a
representative sample of the whole of the search results.
Id. The Examining Attorney did not make such a
representation in this case. However, our review of the
articles shows that they were not hand-picked to show only
generic usage. Applicant himself says that some of the
articles refer to his own musical events. And we note that
some of the articles use “hootenanny” as an adjective, to
indicate a particular style, or in an analogous sense, to
refer to something with the characteristics of a
Ser No. 75/315,021
19
“hootenanny.”12 Thus, this is not a situation in which we
must assume that the articles which were not submitted
support applicant’s position that HOOTENANNY is not
generic. Cf. In re The Monotype Corporation PLC, 14 USPQ2d
1070 (TTAB 1989).
Other than criticizing the evidence submitted by the
Examining Attorney, applicant’s only response to the
evidence of genericness (and in support of his claim of
acquired distinctiveness) are his two declarations, one
from March 2000 and the second dated October 2, 2000. The
October declaration, aside from the exhibits, is an
expanded and updated version of the earlier declaration,
and we therefore report the information in the later one.
Applicant states that the mark HOOTENANNY has been in
substantially exclusive and continuous use in commerce for
entertainment services in the nature of live musical
performances for over five years; that applicant has
offered six large festivals which included live musical
performances under the mark HOOTENANNY, specifically
HOOTENANNY ’95, HOOTENANNY ’96, HOOTENANNY ’97 and so on
through HOOTENANNY 2000. Approximately 40,000 people

12 For example, “It was the largest Evangelical mass meeting of
its kind in history and turned into a sort of leftist
hootenanny.....” “National Review,” Oct. 18, 1985.

Ser No. 75/315,021
20
attended the six concerts, ranging from a low of 3900 in
1997 to a high of 10,000 in 1999. He has spent over
$100,000 advertising the six HOOTENANNY festivals, ranging
from $10,000-$12,000 in 1995, 96 and 97 to $25,000 in 1999
and 2000. The advertisements appeared in “LA Weekly,” “San
Diego Dipper,” “The Los Angles Times,” “a variety of local
and lifestyle newspapers and magazines,” and on KROQ radio.
Applicant also states that his advertising has been
disseminated throughout the United States. It appears to
the Board that several of the exhibits submitted as
evidence of these advertisements are flyers or press
releases.
Applicant also states that the HOOTENANNY festivals
have received unsolicited attention, including articles in
“The Los Angeles Times,” “The San Diego Union Tribune,”
“Rolling Stone” “Hot Rod Magazine” and “hundreds of local
and lifestyle magazines,” as well as segments aired on
ABCand MTV.
Applicant has also made sales “through the use of the
HOOTENANNY mark,” with gross revenues from the HOOTENANNY
festivals of over $1.3 million. The flyers/advertisements
submitted by applicant with his declaration refer to
merchandise, recordings and a “custom car show, beer, food,
vendors,” while the July 2, 1999 “Orange County Register”
Ser No. 75/315,021
21
article submitted by applicant advises people who attend
Hootenanny ’99 to “bring lots of extra money; you’ll have
plenty of stores, vintage clothes booths, vintage toy
booths and food vendors to spend it on.” These activities
may be the source of the gross revenues. Finally,
applicant states that he owns a registration for HOOTENANNY
for a series of musical sound recordings.
A review of the “unsolicited articles,” which are
generally reviews of the HOOTENANNY festivals or calendar
announcements of upcoming events, shows that they are
primarily from local papers, in particular, “OC Weekly”
(Orange County, CA); “Los Angeles Times” (generally the
Orange County edition); “The Orange County Register”; “The
Press-Enterprise” (Riverside, CA); and “The San Diego
Union-Tribune."13 Many of these articles are about

13 There is one article from “The Detroit News,” (December 10,
1998) in the group submitted by applicant which includes a brief
reference to “Holiday Hootenanny ‘98” appearing at Cobo Arena in
Detroit. It is not clear to us whether this reference is to
applicant’s services; not only is the mark different, but all of
the other articles refer to an event held in Southern California.
Further, in applicant’s declaration he states that he has put on
only six events, and does not mention Holiday Hootenanny ’98.
Moreover, the NEXIS evidence submitted by the Examining Attorney
include articles about the Holiday Hootenanny in Detroit, which
indicates it was a charitable event, and applicant is not listed
as one of the organizers. Accordingly, we have not considered
this article to support applicant’s claim that HOOTENANNY is not
generic or that it has acquired distinctiveness.

Ser No. 75/315,021
22
particular artists, and mention the HOOTENANNY event
tangentially.
Applicant has also submitted articles from “Custom
Rodder” and “Hot Rod Deluxe”; these articles highlight the
car show portion of the HOOTENANNY events.
The determination of whether a mark is generic is made
according to a two-part inquiry: “First, what is the genus
of the goods or services at issue? Second, is the term
sought to be registered...understood by the relevant public
primarily to refer to that genus of goods or services.” In
re Dial-A-Mattress Operating Corporation, 240 F.3d 1341, 57
USPQ2d 1807 (Fed. Cir. 2001), quoting H. Marvin Ginn Corp.
v. Int’l Ass’n of Fire Chiefs, Inc., 782 F.2d 987, 990, 228
USPQ 528, 530 (Fed Cir. 1986).
The answer to the first inquiry, the genus of the
services at issue in this case, is “entertainment services
in the nature of live musical performances,” as applicant’s
own identification makes clear. As for the second
question, the dictionary and NEXIS evidence submitted by
the Examining Attorney make clear that the term HOOTENANNY
is understood by the relevant purchasing public--those who
attend such musical events--to refer to live musical
performances. We have quoted extensively from the NEXIS
evidence in order to show that “hootenanny” is not an
Ser No. 75/315,021
23
arcane word that one or two newspaper reporters may use.
Rather, the numerous mentions, in newspapers from all over
the country, show that those who read about musical
performances, presumably the potential purchasers of the
services, have been exposed to this term. Moreover, the
frequent use of the term without explanation reflects an
understanding on the part of newspaper reporters and
editors that the public is aware of the meaning of the
word.
Considering all the evidence of record, including the
evidence of acquired distinctiveness submitted by
applicant, which will be discussed later, we find that
HOOTENANNY is a generic term for applicant’s services, and
that the refusal of registration on this basis must be
affirmed.
We note that applicant has complained that the
Examining Attorney has not discussed the Federal Circuit
case In re The American Fertility Society, 188 F.3d 1341,
51 USPQ2d 1832 (Fed. Cir. 1999). In that case, which
involved the question of whether the phrase SOCIETY FOR
REPRODUCTIVE MEDICINE was generic, the Court found that a
phrase could not be proved to be generic solely on the
genericness of the constituent elements. However, that is
not the situation before us, since the term sought to be
Ser No. 75/315,021
24
registered is the single word HOOTENANNY, and the evidence
submitted by the Examining Attorney goes directly to that
word. Thus, although the American Fertility case involved
the issue of genericness, we do not otherwise find it
relevant to our decision herein.
In view of our affirmance of the refusal of
registration on the ground of genericness, the question of
acquired distinctiveness is moot. However, in order to
render a complete opinion, we will now consider applicant’s
claim of acquired distinctiveness, assuming for this
discussion that applicant’s mark is not generic.
Even if not generic, though, applicant’s mark must be
deemed to be highly descriptive. The greater the
descriptiveness of the term, the greater the evidence
necessary to prove acquired distinctiveness. See Yamaha
International Corp. v. Hoshino Gakki Co., supra. Thus, the
evidence necessary for applicant to prove acquired
distinctiveness is great indeed.
After thoroughly reviewing the evidence, we find that
applicant has not met his burden of demonstrating acquired
distinctiveness. Applicant has discussed at some length
that he has made a prima facie showing of distinctiveness
through his statement that he has made substantially
exclusive and continuous use of the mark in commerce.
Ser No. 75/315,021
25
However, the statute states that the Commissioner may
accept such a statement as proof of acquired
distinctiveness, not that the Commissioner must accept it.
In this case, because of the high degree of descriptiveness
of the term sought to be registered, more is required.
Moreover, the Examining Attorney has rebutted any prima
facie showing of distinctiveness by evidence that
applicant’s use has not been substantially exclusive. We
note, in particular, the following:
Bring the family: Eclectic music,
storytelling, puppetry and interpretive
juggling are yours at the Haw River
Hootenanny today at the Skylight
Exchange, 405 W. Rosemary St., Chapel
Hill.
“The News and Observer” (Raleigh, NC),
March 24, 2000
***

Concert: The Woody Guthrie Birthday
Hootenanny featuring Arlo Guthrie, the
Kingston Trio and Country Joe McDonald
When: 7:30 p.m. Wednesday...
“Tulsa World,” July 13, 1999
***

Old-Fashioned Hootenanny With Harry
Tuft. 8 p.m. May 8, Swallow Hill Music
Hall.…
“Denver Westword,” May 7, 1998
***

The Dallas Folk Music Society will hold
its Monthly Hootenanny at 7 p.m.
Saturday ....
“The Dallas Morning News,” September 9,
1999
***
Ser No. 75/315,021
26

A benefit for JAMPAC, the local music
industry’s political activism
organization, this self-proclaimed
“Northwest Hootenanny” has a few
predecessors. ...
In a recent phone interview, Southern
Culture drummer Dave Hartman called the
band’s home-grown concert series....
“The Seattle Times,” July 1, 1999
***

Independent Rock & Roll Hootenanny
Series
Various locations in Western Washington
and Oregon, 360-786-1133
Organized by members of local unsigned
bands Soylint Green and Frequency db,
this series of small-town, all-ages
shows....
“The Seattle Times,” May 27, 1999
***

In connection with the city’s annual
Freedom Festival, the Del City Parade
and Hootenanny will include the parade,
live music and other entertainment....
“The Daily Oklahoman,” August 19, 1998

Nor are the sales and advertising figures provided by
applicant sufficient to demonstrate acquired
distinctiveness. Applicant has put on six events, one each
year, with a total attendance of 40,000. The events have
all been held in Southern California. During this time,
advertising expenditures have reached a total of $100,000,
and much of the advertising appears to be in the form of
flyers. Although applicant has also received free
publicity such as newspaper articles about the HOOTENANNY
Ser No. 75/315,021
27
events, articles about performers in which the HOOTENANNY
event is mentioned, and listings in newspaper calendars of
upcoming events, virtually all of this publicity has been
limited to Southern California and, in particular, Los
Angeles, Orange County and San Diego.
The small number of entertainment events, the rather
limited number of consumers of the services and the local
reach of the advertising and other publicity are not enough
to demonstrate that HOOTENANNY has acquired distinctiveness
as a mark for entertainment services in the nature of
musical performances, particularly in view of the number of
third parties who use this term to refer to such services.
Decision: The refusal of registration is affirmed on
the ground that HOOTENANNY is generic for the identified
services and that, even if the term were not generic, the
refusal of registration is affirmed on the ground that
HOOTENANNY is merely descriptive and has not acquired
distinctiveness as a mark.