World Marketing Services, Inc.

Trademark Trial and Appeal Board

Sep 28, 1999

No. 75036568 (T.T.A.B. Sep. 28, 1999)

Paper No. 12
JER
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF THE TTAB SEPT. 28, 99
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re World Marketing Services, Inc.
________
Serial No. 75/036,568
_______
Karen A. Jeffers of Jeffers & Associates for applicant.
Anil V. George, Trademark Examining Attorney, Law Office
108 (David E. Shallant, Managing Attorney).
_______
Before Rice, Seeherman, and Quinn, Administrative Trademark
Judges.
Opinion by Rice, Administrative Trademark Judge:
An application has been filed by World Marketing
Services, Inc. to register the mark TRAVEL BARGAINS for
travel agency services, namely, making reservations and
bookings for transportation and arranging travel tours and
cruises.1 Applicant seeks registration on the Principal
Register pursuant to the provisions of Section 2(f) of the

1 Application Serial No. 75/036,568 filed December 28, 1998,
claiming first use and first use in commerce on May 12, 1991.
Ser. No. 75/036,568
2
Trademark Act of 1946, 15 U.S.C. §1052(f), asserting that
its mark has become distinctive of its services in
commerce.2
Registration has been finally refused on two grounds.
First, registration has been finally refused under Section
2(e)(1) of the Act, 15 U.S.C. §1052(e)(1), on the ground
that applicant’s asserted mark TRAVEL BARGAINS, when used
in connection with applicant’s specified services, is
merely descriptive of them; that the mark is, in fact,
commonly used in the travel services field and is highly
descriptive of such services; and that under the
circumstances, the evidence submitted by applicant is
insufficient to show that the mark has become distinctive
of applicant’s services in commerce.
Second, registration has been finally refused under
Sections 1, 2, 3, and 45 of the Act, 15 U.S.C. §§1051,
1052, 1053, and 1127, on the ground that TRAVEL BARGAINS

2 Applicant’s application did not originally include a claim of
distinctiveness under Section 2(f). In his first Office action,
the Examining Attorney refused registration, inter alia, under
Section 2(e)(1) of the Act, 15 U.S.C. §1052(e)(1), on the ground
that applicant’s mark, as used in connection with its services,
is merely descriptive of them. Applicant in turn argued that its
mark is suggestive, not merely descriptive, and claimed
distinctiveness under Section 2(f) of the Act as an alternative
basis for registration. However, in its brief on appeal,
applicant made the following concession (at page 10): “For
purposes of this appeal, Applicant concedes the Examiner’s
designation of the mark as ‘merely descriptive’ …”
Ser. No. 75/036,568
3
does not function as a service mark to identify and
distinguish applicant’s services from those of others and
to indicate source. It is essentially the Examining
Attorney’s position that TRAVEL BARGAINS is a highly
descriptive, laudatory, informational slogan that is
commonly used in connection with travel agency services,
and thus would not be perceived by purchasers as an
indication of source.3
In support of the refusal to register, the Examining
Attorney relies upon dictionary definitions; and printouts
of portions of 100 stories, from the NEXIS computerized
data base of publication information, showing use of the
term TRAVEL BARGAIN or TRAVEL BARGAINS.4
The dictionary definition evidence, taken from
WEBSTER’S II New Riverside University Dictionary (1988),
shows that the intransitive verb “travel” is defined as,
inter alia, “1. To move from one place to another:
JOURNEY.”; that the transitive verb form of the word is
defined as “To pass over or through ”; that the noun form of the word is defined as,

3 As the Examining Attorney specifically noted in his appeal
brief, at footnote 2, page 3, he never raised capability as an
issue in any of his Office actions, and it is not an issue in
this case.
4 The Examining Attorney’s NEXIS search found 523 stories
containing the term TRAVEL BARGAIN or TRAVEL BARGAINS. The
Ser. No. 75/036,568
4
inter alia, “1. The act or process of traveling.”; and that
the noun form of the term BARGAIN is defined as, inter
alia, “2. Something offered or acquired at a price
advantageous to the buyer.”
The 100 NEXIS stories made of record by the Examining
Attorney include a large number of stories which illustrate
the significance of the term TRAVEL BARGAIN or TRAVEL
BARGAINS as used in the travel field. Examples of such
uses are set forth below (emphasis added):
“TRAVEL BARGAINS; BOOK TALL SHIP CRUISE BY
APRIL, GET DISCOUNT”--headline for story
appearing in the February 2, 1997 issue of
The Daily News of Los Angeles (story #15)5
“Personal Passport, a new free CD-ROM, features
information on thousands of travel bargains,
usually 30-40 percent off list price, updated
daily via Internet link.”--from a story
headlined “TRAVEL NOTES” appearing in the
January 19, 1997 issue of The Denver Post,
inter alia (story # 32; also #s 49, 59, 73)
“… my entire Fort Lauderdale-Honolulu-Papeete
flight cost was under $600. I consider it
the travel bargain of my life.”--from a story
headlined “REMEMBERING HAWAII” appearing in
the January 19, 1997 issue of the Sun Sentinel
(story # 35)

Examining Attorney submitted the pertinent portions of the first
100 stories.
5 There are a number of similar uses in the story excerpts made
of record by the Examining Attorney, that is, uses where the
designation TRAVEL BARGAINS appears at the beginning of a
headline, followed by a semicolon and then other matter which
differs in each case. All of these stories were published in The
Daily News of Los Angeles. It appears that TRAVEL BARGAINS in
these cases may be the name of a recurring feature.
Ser. No. 75/036,568
5
“Travelers along the interstates will find
that budget motels in the United States are
still one of the world’s great travel
bargains.”--from a story headlined “WALLET
WATCH; Room rates headed up in ‘97” appearing
In the January 12 1997 issue of The Orange
County Register, inter alia (story # 42; also
#s 48, 54, 60-63, 66)
“In Italy, as in the rest of western Europe,
the railway is a travel bargain. It is timely
and inexpensive.”--from a story headlined
“Independent in Italy; Make your own agenda,
and you’ll save more” appearing in the
January 5, 1997 issue of the Austin American-
Statesman (story # 47)
“… United States and Europe in some locales
for about $150 a week, weekly rentals are one
of the great travel bargains. But rental
companies have been threatening price hikes
for some time …”--from a story headlined
“TRAVEL LETTER’S ‘97 DEALS” appearing in the
January 5, 1997 issue of the Pittsburgh Post-
Gazette (story # 50)
“Best Fares is a monthly newsletter (published
by Parsons) that lists travel bargains,
including air-fare promotions and coupons.”--
from a story headlined “If a ticket deal
sounds too good to be true, it probably is”
appearing in the December 15, 1996 issue of
The News and Observer (story # 74)
“One recent modification to American Express’
Web site is a section, titled Last Minute
Travel Bargains, that, as its name suggests,
offers travel deals on last-minute
inventory.”--from a story headlined “The Human
Element; caring for leisure customers in an
electronically-oriented environment; Travel
Weekly FOCUS: American Express Travel Related
Services” appearing in the December 12, 1996
issue of Travel Weekly (story # 77)
“The season for post-holiday air travel
bargains gained momentum Thursday when
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6
Southwest Airlines initiated a one-week
“Winter Freedom Fares” sale …”--from a story
headlined “Southwest starts week of cut-rate
winter fares” appearing in the December 6,
1996 issue of the Arkansas Democrat-Gazette
(story # 80)
“The Cathay deal is one of hundreds of travel
bargains available to cybersurfers willing to
invest a little time. The Web is laden with
special airfares, credits for free hotel …”--
from a story headlined “TREKKING THE WEB FOR
TRAVEL DEALS” appearing in the December 2,
1996 issue of Business Week (story # 84)
“… advantage of advance purchase savings on
air fares and other travel expenses can check
out the “Last Minute Travel Bargains” section
on the American Express Travel Web site. The
feature lists heavily discounted airline rates,
hotel tariffs, …”--from a story headlined
“… WBDC WOMEN’S REPORT; WEB TRAVEL BARGAINS;
INVESTMENTS UP” appearing in the December 1,
1996 issue of Crain’s Small Business Chicago
(story # 88)
“How to protect yourself? Before accepting
any supposed travel bargain, ask a series of
questions …”--from a story headlined “WALLET
WATCH; Cyberspace; Travel scams on the Net”
appearing in the November 17, 1996 issue of
The Orange County Register (story # 100)
Applicant, in turn, has submitted a substantial amount
of evidence in support of its claim that the designation
TRAVEL BARGAINS has become distinctive of its travel agency
services in commerce.6

6 In its response filed August 15, 1997, applicant referred to
four third-party registrations of marks containing the term
BARGAIN or BARGAINS. Submitted with the response were printouts,
of unidentified origin, of information concerning the
registrations. As noted by the Examining Attorney, in his appeal
brief, these third-party registrations were not properly made of
Ser. No. 75/036,568
7
In this regard, applicant has submitted the
declaration (with accompanying exhibits) of its president,
Bahir Browsh, who declares his belief that TRAVEL BARGAINS
has become distinctive of applicant’s services through
applicant’s substantially exclusive and continuous use
thereof in interstate commerce for at least five years
immediately prior to January 1, 1997 (the date of the
declaration).
Additionally, the declaration and exhibits establish
certain other facts, recited here. Since 1991, applicant
has continuously used the designation TRAVEL BARGAINS, both
as a trademark and as a trade name, in connection with
discount travel services. Applicant offers discounted
airfares, cruises, car rentals, and package tours directly
to the public. From 1991 until January 1, 1997, applicant
spent more than $5 million in advertising and promoting its
discount travel agency services under the designation
TRAVEL BARGAINS. In this effort, applicant has used such

record, because copies of the registrations were not submitted.
See In re Smith and Mehaffey, 31 USPQ2d 1531 (TTAB 1994). At the
same time, if the Examining Attorney had raised this objection in
his final action of November 19, 1997, applicant could have cured
the deficiency. Because the Examining Attorney failed to object
in a timely manner, the objection is deemed waived, and we have
considered the registrations in our determination of this case.
Nevertheless, these registrations, involving different marks and
goods/services, are of no particular value herein, because in
situations such as this, each case must be decided on its own
record and facts.
Ser. No. 75/036,568
8
media as, inter alia, television (at a cost of roughly $3
million), radio, newspapers (over 1,200 print ads having
appeared in major newspapers throughout the United States,
at a cost of $600,000), mass market periodicals, the
Internet, outdoor billboards, and direct mail, as well as
weekly fax transmissions, concerning featured trips and
fares, sent through the Consolidator’s Weekly fax service
to approximately 3,500 travel agencies.
Applicant’s television promotional activities have
included not only short commercials, in which the
designation TRAVEL BARGAINS is used prominently in the
manner of a service mark (and as a trade name), but also a
half-hour travel infotainment series which aired on cable
television six days a week, three times a day, for three
and one-half years. The show, entitled “The Travel
Bargains Show,” was first introduced in May of 1991, and
was watched by millions of viewers. A total of 294
original episodes were produced. In the samples thereof
submitted by applicant on a video tape (Exhibit D), TRAVEL
BARGAINS is used as the name of the show, as a service
mark, and as a trade name.
Applicant’s reservation center receives between 15,000
and 25,000 telephone calls for its services each week; the
total number of such phone calls for the 1991-January 1,
Ser. No. 75/036,568
9
1997 period was 5 million. The calls are answered by
applicant’s telemarketers, who number more than 150, with
the words “Thank you for calling TRAVEL BARGAINS.” The
designation is also used by applicant on ticket jackets,
letterhead stationery, and mailing envelopes.
Editorial articles referring to applicant’s TRAVEL
BARGAINS services have been published in numerous
newspapers and magazines, including the Tampa Sun-Sentinel,
the New York Post, and Men’s Health. In addition, the
services are mentioned under the TRAVEL BARGAINS
designation in many industry directories and travel guides,
including Fielding’s Vacation Places Rated, Air Courier
Bulletin, The Intrepid Traveler’s Guide to Consolidators,
Air Travel’s Bargain Basement, and Consumer Reports Travel
Letter, as well as in Arthur Frommer’s Secret Airfares,
available through America Online.
During the period between May of 1991 and January 1,
1997, applicant rendered its TRAVEL BARGAINS discount
travel services to more than 500,000 customers, and
accumulated retail sales of $140 million. Applicant’s
surveys indicate that 80% of its sales are from repeat
customers or word-of-mouth referrals.
In addition to the declaration and accompanying
exhibits, applicant has submitted a printout from an
Ser. No. 75/036,568
10
Internet site entitled “Solutions Central Tip of the Week”,
for the week of 6/9/97, which features applicant and its
services;7 letters (written in July 1997) from three
individuals in the travel industry concerning recognition
of TRAVEL BARGAINS in that industry;8 and letters from six

7 The text includes such uses as “Call Travel Bargains for quick
service and incredible rates when planning your next trip.”;
“Call 1-800-AIRFARE and, in less than eight minutes, a Travel
Bargains consultant will find you the best available airfare rate
…”; “While Travel Bargains won’t guarantee that it will always be
able to beat the fares offered by the major airlines, it will
always match the lowest published airfare out there.”; and “…
Travel Bargains also offers great deals on car rentals.” The
site bears a copyright notice in the name of Circle Company
Associates.
8 A letter from Stanley C. Plog, Ph.D., a market researcher in
the travel industry, states that he wrote the book Vacation
Places Rated (1995); that in the book, he listed TRAVEL BARGAINS
(references to TRAVEL BARGAINS in Mr. Plog’s letter appear in
capital letters, and with a  symbol) as a travel consolidator
for readers to call; that he considers TRAVEL BARGAINS to be an
established name that is well recognized in the marketplace; that
the name is distinctive and immediately carries the implication
as to the benefits it offers to consumers; and that he also plans
to include TRAVEL BARGAINS as a company in his upcoming update of
his book, to be called Best and Worst – Stan Plog’s Guide to the
Best Travel Experiences. Mr. Clark Howard, who has a radio
program and a newspaper column relating to travel, states that he
“was made known” of TRAVEL BARGAINS (Mr. Howard uses all capital
letters in references to TRAVEL BARGAINS) in early 1995; that
since then he has followed and reported on the many ways
travelers can save with the services of TRAVEL BARGAINS; and that
TRAVEL BARGAINS offers a great source of savings for the budget
traveler. Mr. Imad Khalidi, President of Auto Europe, a
worldwide car, air, and hotel reservation service company, states
that Auto Europe has been working closely with Travel Bargains
(Mr. Khalidi uses just initial capitals in references to TRAVEL
BARGAINS) for the past two years; that Auto Europe’s customers
are familiar with the products that Travel Bargains supplies and
are always pleased to find that they are available through Auto
Europe; and that Auto Europe does not hesitate recommending
Travel Bargains’ services to its business partners, and knows
without fail that they will recognize the Travel Bargains’
product and name.
Ser. No. 75/036,568
11
customers writing to commend particular employees of
applicant for outstanding service.9
We turn first to the refusal to register under Section
2(e)(1) of the Act, on the ground that the term TRAVEL
BARGAINS, when used in connection with applicant’s
specified services, is merely descriptive of them, and that
the evidence submitted by applicant is insufficient to show
that the mark has become distinctive of applicant’s
services in commerce. We start by noting that a term which
is merely descriptive, but not generic, may be registered
if secondary meaning is established.10 This is so even in
the case of “highly descriptive” terms. However, the

9 Two of these letter writers used “Travel Bargains” only above
the salutation, as a trade name along with applicant’s address;
one used it only in the salutation (“To: Travel Bargains
Management”); one used it as a trade name with applicant’s
address, and also in the text of the letter (“I was a member of
TWA Travel Club for two or three years. … I always get a ‘best
bet for my money’ when I decide to work with Travel Bargain or
the Travel Club.”); one used it once in the text of the letter
(“My story, however, begins back in mid-November when I contacted
Travel Bargains to get airfares for a flight to Portland, Oregon
…”); and one, writing on a postcard, used it as a trade name,
with applicant’s address, and also once in the text (“You are
lucky to have her as an employee & I am glad to use Travel
Bargains & tell all my friends …”).
10 The Examining Attorney has never contended that TRAVEL BARGAINS
is generic as used in connection with applicant’s specified
services. Rather, the Examining Attorney’s contention is that
TRAVEL BARGAINS is highly descriptive of them. Thus, the issue
of whether TRAVEL BARGAINS is generic is not before us, and we
make no determination of that issue. However, we presume, for
purposes of deciding the primary issue before us, namely, the
issue of whether applicant’s evidence is sufficient to make out a
prima showing of secondary meaning, that TRAVEL BARGAINS is not
Ser. No. 75/036,568
12
amount of evidence required to establish a prima facie
showing of secondary meaning depends upon the degree of
descriptiveness of the term, with more evidence being
required for terms which are highly descriptive than for
those which are not. As stated by the Court of Appeals for
the Federal Circuit (in a discussion of generic and
descriptive terms),
A term that is not clearly generic is
appropriately viewed as descriptive. Thus
the term may acquire trademark status through
use. To register such a mark, an adequate
showing of acquired distinctiveness or
secondary meaning is required. The showing
that may be deemed adequate will of course
depend on the particular facts; the requisite
weight of evidence will vary with the degree
of descriptiveness of the mark.
See In re K-T Zoe Furniture Inc., 16 F.3d 390, 29 USPQ2d
1787, 1788-1789 (Fed. Cir. 1994).
In the present case, applicant itself has conceded in
its appeal brief, for purposes of the appeal, that TRAVEL
BARGAINS is merely descriptive. Similarly, in its response
filed August 15, 1997, applicant stated, at page 6: “The
Nexis search results cited by the Examiner all show the
words ‘travel bargains’ used in their common descriptive
sense.” Indeed, a careful review of the evidence submitted
by applicant reveals that while applicant clearly and

generic as used in connection with applicant’s travel agency
Ser. No. 75/036,568
13
consistently uses TRAVEL BARGAINS in the manner of a
trademark and trade name in connection with its services,
it also, on a few occasions, has itself used the words “in
their common descriptive sense,” and it appears that such
usage has been intentional. For example, a press release
dated July 11, 1995, reads in part as follows (emphasis
added):
TRAVEL BARGAINS, America’s premier discount
travel service, announces a sizzling summer
sale with blisteringly low prices on airline
tickets...
Folks who call TRAVEL BARGAINS at 1-800-AIRFARE
will find exceptionally hot prices to a host
of popular summer fun spots...
There’s still plenty of time to take off on
an exciting, economical TRAVEL BARGAINS
vacation this summer...
TRAVEL BARGAINS is a leader in providing a full
range of travel services -- the affordable way...
So, while others continue to sweat out the high
cost of taking a vacation this summer, cost
conscious travelers are beating the heat by
dialing 1-800-AIRFARE and finding a world of
travel bargains at their fingertips.
Moreover, in our opinion, the Examining Attorney’s
evidence amply supports the Examining Attorney’s conclusion
that TRAVEL BARGAINS is a commonly used term in the travel
industry, and that it is not just merely descriptive but
highly descriptive of travel agency services which, like

services.
Ser. No. 75/036,568
14
applicant’s services, feature discounted airfares, cruises,
car rentals, tour packages, etc. In this regard, we
particularly note the large number of “hits” found in the
NEXIS search, the nature of the uses demonstrated in the
examples made of record by the Examining Attorney (namely,
the first 100 hits), and the fact that not a single one of
the 100 story excerpts made of record appears to be a
reference to applicant or its services.11
Because of the highly descriptive nature of the
designation TRAVEL BARGAINS as applied to applicant’s
specified services, applicant’s burden in its effort to
prove prima facie that the designation has acquired
secondary meaning is a heavy one. See In re K-T Zoe
Furniture Inc., supra, and Yamaha International Corp. v.
Hoshino Gakki Co., 840 F.2d 1572, 1581, 6 USPQ2d 1001, 1008
(Fed. Cir. 1988). We do not believe that the evidence
submitted by applicant is sufficient to meet this burden.
While applicant’s advertising and resulting sales
during the period between May of 1991 and January 1, 1997
have been impressive, there is little in this record to
show that the commercial success of applicant’s services

11 Applicant itself does not contend that any of the NEXIS
excerpts of record is a reference to applicant or its services
but rather states, as noted above, that the NEXIS excerpts “all
show use of the words ‘travel bargains’ in their common
descriptive sense.”
Ser. No. 75/036,568
15
has been accompanied by recognition of the words TRAVEL
BARGAINS as a service mark for applicant’s services. We
note in this regard that there is no consumer survey.
Moreover, the references to TRAVEL BARGAINS in the six
customer letters and in the trade directories and travel
guides appear to stem from applicant’s use of TRAVEL
BARGAINS as its trade name, rather than from recognition of
TRAVEL BARGAINS as a service mark. The three letters from
individuals in the travel industry similarly reflect
applicant’s trade name use, and seem to be more of a
testament to the value and quality of applicant’s services
than to the recognition of TRAVEL BARGAINS as a service
mark. Moreover, even if these three letters demonstrated
service mark recognition by their authors, who are
experienced in the field, they would be insufficient to
show service mark recognition on the part of the general
public, to whom applicant’s services are directed.
In view of the highly descriptive nature of the
designation TRAVEL BARGAINS when used in connection with
travel agency services featuring discounted rates, and the
fact that applicant has the burden of proving
distinctiveness, we are not convinced by the evidence
submitted by applicant, considered in its totality, that
TRAVEL BARGAINS has become distinctive of applicant’s
Ser. No. 75/036,568
16
services in commerce. We therefore conclude that the
refusal to register based upon Section 2(e)(1) of the Act
is well taken.
We turn then to the second ground for refusal, namely,
that TRAVEL BARGAINS does not function as a mark. This
refusal is duplicative of the first ground for refusal, and
does not provide a separate basis for rejection, to the
extent that it is based on the descriptive, laudatory, and
informative nature of the designation TRAVEL BARGAINS. To
the extent that this refusal may be based on a contention
that TRAVEL BARGAINS is not used by applicant in the manner
of a mark, and thus would not be perceived by customers as
such, a review of the specimens and other materials
submitted by applicant shows that this is not the case.
There is no doubt that TRAVEL BARGAINS is used by applicant
in the manner of a mark (often in a design format), as well
as in the manner of a trade name and as the name of a
television show. Accordingly, this ground for refusal is
not well taken.
Decision: The refusal to register under Section
2(e)(1) of the Act on the ground that the asserted mark
TRAVEL BARGAINS, when used in connection with applicant’s
specified services, is merely descriptive of them, and that
the evidence submitted by applicant is insufficient to show
Ser. No. 75/036,568
17
prima facie that TRAVEL BARGAINS has become distinctive of
applicant’s services in commerce, is affirmed. The refusal
to register on the ground that TRAVEL BARGAINS is not used
in the manner of, and thus does not function as, a mark is
reversed.
J. E. Rice
E. J. Seeherman
T. J. Quinn
Administrative Trademark
Judges, Trademark Trial
and Appeal Board
Ser. No. 75/036,568
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