WorldRes.com, Inc.

Trademark Trial and Appeal Board

Jul 29, 2002

No. 75051093 (T.T.A.B. Jul. 29, 2002)

Paper No. 35
EWH
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
Trademark Trial and Appeal Board
___________
In re WorldRes.com, Inc.
____________
Serial No. 75/051,093
____________
David Kelly of Finnegan, Henderson, Farabow, Garrett &
Dunner.
Rudy R. Singleton, Trademark Examining Attorney, Law Office
109 (Ron Sussman, Managing Attorney).
_____________
Before Hanak, Walters and Drost, Administrative Trademark
Judges.
Opinion by Hanak, Administrative Trademark Judge:
WorldRes.com, Inc. (applicant) seeks to register in
typed drawing form PLACES TO STAY for “lodging reservations
services.” The intent-to-use application was filed on
January 31, 1996. On August 19, 1997 applicant filed an
Amendment to Allege Use. At that same time, applicant also
requested that the application be amended “to seek
registration under Section 2(f) of the Trademark Act.” The
Amendment to Allege Use was accepted by the Examining
Attorney.
Ser. No. 75/051,093
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The Examining Attorney has refused registration on the
basis that the mark PLACES TO STAY is merely descriptive of
“lodging reservations services,” and that said “mark” has
not acquired distinctiveness pursuant to Section 2(f) of
the Trademark Act in the sense that it now functions as a
service mark. When the refusal to register was made final,
applicant appealed to this Board. Applicant and the
Examining Attorney filed briefs. Applicant did not request
a hearing.
Applicant has at least implicitly if not explicitly
admitted that PLACES TO STAY is merely descriptive of
“lodging reservations services.” Thus, the only issue
before this Board is whether the term PLACES TO STAY has
acquired distinctiveness pursuant to Section 2(f) of the
Trademark Act in the sense that it now serves – when used
in connection with “lodging reservations services” – as a
service mark of applicant. In making this determination,
two legal principles must be kept in mind.
First, “the burden of proving secondary meaning is on
the party asserting it, whether he is the plaintiff in an
infringement action or the applicant for federal trademark
registration.” Yamaha International v. Hoshino Gakki, 840
F.2d 1572, 6 USPQ2d 1001, 1006 (Fed. Cir. 1988). However,
in meeting this burden of proof, applicant is only required
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to demonstrate that “a preponderance of evidence” favors
its position. Applicant is not required to meet the higher
standard of “clear and convincing evidence” in order to
establish that the term PLACES TO STAY has acquired
distinctiveness. Yamaha, 6 USPQ2d at 1008. Moreover,
applicant need only demonstrate that the term PLACES TO
STAY has acquired distinctiveness for services for which
applicant seeks to register it, in this case “lodging
reservations services.” Obviously, applicant is not
required to demonstrate that the term PLACES TO STAY has
acquired distinctiveness for other services, such as
“lodging services.” Cf. In re Abcor Development Corp., 588
F.2d 811, 200 USPQ 215, 218 (CCPA 1978).
Second, in order to establish acquired
distinctiveness, applicant need not necessarily present
direct evidence of acquired distinctiveness. Rather,
applicant can carry its burden of proof by presenting
circumstantial evidence of acquired distinctiveness.
Yamaha, 6 USPQ2d at 1010; Roux Laboratories Inc. v. Clairol
Inc., 427 F.2d 823, 166 USPQ 34, 39 (CCPA 1970).
With these legal principles in mind, we begin our
analysis of the evidence which applicant has submitted in
an effort to establish that the phrase PLACES TO STAY –
when used in connection with “lodging reservations
Ser. No. 75/051,093
4
services” – has acquired distinctiveness pursuant to
Section 2(f) of the Trademark Act. Applicant has
demonstrated that it has continuously used the term PLACES
TO STAY in connection with its Internet-based lodging
reservations services since May 1996. By August 2001,
applicant had over 350,000 registered users for its PLACES
TO STAY lodging reservations website. These registered
users receive regular notices from applicant. In addition,
as of the close of the evidentiary record in the
proceeding, applicant’s lodging reservations website was
receiving more than 830,000 different visitors per month,
and these visitors contacted applicant’s lodging
reservations website on average nearly 10 times per month
resulting in nearly 8 million visits per month.
Applicant has also been successful in soliciting
hotels and other lodging providers to be listed on its
PLACES TO STAY lodging reservations website. By 2001, more
than 18,000 hotels and other lodging providers has signed
up to be listed on applicant’s PLACES TO STAY lodgings
reservations website.
In addition, applicant has spent millions of dollars
in promoting its PLACES TO STAY lodgings reservations web
site. This money has been spent primarily on Internet
advertising, although applicant has also spent money on
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print advertisements and radio advertisements. By October
2000, applicant had spent more than $3 million on
advertising its PLACES TO STAY lodging reservations website
on other websites. To put the sum in perspective, in just
the nine month period from August 1, 1999 through April 30,
2000, applicant had purchased over 36 million advertising
impressions for its PLACES TO STAY lodging reservations
website just on the Yahoo! website alone.
In addition to paying to advertise its PLACES TO STAY
lodging reservations website, applicant has also “co-
branded” its PLACES TO STAY website with many other
websites such as Delta Airlines, Rand McNally, NBC,
Frommers and Jackson Hole Mountain Resort.
As a result of its efforts, applicant’s PLACES TO STAY
lodging reservations website has received favorable
publicity in such magazines as Money, Fortune and Forbes.
Money rated PLACES TO STAY lodging reservations website as
one of “only 13 sites you need to look at.” Forbes labeled
applicant’s PLACES TO STAY website as one of its
“favorites.”
Finally, as a result of all the foregoing activities
and favorable publicity, applicant’s PLACES TO STAY
lodgings reservations website has become one of the most
popular such sites in the United States. By the close of
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the evidentiary record in this proceeding, it was ranked
number four among all on-line lodging websites in terms of
total sales.
The Examining Attorney does not dispute the foregoing.
Rather, it is the contention of the Examining Attorney that
applicant’s mark is so highly descriptive that applicant’s
impressive Section 2(f) showing is simply insufficient to
establish acquired distinctiveness.
In support of his proposition, the Examining Attorney
has made of record 50 of the 358 stories which he retrieved
from the Nexis database which contain the terms “places to
stay” and “reservations.” The first such story is from the
December 15, 1996 edition of the Star Tribune, and it reads
as follows: “If you want a room, call ahead, because
without reservations you may find yourself without a place
to stay on a busy weekend.” The second story submitted by
the Examining Attorney is from the December 1, 1996 edition
of the Asbury Park Press, and it reads as follows: “There
are more than 36 places to stay in Banff, including hotels
and bed and breakfasts … Banff Central Reservations can
arrange accommodations …”
In addition, the Examining Attorney contends that
applicant itself has used the term PLACES TO STAY in a
descriptive manner. At pages 10 and ll of his brief, the
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Examining Attorney singles out one of applicant’s radio
advertisements in which a female announcer, speaking to the
radio audience and her “lover boy,” repeatedly touts the
benefits of applicant’s PLACES TO STAY lodging reservations
website. The “lover boy” finally gets the message, and the
radio spot concludes with the “lover boy” stating as
follows: “Hey, I found us a nice place to stay.”
While the Examining Attorney’s evidence may
demonstrate that the term “places to stay” is highly
descriptive of “lodging services,” it does not demonstrate
that the term is highly descriptive of “lodging
reservations services.” There is a distinct difference
between lodging services and lodging reservations services.
The former actually provides you with a place to stay. The
latter merely assists you in locating a place to stay. As
noted earlier in this opinion, one important legal
principle is that applicant must simply prove by a
preponderance of the evidence that its mark PLACES TO STAY
has become distinctive of the services for which it seeks
registration, namely, “lodging reservations services.”
Applicant is not obligated to prove that its mark PLACES TO
STAY has become distinctive for any other type of services,
and in particular, lodging services. In sum, we find that
based on the totality of the evidence applicant has
Ser. No. 75/051,093
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established that its mark PLACES TO STAY has acquired
distinctiveness for “lodging reservations services.”
Decision: The refusal to register is reversed.