Zooborns LLC

Trademark Trial and Appeal BoardApr 3, 2014

No. 85056841 (T.T.A.B. Apr. 3, 2014)

THIS OPINION IS NOT A PRECEDENT OF THE TTAB Hearing: Mailed: February 20, 2014 April 3, 2014 UNITED STATES PATENT AND TRADEMARK OFFICE _____ Trademark Trial and Appeal Board _____ In re Zooborns LLC _____ Serial No. 85056841 _____ Christopher J. McGeehan of McGeehan Technology Law Ltd. for Zooborns LLC. David Taylor, Trademark Examining Attorney, Law Office 112 (Angela Wilson, Managing Attorney). _____ Before Seeherman, Mermelstein and Greenbaum, Administrative Trademark Judges. Opinion by Greenbaum, Administrative Trademark Judge: Zooborns LLC (“applicant”) seeks registration on the Principal Register of ZOOBORNS (in standard characters) for “Children’s books; Educational books featuring animals; Picture books” in International Class 16. The application includes a claim of acquired distinctiveness under Trademark Act Section 2(f), 15 U.S.C. § 1052(f).1 1 The application was filed pursuant to Section 1(a) of the Trademark Act, 15 U.S.C. § 1051(a), alleging first use anywhere on November 30, 2009, and first use in commerce on February 10, 2010. Serial No. 85056841 2 The examining attorney has issued a final refusal of registration on the ground that ZOOBORNS is merely descriptive of applicant’s identified goods under Section 2(e)(1) of the Trademark Act, 15 U.S.C. § 1052(e)(1), and it has not acquired distinctiveness. Inasmuch as applicant seeks registration under Section 2(f), there is no issue that its mark is merely descriptive. The Cold War Museum, Inc. v. Cold War Air Museum, Inc., 586 F.3d 1352, 92 USPQ2d 1626, 1629 (Fed. Cir. 2009) (“where an applicant seeks registration on the basis of Section 2(f), the mark's descriptiveness is a nonissue; an applicant's reliance on Section 2(f) during prosecution presumes that the mark is descriptive.”); Yamaha Int’l Corp. v. Hoshino Gakki Co., 840 F.2d 1572, 1577, 6 USPQ2d 1001, 1005 (Fed. Cir. 1988). In order to register its mark under Section 2(f), an applicant bears the burden of proving that its mark has acquired distinctiveness. In re Hollywood Brands, Inc., 214 F.2d 139, 102 USPQ 294, 295 (CCPA 1954) (“[T]here is no doubt that Congress intended that the burden of proof [under Section 2(f)] should rest upon the applicant.”). The amount and character of such evidence depends on the facts of each case, Roux Laboratories, Inc. v. Clairol Inc., 427 F.2d 823, 166 USPQ 34 (CCPA 1970), and the degree of acquired distinctiveness that must be shown varies directly with the degree of descriptiveness of the mark. “[L]ogically that standard becomes more difficult as the mark’s descriptiveness increases.” Yamaha, 6 USPQ2d at 1008. See also In re Bongrain Int’l (American) Corp., 894 F.2d 1316, 13 USPQ2d 1727 (Fed. Cir. 1990). Serial No. 85056841 3 It is the examining attorney’s position that ZOOBORNS is so descriptive of the subject matter of applicant’s books that applicant’s evidence of acquired distinctiveness is insufficient to allow the proposed mark to register. In support of this position, the examining attorney points to excerpts from nine websites that refer to baby animals born in captivity as “zoo-born” or “zoo born,” a webpage from applicant’s website entitled “ZooBorns The Newest and Cutest Exotic Baby Animals from Zoos and Aquariums Around The World!” and an associated webpage for pre-ordering applicant’s ZOOBORNS books. Applicant’s evidence of acquired distinctiveness includes many examples of unsolicited media coverage in major newspapers such as the New York Times, the Washington Post, the Los Angeles Times, lifestyle programs such as Entertainment Weekly, and highly trafficked websites such as Wired and Jezebel. The following excerpt from a November 19, 2012 article in Wired magazine, entitled “Second Cutest Book Ever: ZooBorns Goes Exotic,” is of particular note: Two years ago, [applicant] further enabled my internet habit with a printed book of some of the most ridiculously painfully adorable baby animals ever born within range of a camera. The gallery images from that book that we published on Wired was one of the most popular in the site’s history with more than 2.3 million views of the baby ocelot, red pandas, gorilla, sea otter and other incredibly cute newborn animals. Surely that book spawned thousands of fellow addicts. Applicant also submitted the declaration of its founder, Andrew Bleiman. According to Mr. Bleiman, even though applicant has used ZOOBORNS on its books for a relatively short period of time, applicant has a built-in audience for the books based on its highly popular ZOOBORNS website, which applicant launched in 2008, Serial No. 85056841 4 and a widely-followed fan page on Facebook. Mr. Bleiman also states that due to the fame of the ZOOBORNS website and the large audience for ZOOBORNS products, applicant was able to enter into a publishing contract with Simon & Schuster, a major publisher, to print and distribute its books, and that Simon & Schuster has published eight titles since 2010. Applicant points to the fact that its publisher continues to publish new titles as evidence of the strength of the ZOOBORNS brand in the children’s book marketplace. Applicant also submitted evidence of its sales figures and promotional expenses, which are appreciable, along with contextual evidence regarding typical sales and promotional figures. As additional evidence that applicant’s customers and fans recognize ZOOBORNS as a source indicator, applicant submitted, among other things, copies of promotional materials directed to booksellers and individual purchasers, and literary awards won by the ZOOBORNS books.2 After reviewing all of the record evidence, we find that the evidence submitted by applicant is sufficient to show that ZOOBORNS has acquired distinctiveness as a trademark for applicant’s books. The references to “zoo born” or “zoo-born” in the nine websites submitted by the examining attorney are as adjectives used to describe an animal that is born in a zoo. However, ZOOBORNS would be understood as a noun, not an adjective. There is no evidence of general commercial use of this term, such as articles that refer to animals born in zoos as “zooborns”, and no evidence of competitors using this term. In fact, all uses of ZOOBORNS in the record refer to applicant. Accordingly, the evidence submitted by 2 A full listing of applicant’s evidence appears at pages 1-4 of applicant’s Brief. Serial No. 85056841 5 applicant is sufficient to show that ZOOBORNS has acquired distinctiveness as a trademark for applicant’s books. Decision: We find that applicant has demonstrated that its mark has acquired distinctive for its applied-for goods. The refusal to register ZOOBORNS on the Principal Register on the basis that applicant’s mark is merely descriptive under Section 2(e)(1) is reversed.