Trademark Trial and Appeal Board
Patent and Trademark Office (P.T.O.)
*1 IN RE HOMES & LAND PUBLISHING CORPORATION
Serial No. 73/836,305
September 30, 1992
Herbert L. Allen for applicant.
Trademark Examining Attorney
Law Office 8
(Thomas Lamone, Managing Attorney)
Before Rice, Rooney and Hanak
Opinion by Rooney
An application was filed to register the mark shown below
for real estate listing magazine for rental properties. Use since October 1987 was alleged. Applicant was required by the Examining Attorney to submit a disclaimer of the descriptive wording RENTAL GUIDE. In response, applicant filed an amendment to the Supplemental Register. The Examining Attorney replied that matter which is eligible for registration on the Principal Register may not be registered on the Supplemental Register and, inasmuch as applicant's mark was eligible for registration on the Principal Register with a disclaimer of the words, RENTAL GUIDE, registration on the Supplemental Register was refused. Applicant then filed an amendment seeking registration on the Principal Register with a claim of distinctiveness under Section 2(f) of the Trademark Act with respect to the words RENTAL GUIDE. Applicant's showing under Section 2(f) was deemed to be insufficient since, in the Examining Attorney's view, RENTAL GUIDE is generic for a real estate listing guide for rental properties. This refusal was made final and the applicant has appealed.
The court has said, in the case of H. Marvin Ginn Corporation v. International Association of Fire Chiefs, Inc., 782 F.2d 987, 228 USPQ 528 (Fed.Cir.1986), that the critical issue in determining whether a term is the common descriptive name of the goods is whether the relevant public primarily uses or understands the term to refer to the category of goods applicant sells under that term. Evidence of the public's understanding of a term may be obtained from any competent source, including purchaser testimony, surveys, dictionaries, trade journals, newspapers and other publications. In re Northland Aluminum Products, Inc., 777 F.2d 1556, 227 USPQ 961 (Fed.Cir.1985).
The evidence submitted by the Examining Attorney consists of excerpts from the Lexis/Nexis data base in which the term "rental guide" is used. We have said before that it is not necessary that an Examining Attorney submit all stories found, especially where there are a large number of them. However, a sufficient number of them should be made available to enable a determination to be made as to the meaning of the term in question to the relevant public. In addition, when introducing only a portion of the reported articles, the Examining Attorney should indicate whether the ones submitted constitute a representative sample of the whole of the search results. See In re Monotype Corporation PLC, 14 USPQ2d 1070 (TTAB1989).
*2 In this case, the Lexis/Nexis printout indicates that the search found eighteen stories. Three stories were submitted as evidence. One of the three was a reference to applicant. It is extremely difficult, if not impossible, to find, on the basis of such a weak showing, that the term in question is generic of the goods on which it is being used. Moreover, there was no indication from the Examining Attorney that the submitted articles constitute a representative sample of the entirety of the search results. [FN1] Eighteen articles is a small enough number that submission of the entire search would have been quite easy to accomplish and would have been infinitely more helpful than three. In the absence of the full search, we must presume that the excerpts selected for submission provide the best support of the refusal to register available from that source. See In re Federated Department Stores, Inc., 3 USPQ2d 1541 (TTAB1987).
In addition to the foregoing, the Examining Attorney argued that application of basic rules of the English language gives a descriptive interpretation of the wording in question; that applicant sells magazines listing rental properties under the mark RENTAL GUIDE and design; that applicant's magazines provide information on various types of rental properties available to purchasers of its goods; and that applicant's mark refers to the exact goods that it sells, hence, "rental guides".
Rental is defined as "n. 1. An amount paid out or taken in as rent. 2. A list of tenants and schedule of rents. 3. Property available for renting. 4. The act of renting.... adj. Of, concerning or available for rent." A guide is defined as "n ... 4a. A book or manual that serves to instruct or to direct one's thinking." (The American Heritage Dictionary 1976) Thus, a "rental guide" may be a book or manual instructing or directing one's thinking about an amount to be paid for rent, a list of tenants and schedule of rents, property which may be available for renting, or the act of renting.
In determining whether or not a term is generic, one must decide what is the primary significance of the term to the relevant purchasing public. The dictionary offers a number of possible of meanings for the word "rental" and there is no evidence to indicate which meaning is attributed to it by the relevant public when it is used with the suffix "guide". Even knowing full well what applicant's goods are, the dictionary meanings are not enough to establish that the public views this term as the common name for these goods. Thus, while the dictionary supports the finding that RENTAL GUIDE is certainly descriptive of applicant's goods, we cannot say that it is sufficient evidence to find the term generic. Cf. In re Gould Paper Corporation, 834 F.2d 1017, 5 USPQ2d 1110 (Fed.Cir.1987).
Accordingly, on the basis of this record, we find that RENTAL GUIDE, while merely descriptive, is not generic as applied to applicant's goods. Thus, applicant's mark may be registered on the Principal Register without a disclaimer if the evidence submitted by applicant establishes that the term RENTAL GUIDE has acquired secondary meaning.
*3 Applicant has filed the affidavit of William L. Needham, Vice President of Homes & Land Publishing Corporation who attests that sales of the product, bearing the mark sought to be registered, have increased steadily since the first use of the mark, October 1987; that from April 1988 through December 1990, sales have amounted to $3,629,326; that more than 10,240,000 magazines have been distributed during the same period; and that the mark has been heavily promoted in brochures and related advertising. Applicant has submitted a copy of its six page color brochure. In addition, applicant has submitted affidavits from three of its customers [FN2] attesting to recognition of applicant's magazines in the industry by the term RENTAL GUIDE.
While the affidavits of applicant's customers on their own would be less than sufficient, when we add thereto sales of $3 1/2 million in a two-year period; distribution of more than 10 million magazines in the same time period; promotion of the mark in brochures and related advertising; and the fact that the matter sought to be registered, including the designation, RENTAL GUIDE, is clearly used in the manner of a trademark, we are persuaded that applicant has achieved secondary meaning for the descriptive portion of its mark.
In view thereof, the refusal to register on the Principal Register with a claim of distinctiveness as to the words RENTAL GUIDE, is reversed.
Members, Trademark Trial and Appeal Board
FN1. In her appeal brief, the Examining Attorney listed the evidence of record as follows: "(1) copies of excerpts from MEAD Data Central's Nexis data base which retrieved searches for 'RENTAL GUIDE' (It is noted that the LEXIS/NEXIS articles of record represent only a sampling of the available evidence)". Saying that the three articles are only a sampling of the evidence is not the same as saying that they are a "representative sample" thereof.
FN2. It appears that the "customers" with whom the affiants are associated are companies who list properties in applicant's magazine rather than the recipients and/or users of the magazines.