This communication is in response to the Office Action from the Examining Attorney,

dated April 15, 2010. Applicant responds as follows:

No Disclaimer is Necessary Because the FAMILY VACATION CRITIC.COM Portion of
Applicant’s Mark Has Acquired Distinctiveness under Section 2(f)

I. Introduction

The Examining Attorney has requested that Applicant disclaim the term “CRITIC.COM”

in addition to the previously disclaimed wording “FAMILY VACATION” on the basis that

CRITIC.COM is merely descriptive under the Lanham Act section 2(e)(1), 15 U.S.C.

§ 1052(e)(1). However, Applicant respectfully submits that the word portion of its mark,

FAMILY VACATION CRITIC.COM, in its entirety, is not merely descriptive when used in

connection with Applicant’s online and travel related services in International Classes 38, 39, 41

and 43. Rather, it is suggestive because it does not immediately convey the precise nature of the

services offered by Applicant.

While Applicant maintains that the FAMILY VACATION CRITIC.COM portion of its

Mark is inherently distinctive as applied to its services, Applicant submits that the word portion

of the Mark also has acquired distinctiveness under Section 2(f) of the Lanham Act, 15 U.S.C. §

1052(f), so no disclaimer of “CRITIC.COM” is necessary. Applicant respectfully directs the

Examiner’s attention to its companion application for the word mark FAMILY VACATION

CRITIC.COM (Application Serial No. 77/757,873) and submits for the reasons set forth below

that the wording FAMILY VACATION CRITIC.COM has acquired distinctiveness for the

services identified in the application and should be deemed registrable on the Principal Register

without a disclaimer of the phrase “CRITIC.COM.”

II. The Standard

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A claim of acquired distinctiveness may be supported where a mark has been used in

commerce in a manner sufficient to support registration on the Principal Register pursuant to

Section 2(f) of the Trademark Act, 15 U.S.C. § 1052(f). See TMEP Section 1212. “The mark

can be registered [on the Principal Register] upon an adequate evidentiary showing that the mark

has acquired a secondary meaning ‘sufficient to identify an applicant’s goods.’” In re Owens-

Corning Fiberglas Corp., 227 U.S.P.Q. 417, 421 (citing Hehr, 279 F.2d at 528, 126 U.S.P.Q. at

382). In the absence of a signed affidavit claming five years of continuous and substantially

exclusive use, an Applicant may establish acquired distinctiveness under Section 2(f) by

submitting actual evidence of acquired distinctiveness. See TMEP Section 1212; 37 C.F.R. §

2.41(a) and (b).

Factors to be considered in determining whether a mark has acquired distinctiveness

include the following: (i) the length and manner of use of the mark by the applicant; (ii) the

nature and extent of advertising and promotion of the mark; and (iii) efforts made to promote a

conscious connection, in the consumer’s mind, between the mark and a particular product or

service. Pebble Beach Co. v. Tour 18 I Ltd., 942 F. Supp. 1513, 1538 (S.D. Tex. 1996) (citing

Boston Beer Co. v. Slesar Bros. Brewing Co., 9 F.3d 175, 181 (1st Cir. 1993)). Moreover, the

success of Applicant’s promotional efforts may be inferred from substantial publicity. Pebble

Beach, 942 F. Supp. at 1539; Washington Speakers Bureau Inc. v. Leading Auths. Inc., 49

U.S.P.Q.2d 1893, 1900 (E.D. Va. 1999). Applying the factors of Pebble Beach, the evidence

supports a conclusion that Applicant has substantially used and promoted its FAMILY

VACATION CRITIC.COM mark, so as to establish a conscious connection, in the consumer’s

mind, between the Mark and Applicant’s services offered under the Mark.

III. The FAMILY VACATION CRITIC.COM Portion of Applicant’s Mark Has Acquired
Distinctiveness after Almost Five Years of Substantially Exclusive Use in Commerce

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The word portion of the Mark has acquired distinctiveness by virtue of Applicant’s

substantially exclusive and continuous use of it in commerce for almost five years. See TMEP §

1212.05. As stated in Applicant’s companion application for FAMILY VACATION

CRITIC.COM (Application Serial No. 77/757,873), Applicant has adopted and continuously

used the wording FAMILY VACATION CRITIC.COM in commerce since at least as early as

May 31, 2006, in connection with its online and travel related services identified in the

application. Furthermore, Applicant’s use of FAMILY VACATION CRITIC.COM has been

substantially exclusive. Applicant is not aware of any other user in its industry using the

trademark FAMILY VACATION CRITIC.COM in connection with the same or similar services.

An Internet search for the phrase “Family Vacation Critic.Com” shows that virtually every

search result is a reference to Applicant’s services. See Exhibit A, print-outs of search

conducted at google.com for “Family Vacation Critic.Com.” Accordingly, Applicant maintains

that given Applicant’s continuous and substantially exclusive use of the word portion of the

Mark for almost five years, FAMILY VACATION CRITIC.COM has acquired distinctiveness,

so no disclaimer is required.

IV. The Word Portion of Applicant’s Mark Has Acquired Distinctiveness through Extensive
Use and Promotion

Importantly, while there is a statutory presumption of secondary meaning after five years

of use, a shorter period of use does not preclude a finding of secondary meaning because “[no]

particular period of use is required.” Echo Travel, Inc. v. Travel Assocs., Inc., 870 F.2d 1264,

1269, 10 U.S.P.Q.2d 1368 (7th Cir. 1989). “[I]n some cases, … special significance [secondary

meaning] is acquired after a brief period of use.” Id. Here, Applicant has adopted and

continuously used the wording FAMILY VACATION CRITIC.COM as a trademark in

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commerce since at least as early as May 31, 2006 in connection with the services listed in the

application. Specifically, Applicant has offered its online and travel related services at

Applicant’s website, www.familyvacationcritic.com. See Exhibit B, print-outs from Applicant’s

website. As indicated in the below chart, since its inception, Applicant’s website has enjoyed

significant web traffic and attention from internet users. During the period of June 2009 to July

2010, Applicant’s website had more than 893,100 unique visitors (meaning distinct

individuals/computers that accessed the site). Moreover, while in June 2009 the website had

5,365 unique monthly visitors, 135,588 unique visitors accessed Applicant’s website in June

2010. This dramatic upward trend evidences consumers’ increased exposure to, recognition of,

and affinity for the services underlying Applicant’s FAMILY VACATION CRITIC.COM mark.

Month and Year Unique Visitors

June 2009 5,365

July 2009 41,557

August 2009 19,278

September 2009 22,935

October 2009 33,533

November 2009 40,278

December 2009 40,908

January 2010 73,957

February 2010 67,725

March 2010 94,991

April 2010 99,733

May 2010 113,252

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June 2010 135,588

Applicant’s FAMILY VACATION CRITIC.COM services also have generated third-

party attention from news sources and magazines, in media materials, and in online blogs. See

Exhibit C, list of various online articles and blog entries discussing Applicant’s FAMILY

VACATION CRITIC.COM services. Applicant’s brand has been featured in Real Simple

Magazine, among others, and on both the MSNBC and ABC News websites. As the Examining

Attorney is aware, these media brands have widespread distribution and popularity. For

instance, Real Simple Magazine reaches approximately 8.6 million readers every month. See

Exhibit D, print-out from www.real-simple.com. According to a recent report, MSNBC is the

third most popular news and media website with a 3.41% market share of the 10 million Internet

users in the United States. See Exhibit E, Hitwise report. Moreover, ABC NEWS is one of the

largest media outlets in the United States, reaches approximately 180 million people every day,

and its website is consistently ranked among the top news sites. See Exhibit F, fact sheet about

ABC News. Accordingly, Applicant’s services have been featured in hugely successful media

outlets, and consumers have had and continue to have pervasive exposure to Applicant’s services

and the FAMILY VACATION CRITIC.COM portion of Applicant’s Mark. Such exposure

indicates Applicant has made clear and extensive efforts to promote FAMILY VACATION

CRITIC.COM as a source indicator.

In sum, Applicant’s online and travel related services have grown increasingly popular

with consumers and have garnered substantial third-party publicity, both of which further

evidence Applicant’s successful promotional efforts that have made FAMILY VACATION

CRITIC.COM a recognizable source indicator. As a result of this extensive use and promotion

of Applicant’s FAMILY VACATION CRITIC.COM services over an almost five year period,

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the word portion of the Mark has acquired distinctiveness in the minds of consumers and has

become an indicator of source for Applicant’s services. As such, registration on the Principal

Register without a disclaimer of the term “CRITIC.COM” is appropriate.

V. Conclusion

Applicant requests that the Examining Attorney allow registration of the Mark on the

Principal Register without a disclaimer of the wording “CRITIC.COM”, since the word portion

of the Mark, in its totality, has acquired distinctiveness through Applicant’s substantial and

continuous use and promotion of the FAMILY VACATION CRITIC.COM mark in connection

with its services. Applicant’s evidence, when considered as a whole, clearly indicates that the

word portion of Applicant’s Mark has acquired distinctiveness through secondary meaning.

“While none of [these] factors alone will prove secondary meaning, in combination they may

establish the necessary link in the minds of consumers between a product and its source.”

Zatarains, Inc. v. Oak Grove Smokehouse, Inc., 698 F.2d 786, 795 (5th Cir. 1983). The length

and manner of use of the wording FAMILY VACATION CRITIC.COM in commerce for a

period over four years, combined with the promotion, considerable success, and third-party

publicity of Applicant’s services all support an inference that FAMILY VACATION

CRITIC.COM has acquired secondary meaning as an indicator of source for Applicant’s

services. Any doubts about the sufficiency of secondary meaning evidence should be resolved in

favor of the Applicant. In re Merrill Lynch, Pierce, Fenner & Smith, Inc., 828 F.2d 1567, 4

U.S.P.Q.2d 1141 (Fed. Cir. 1987). For the foregoing reasons, Applicant submits that the present

application is in condition for publication and registration on the Principal Register, and hereby

requests such action.

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