The Independent Traveler, Inc.
providing on-line electronic bulletin boards, chat rooms and forums for transmission of messages among computer users in the field of travel
United States Patent and Trademark Office (USPTO)
Office Action Response
Outgoing Trademark Office Action
Trademark Office Action Response
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
Applicants 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 Applicants 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
Examiners 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
BOS-1433957 v1
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 applicants 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 consumers 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 Applicants 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 consumers
mind, between the Mark and Applicants services offered under the Mark.
III. The FAMILY VACATION CRITIC.COM Portion of Applicants Mark Has Acquired
Distinctiveness after Almost Five Years of Substantially Exclusive Use in Commerce
BOS-1433957 v1 2
The word portion of the Mark has acquired distinctiveness by virtue of Applicants
substantially exclusive and continuous use of it in commerce for almost five years. See TMEP §
1212.05. As stated in Applicants 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, Applicants 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 Applicants services. See Exhibit A, print-outs of search
conducted at google.com for Family Vacation Critic.Com. Accordingly, Applicant maintains
that given Applicants 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 Applicants 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
BOS-1433957 v1 3
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
Applicants website, www.familyvacationcritic.com. See Exhibit B, print-outs from Applicants
website. As indicated in the below chart, since its inception, Applicants website has enjoyed
significant web traffic and attention from internet users. During the period of June 2009 to July
2010, Applicants 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 Applicants website in June
2010. This dramatic upward trend evidences consumers increased exposure to, recognition of,
and affinity for the services underlying Applicants 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
BOS-1433957 v1 4
June 2010 135,588
Applicants 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 Applicants FAMILY
VACATION CRITIC.COM services. Applicants 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, Applicants services have been featured in hugely successful media
outlets, and consumers have had and continue to have pervasive exposure to Applicants services
and the FAMILY VACATION CRITIC.COM portion of Applicants Mark. Such exposure
indicates Applicant has made clear and extensive efforts to promote FAMILY VACATION
CRITIC.COM as a source indicator.
In sum, Applicants online and travel related services have grown increasingly popular
with consumers and have garnered substantial third-party publicity, both of which further
evidence Applicants successful promotional efforts that have made FAMILY VACATION
CRITIC.COM a recognizable source indicator. As a result of this extensive use and promotion
of Applicants FAMILY VACATION CRITIC.COM services over an almost five year period,
BOS-1433957 v1 5
the word portion of the Mark has acquired distinctiveness in the minds of consumers and has
become an indicator of source for Applicants 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 Applicants substantial and
continuous use and promotion of the FAMILY VACATION CRITIC.COM mark in connection
with its services. Applicants evidence, when considered as a whole, clearly indicates that the
word portion of Applicants 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 Applicants services all support an inference that FAMILY VACATION
CRITIC.COM has acquired secondary meaning as an indicator of source for Applicants
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.
BOS-1433957 v1 6
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
Applicants 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 Applicants 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
Examiners 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
BOS-1433957 v1
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 applicants 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 consumers 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 Applicants 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 consumers
mind, between the Mark and Applicants services offered under the Mark.
III. The FAMILY VACATION CRITIC.COM Portion of Applicants Mark Has Acquired
Distinctiveness after Almost Five Years of Substantially Exclusive Use in Commerce
BOS-1433957 v1 2
The word portion of the Mark has acquired distinctiveness by virtue of Applicants
substantially exclusive and continuous use of it in commerce for almost five years. See TMEP §
1212.05. As stated in Applicants 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, Applicants 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 Applicants services. See Exhibit A, print-outs of search
conducted at google.com for Family Vacation Critic.Com. Accordingly, Applicant maintains
that given Applicants 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 Applicants 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
BOS-1433957 v1 3
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
Applicants website, www.familyvacationcritic.com. See Exhibit B, print-outs from Applicants
website. As indicated in the below chart, since its inception, Applicants website has enjoyed
significant web traffic and attention from internet users. During the period of June 2009 to July
2010, Applicants 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 Applicants website in June
2010. This dramatic upward trend evidences consumers increased exposure to, recognition of,
and affinity for the services underlying Applicants 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
BOS-1433957 v1 4
June 2010 135,588
Applicants 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 Applicants FAMILY
VACATION CRITIC.COM services. Applicants 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, Applicants services have been featured in hugely successful media
outlets, and consumers have had and continue to have pervasive exposure to Applicants services
and the FAMILY VACATION CRITIC.COM portion of Applicants Mark. Such exposure
indicates Applicant has made clear and extensive efforts to promote FAMILY VACATION
CRITIC.COM as a source indicator.
In sum, Applicants online and travel related services have grown increasingly popular
with consumers and have garnered substantial third-party publicity, both of which further
evidence Applicants successful promotional efforts that have made FAMILY VACATION
CRITIC.COM a recognizable source indicator. As a result of this extensive use and promotion
of Applicants FAMILY VACATION CRITIC.COM services over an almost five year period,
BOS-1433957 v1 5
the word portion of the Mark has acquired distinctiveness in the minds of consumers and has
become an indicator of source for Applicants 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 Applicants substantial and
continuous use and promotion of the FAMILY VACATION CRITIC.COM mark in connection
with its services. Applicants evidence, when considered as a whole, clearly indicates that the
word portion of Applicants 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 Applicants services all support an inference that FAMILY VACATION
CRITIC.COM has acquired secondary meaning as an indicator of source for Applicants
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.
BOS-1433957 v1 6