Trek 2000 International Ltd.
PORTABLE DIGITAL ELECTRONIC DEVICES FOR RECORDING, ORGANIZING, TRANSFERRING, STORING, AND REVIEWING TEXT, DATA, IMAGE, AUDIO AND VIDEO FILES; COMPUTER SOFTWARE FOR USE IN RECORDING, ORGANIZING, TRANSFERRING, STORING, AND REVIEWING TEXT, DATA, IMAGE, AUDIO AND VIDEO FILES ON PORTABLE DIGITAL ELECTRONIC DEVICES
United States Patent and Trademark Office (USPTO)
Office Action Response
Outgoing Trademark Office Action
Trademark Office Action Response
IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
_ _ _ _ – – _ – – _ _ _ – x
_ . _ _ – _ _ – _ _ _ _
Applicant: Trek 2000 International Ltd.
Mark: THUMBDRIVE Karen P. Severson, Esq.
: Trademark Examining Attorney
Serial No. 77/099,785 : Law Of?ce 117
– _ _ _ – – _ – – x
– _ _ – _
OFFICE ACTION RESPONSE
Commissioner for Trademarks
PO. Box 1451
Arlington, Virginia 22313-1451
This submission is in response to Of?ce Action No. I mailed June 5, 2007 in connection with the
above-captioned application by Trek 2000 International, Ltd. (hereinafter, the Applicant) for the
THUMBDRIVE mark (the Mark).
CLAIM OF OWNERSHIP OF PRIOR REGISTRATION
The Applicant is the owner of US. Registration No. 3,175,651.
THE THUMBDRIVE MARK IS SUGGESTIVE AND NOT DESCRIPTIVE
The Applicant respectfully submits that its THUMBDRIVE mark is not merely descriptive of the
nature of its goods, because it does not directly and immediately describe the goods. Where a mental
leap between the word and the products attribute is required, suggestiveness is strongly indicated, and
not direct descriptiveness. The Nautilus Group, Inc. v. Icon Health & Fitness, Inc, 372 F.3d 1330,
1340 (Fed. Cir. 2004).
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The Exa min ing Att orn ey cite s In re Stee lbui ldin g.co m, 415 F.3 d 129 3 (Fed . Cir. 2005 ), but the
mark in the present case is diff eren t in cha rac ter fro m the mar k at issu e in In re Stee lbui ldin g. com . In In
re Steelbuilding.com, the app lic ant s mar k was to be use d in con nec tio n wit h met al bui ldi ngs and roo ?ng
systems. Ste el buil ding s desc ribe s met al buil ding s. Here , in cont rast , Th ume riv e doe s not desc ribe
portable USB stor age devi ces, and the Mar k is cert ainl y less desc ript ive than the mar ks in
Stee lbui ldin g.c0 m (S TEE LBU ILD ING COM ), Min e Safe ty (W ORK MAS K) , and SRO Man age men t
(THE CONTINENTAL RESTAURANT AND MARTINI BAR).
The Applicant has combined two words into one coined, albeit suggestive mark for its portable
USB storage devices. The individual word thumb does not immediately or even readily describe
portable items, but rather is more commonly and readily associated with a digit of the human hand, or, if
used as a verb , the act of pagi ng thro ugh a book , play ing a guit ar or othe r stri nged inst rume nt, or
hitchhiking. The individual word drive, likewise, does not automatically or only describe a USB
storage devi ce, but has mor e com mon defin ition s, incl udin g mov ing some thin g by forc e or guid ing such
movement; energy, initiative, or motivation; or causing a run to be scored in baseball or hitting a golf ball
from a tee. Nor are these individual words typically associated with one another. The word thumb is
more readily associated and logically combined with green, print, or even war (i.e., green thumb,
thumbprint, and thumb war). The word drive is more readily associated and logically combined with
hard, line, over, or even warp (i.e., hard drive, line drive, overdrive, and warp drive). The
Applicant respectfully submits that it would be ironic and unfair to deny registration to the Applicants
THUMBDRIVE mark when the eminently equivalent suggestive marks of its competitors, such as QUIK
DRIVE of US. Modular, LLC and JUMPDRIVE of Lexar Media, have readily been granted registration
on the Principal Register (as the Examining Attorney may take judicial notice). The Applicant suspects
that each mark has, at one time or another, in the short space of years since portable USB storage devices
?rst became popular, seen some level of misuse before consumers became familiar with the ubiquitous
generics now in common use: ?ash drive, USB card, USB drive, portable drive. Such occasional misuse
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is hardly evidence of descripti ven ess , part icul arly whe n the use is occ asi ona l, ext end s ove r suc h a shor t
period of time, and has been the sub jec t of app rop ria te and rea son abl e cor rec tiv e act ion , suc h as tha t
described further in Section IV. The App lic ant als o not es tha t a goo d dea l of the thi rd par ty use of the
Mark is by the App lic ant s lice nsee s, and is use that is bot h aut hor ize d and con tro lle d by the App lic ant , as
will also be discussed further in Section IV.
The term THUMBDRIVE is both coined and suggestive. Consumers encountering the
Applicants Mark in con nec tio n wit h the App lic ant s goo ds mus t use thei r ima gin ati on to det erm ine the
meaning of the mark in rela tion to the goo ds and serv ices . Con sum ers mus t mak e one or mor e me nta l
leaps in order to associat e TH UMB DRI VE with port able USB stor age devi ces. See The Deal , LLC v.
Korangy Publ g, Inc. , 309 F. Sup p. 2d 512, 524 (S. D.N .Y. 200 4) (?n din g that THE DEA L and THE
DAILY DE AL do not imm edi ate ly con vey to the purc hase r that the prod uct is a new s publ icat ion
dedicated to the coverage of ?nan cial and lega l news ); US. Wes t Inc. v. Bell Sout h Cor p, 18 U.S .P. Q.2 d
1307, 131 2 (T.T .A.B . 1990 ) (?n din g THE REA L YE LL OW PAG ES to be sugg esti ve and not
descriptive). Consumers wou ld nee d to (1) thin k ?rst of the digi t on the han d next to the inde x ?nge r; (2)
then think of that digi t as smal l (not easy , sinc e the pin ky ?ng er may be tho ugh t to be smal ler as it is ofte n
called the little ?nge r); (3) then asso ciat e sma ll with por tabl e; and (4) then unde rsta nd dri ve to
refer to USB stor age devi ces. Thus , not only must mor e than one ment al leap be made , but one or more
of those leaps is signi?cant.
The Trad emar k Tria l and Appe al Boar d has stat ed that its prac tice [w] hen doub ts exist as to
whet her a term is desc ript ive as appl ied to the good s or serv ices for whic h regis trati on is soug ht is to
resolve doubts in favor of the applicant and pass the mark to publication with the knowledge that a
competitor of applicant can come forth and initiate an opposition proceeding in which a more complete
record can be established. In re The Stroh Brewery C0., 34 U.S.P.Q.2d 1796, 1797 (T.T.A.B. 1994); see
also In re Micro Instrument Corp, 222 U.S.P.Q. 252, 255 (T.T.A.B. 1984) (stating that the
suggestive/descriptive dichotomy can require the drawing of ?ne lines in a process where doubts are to be
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ati on omi tte d). T HU MB DR IV E is a coi ned wo rd tha t, at
resolved in favor of applicants) (internal cit
most, suggests a connection between a thumb, or thu mbi ng, and the goo ds, por tab le US B sto rag e dev ice s.
However, even if the Examining Attorn ey mai nta ins dou bts as to the sug ges tiv ene ss of the App lic ant s
Mark, the Applicant respectfully submit s tha t tho se dou bts sho uld be res olv ed in fav or of the App lic ant ,
especially when comparable mar ks suc h as QU IK DR IV E and JU MP DR IV E alr ead y res ide on the
Principal Register without such doubts.
APPLICANTS MARK HAS ACQUIRED DISTINCTIVENESS
Even if the Exa min ing Att orn ey con sid ers the Mar k to be des cri pti ve and not sug ges tiv e, and
decides, contrary to the abo ve pre ced ent , not to res olv e the dou bts as to sug ges tiv ene ss in fav or of the
Applicant, the App lic ant res pec tfu lly sub mit s that the Mar k has acq uir ed dis tin cti ven ess ove r the pas t
seven years. The Applicant her eby sub mit s add iti ona l evi den ce to sup por t its cla im of the Mar ks
distinctiveness, including a Dec lar ati on exe cut ed by Gur cha ran Sin gh, the Chi ef Fin anc ial Of? cer and
Executive Director for Tre k 200 0 Inte rnat iona l, Ltd. (the Si ngh Decl arat ion ), incl uded in this Res pon se.
The Applicants use of the Mar k on or in conn ecti on with the goo ds in Inte rnat iona l Clas s 09 has
been substantially exc lus ive and con tin uou s sin ce at leas t Feb rua ry 200 0. Thr oug h suc h ext ens ive and
established use, as deta iled here in and in the Sin gh Decl arat ion, the Appl ican t resp ect? illy subm its that
the acqu ired dist inct iven ess of the Mar k in conn ecti on with thos e serv ices has bee n esta blis hed in the
minds of the Applicants targ et con sum ers and dist ribu tors , as well as in the info rmat ion tec hno log y
community beyond the con?nes of the Applicants company.
The federal courts have considered several non-exclusive factors when determining whether a
mark has acqu ired seco ndar y mean ing, incl udin g adve rtis ing expe ndit ures , sales succ ess, unso lici ted
media coverage of the product, attempts to plagiarize the mark, and length and exclusivity of use of the
mark. Thompson Medical Co. v. P?zer, 753 F.2d 208, 217 (Fed. Cir. 1985); Intl Bancorp, LLC v.
Soci ete des Bain s de Mer et du Cerc le des Etra nger s a Mona co, 329 F.3d 359, 370 (4th Cir. 2003 )
(affirming District Courts finding that SBM provided proof of substantial advertising expenditures;
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signi?cant sales success wit hin the Uni ted Sta tes ; sub sta nti al uns oli cit ed med ia cov era ge of the cas ino ;
frequent attempts by oth ers to pla gia riz e the mar k; and a lon g his tor y of con tin uou s, if not exc lus ive , use
of the mark evidenced acquisition of sec ond ary mea nin g). The bel ow exa min ati on of the App lic ant s
investment in advertising and mar ket ing the TH UM BD RI VE -b ra nd ed pro duc ts; the App lic ant s sal es
success; unsolicited media cov era ge of pro duc ts bea rin g the Mar k; the len gth and exc lus ivi ty of the
Applicants use of the Mar k; pos ses sio n of int eme t dom ain nam es usi ng the Mar k; the App lic ant s
enforcement efforts wit h res pec t to the Mar k, inc lud ing act ion s tak en aga ins t dom ain na me reg ist ran ts
using the Mark wit hou t aut hor iza tio n; and use of the TM sym bol , dem ons tra te the acq uir ed
distinctiveness of the Mark.
I. Advertising Expenditures
When assessing sec ond ary mea nin g, cou rts typi call y ass ign gre at wei ght to the ext ent of use of
the mark in adve rtis ing. See, e. g., Fre edo m Call s Fou nd. v. Buks tel, No. 05C V54 60, 200 6 WL 845 509 , at
*6 (E.D.N.Y. Mar. 3, 2006) (?n din g pla int iff s adv ert isi ng exp end itu res wei gh in fav or of a ?nd ing of
secondary mea nin g whe re plai ntif f spen t app rox ima tel y $10 0,0 00 in adve rtis ing and con sist entl y
directed its market ing effo rts tow ard s the targ et con sum er grou p); Best Vac uum , Inc. v. Ian Desi gn, Inc. ,
No. 04 C 224 9, 200 5 WL 118 581 7, at *5 (ND . 111. Jan. 18, 200 5) (pla inti ff inve sted in prin t, radi o,
television, and inte met adve rtis ing, and the cour t note d that [e] vide nce of [the ] amo unt and man ner of
advertising is rele vant to the seco ndar y mean ing inqu iry ); TCP IP Hold ing Co., Inc. v. Haa r
Comm unic atio ns, Inc., 244 F.3d 88, 96 (2d Cir. 2001 ) (hol ding that plai ntif f 3 adve rtis ing expe ndit ures of
tens of mill ions of doll ars over a deca de esta blis hed seco ndar y mean ing) ; Harl equi n Ente rs. Ltd. v. Gulf
& Western Corp, 644 F.2d 946, 949 (2d Cir. 1981) (holding that plaintiffs extensive national advertising
indicated consumers associated plaintiffs mark with the source of plaintiffs products). Courts recognize
that intemet advertising can effectively raise consumer awareness without large expenditures, giving it an
advantage over traditional advertising and allowing companies to advertise extensively without incurring
high costs. See Classified Ventures, L.L.C. v. Softcell Mktg., Inc., 109 F. Supp. 2d 898, 899 (ND. 111.
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2000) (?nding CARS.COM ser vic e ma rk s acq uir ed str ong sec ond ary me an in g thr oug h ext ens ive
promotion, advertising, and int eme t exp osu re) ; Ste elb uil din g.c om, 415 F.3 d at 130 20 3 (Li nn, J.,
dissenting) (?nding that inteme t adv ert isi ng is an ef? cie nt wa y to rea ch a tar get aud ien ce) .
The Applicant has invested a gre at dea l of mo ne y and oth er res our ces in adv ert isi ng the por tab le
USB storage devices bearing its Ma rk in the Uni ted Sta tes sin ce at lea st as ear ly as Feb rua ry 200 0, usi ng
both print media and inteme t adv ert ise men ts. Sin gh Dec lar ati on 1111 35 . The App lic ant als o eng age d a
public relations consulting ?rm to assist the App lic ant wit h the mar ket ing and pro mot ion of its por tab le
USB storage devices branded with the Mark. Singh Declaration 1] 4. The Applicant has, further,
promoted its Mark-branded pro duc ts at pre mie r ind ust ry tra des how s, inc lud ing CO MD EX in Chi cag o in
Spring 2000, PC EXPO in Ne w Yor k, and the Con sum er Ele ctr oni cs Sh ow (C ES ). Sin gh Dec lar ati on
A portion of these advert isi ng doll ars has bee n dev ote d to adv ert isi ng the TH UM BD RI VE –
branded portable digital ele ctr oni c dev ice s on the int eme t, inc lud ing on the App lic ant s web sit e,
www.thumbdrive.com , dis cus sed furt her bel ow. Sin gh Dec lar ati on ? 5. Giv en that a larg e seg men t of the
consumers of port able digi tal elec tron ic devi ces is inte met- savv y and the perv asiv enes s of the Appl ican ts
advertising on the inte met, whi ch deno tes the App lic ant as th_e sour ce of the THU MBD RIV E-b ran ded
devices, the Appl ican t has rea che d the majo rity of its con sum ers and com mun ica ted its bran ding of the
portable digital electronic devices with its THUMBDRIVE mark.
By so permeating the market with advertising connecting the THUMBDRIVE mark to its source,
Trek 2000, the Applicant has successfully linked the two such that the Mark has acquired distinctiveness.
Moreover, promotional materials can serve as evidence of advertising to establish secondary
meaning. In Re Mine Safety Appliances Ca, 66 U.S.P.Q.2d 1694, 169798 n.6 (T.T.A.B. 2002). In Mine
Safety, the court held that the applicants use of its trademark WORKMASK in its promotional materials
- including data sheets, bulletins, and equipment catalogs and product literature served as evidence that
applicants proposed mark had acquired secondary meaning. Id. at 1698, 1700. The applicant in Mine
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Safety did not present evidence of larg e adv ert isi ng exp end itu res , but the cou rt did not dee m this fata l to
the applicants claim of secondary meaning. Id. at 1700 ([T]he record herein demonstrates that
applicant, for ove r six year s, has con sis ten tly util ized the ter m W OR KM AS K, on its spe cim ens of use
and in its advertising and pro mot ion al mat eri als and acti viti es, in a man ner cal cul ate d to proj ect a sing le
source or orig in for its goo ds to cus tom ers and mem ber s of the trad e ther efor e …. ); see also Fre edo m
Calls Found, 200 6 WL 845 509 , at *6 (?n din g plai ntif fs adve rtis ing expe ndit ures wei gh in favo r of a
?nding of sec ond ary mea nin g whe re plai ntif f spen t app rox ima tel y $10 0,0 00 in adve rtis ing and
consistently directed its marketing efforts towards the target consumer group).
Like the appl ican t in Alin e Safe ty, the Appl ican t has use d its TH UM BD RI VE mar k on its
promotional materials, product literature, and product packaging in a manner that is meant to and d_oe_s
project a si_ngl_e source of origin for THUMBDRIVE-branded products. Singh Declaration 1] 11, Exh. D.
The Applican t has used the Mar k on its prod uct pack agin g and prom otio nal mate rial as a sour ce iden ti?e r
for more than seven year s, sinc e 2000 . Sin gh Decl arat ion 1] 11. As disc usse d in grea ter deta il in Sect ion
V below, subs tant iall y excl usiv e and cont inuo us use of the mar k in com mer ce for ?ve year s is a fact or
that weights in favor of a ?nding of acquired distinctiveness. These facts further support a ?nding of
acquired distinctiveness for the THUMBDRIVE mark.
II. Sales Success
Another factor in considering whether a mark has acquired distinctiveness is the sales success
associated with products branded with the mark at issue. See Thompson, 753 F.2d at 217; Int 1 Bancorp,
LLC, 329 F.3d at 370. Where an applicant has had commercial success with products branded with the
mark at issue, Examining Attorneys should ?nd that that mark has acquired distinctiveness and developed
a secondary meaning. See, e.g., Perfumania, Inc. v. Perfulandia, Inc., 279 F. Supp. 2d 86, 103 (D.P.R.
2003) (?nding plaintiffs mark was strengthened by its national sales volume of more than $1.4 million in
products over 15 years); TCPIP Holding Co., Inc., 244 F.3d at 96 (holding that plaintiffs $280 million in
sales established secondary meaning); Harlequin Enters. Ltd, 644 F.2d at 950 n.1 (holding that plaintiffs
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sale of 20 million books established secondary meaning).
Like the plai ntif fs in Per fum ani a, TCP IP Hol din g Com pan y, and Har leq uin Ent erp ris es, the
Applicant has enjoyed sign ific ant sale s suc ces s wit h its THU MBD RIV E-b ran ded pro duc ts. The
Applicant has rec ord ed sale s of its THU MBD RIV E-b ran ded pro duc ts in exc ess of $4. 3 mil lio n in the
United States in the past ?ve year s, wit h inc rea sed OE M sale s in eac h of tho se year s. Sin gh Dec lar ati on
? 6, Exh. A. The Appl ican ts sale s succ ess with its THU MBD RIV E-b ran ded prod ucts serv e as furt her
evidence of acquired distinctiveness.
III. Unsolicited Media Coverage of the Product
Unsolicited media coverage also serves as evidence of acquired distinctiveness. See Thompson,
753 F.2d at 217; Air Car go New s, Inc. v. Tab mag Publ g, Ltd , No. 07- CV- 480 , 200 7 WL 110 118 3, at *9
(E.D.N.Y. Apr. 11, 2007) (noting that plaintiff received extensive media coverage within the air cargo
industry, includin g num ero us awa rds and app ear anc es on tele visi on and in the news ). The Appl ican ts
THUMBDRIV E-b ran ded prod ucts have been cove red by seve ral new s outle ts, incl udin g The Wall Stree t
Jour nal, The New Yor k Time s, Busi ness Wee k, Wire d Maga zine , CNE T, MacW orld , and Smar t
Computin g. Sing h Decl arat ion 11 7, Exh. B (exa mple s of artic les publ ishe d in the Unit ed Stat es cove ring
the Applicants THUMBDRIVE-branded products). The Applicants THUMBDRIVE-branded products
have also been covered by ?nancial analysts, such as Kim Eng, Asias leading securities and investment
broker, whose international presence includes a New York branch. Exh. E. Moreover, the Applicants
THUMBDRIVE-branded portable USB storage devices have received recognition and awards in the
United States for excellence in technology, including Design & Engineering Showcase Honors at the
2003 Consumer Electronics Show. Singh Declaration 1] 8. This coverage serves as additional evidence of
the THUMBDRIVE marks acquired distinctiveness.
IV. Attempts to Plagiarize THUMBDRIVE
Attempts to plagiarize a mark also weigh in favor of a ?nding of acquired distinctiveness. Int 1
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Ban cor p, LLC , 329 F.3 d at 370 ; Air Car go New s, Inc. , 200 7 WL 110 118 3, at *8, *9.
Numerous domain na me reg ist ran ts hav e att emp ted to use the TH UM BD RI VE mar k to dri ve
traf?c to their websites by using the Ma rk itse lf or som e der iva tio n the reo f, inc lud ing th umb dri v,
thumbdriving, trekthumbdrive, and bl uet oot hth umb dri ve. Tho se pla gia riz ing the Mar k are free –
riding on the streng th of and goo dwi ll ass oci ate d wit h the Mar k, whi ch are at leas t in part attr ibut able to
the Applicant pio nee rin g the des ign and man ufa ctu re of por tab le US B sto rag e dev ice s. Sin gh Dec lar ati on
11 2. By using the Mark, thos e thir d part ies are atte mpti ng to ben e?t fro m asso ciat ion with the Appl ican t,
confusing potential and actu al con sum ers into beli evin g that thei r goo ds and/ or serv ices are asso ciat ed
with or orig inat e fro m the pri mar y dev elo per and man ufa ctu rer of the goo ds soug ht, nam ely , port able
USB storage devi ces. The App lic ant has take n and cont inue s to take reas onab le step s, by and thr oug h its
trademar k coun sel, to addr ess misu se of the Mar k by doma in owne rs and other s, and to stop any
infringing uses of the Mark. Singh Declaration 1] 12. As part of this effort, the Applicant subscribes to
Trademark and Dom ain Nam e Wat ch Noti ce serv ices that repo rt all inst ance s of use of the Mark , or
misspellings ther eof, in trad emar k appl icat ions and doma in name s, and issu es ceas e and desis t lette rs to
all domain name owners misusing or misappropriating the Applicants Mark. Singh Declaration 11 12.
The presence of domain name registrants attempting to plagiarize the Mark in order to bene?t
from the strength of and goodwill associated with the Mark, combined with the Applicants vigilant
protection of its THUMBDRIVE mark against such misuse and the Applicants control over the proper
usage of same by licensees, weighs in favor of a ?nding of acquired distinctiveness.
Additionally, not all third party uses of the THUMBDRIVE mark are unauthorized. The
Applicant has authorized certain companies to manufacture portable USB storage devices bearing the
THUMBDRIVE mark for sale in the United States, and some of those licensees including Memorex,
Creative Technology Ltd., Imation, Iomega, and TEAC are authorized by the Applicant to co-brand
those devices with the THUMBDRIVE mark and their own house mark. Singh Declaration 1] 9. These
relationships are governed by license agreements, which include quality control measures that allow the
PALOALTO 82564 (2K) ‘9-
Applicant to ensure that the goodwill associated with the Mark is preserved and that the Mark is used
correctly, as a source identi?er. Singh Declaration 1] 9. The willingness of third party companies active
in the ?eld to obtain licenses of the mark surely is strong evidence of its recognition among sellers and
consumers of these products as a distinctive brand ~ why would important companies such as Memorex,
Creative Technology Ltd., Irnation, and Iomega take licenses otherwise?
V. Length and Exclusivig of Use of THUMBDRIVE by Trek 2000
The length of use of a mark, including the continuity and exclusivity of such use, also may
evidence acquired distinctiveness of that mark. Jewish Sephardic Yellow Pages, Ltd. v. DAG Media, Inc.,
478 F. Supp. 2d 340, 374 (E.D.N.Y. 2007) (the length and exclusivity of a marks use is evaluated in
light of the product and its consumers); Perfumania, Inc. v. Perfulandia, Inc., 279 F. Supp. 2d 86, 103
(D.P.R. 2003) (noting plaintiffs mark achieved additional strength by means of the length of time the
mark has been used). In the Jewish Sephardic Yellow Pages, Ltd. case, the court found that, while
plaintiff used its mark exclusively from at least 2000, when it published its ?rst (annual) edition of the
Kosher Yellow Pages, within the context of the published industry, this mark does not have a
particularly long history, citing the example of Science Magazine, which had been published since
1880. Jewish Sephardic Yellow Pages, Ltd, 478 F. Supp. 2d at 37475.
In this instance, the Applicant was a pioneer in the design and manufacture of, and the ?rst
company to sell portable USB storage devices, in early 2000. Singh Declaration 1] 2; see also USB Flash
Drive, Wikipedia, available at http://en.wikipedia.org/wiki/USB_?ash_drive (last viewed 30 November
2007). The Applicant coined the THUMBDRIVE term as its brand name for its line of portable USB
storage devices in 2000, and has consistently and continuously used the THUMBDRIVE mark to
advertise, market, and brand such products since 2000. Singh Declaration 1H] 2, 3, 5, 11. Such continuous
and consistent use over the past seven years is further evidence of the THUMBDRIVE marks acquired
distinctiveness and secondary meaning.
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VI. Additional Factors
In addition to the fact ors set fort h in the Tho mps on case , cou rts rec ent ly hav e con sid ere d
possession of intemet domains and use of the T M sym bol to edu cat e con sum ers , to be rel eva nt to the
determination of acquired distinctiveness and secondary meaning. PACAAR Inc. v. Telescan Techs.,
L.L.C., 319 F.3d 243, 250 (6t h Cir. 200 3) (W ord s in man y dom ain nam es can and do com mun ica te
information as to the sou rce or spo nso r of the web site ); Bro okj ie ld Com mun ica tio ns, Inc. v. Wes t Coa st
Entm t Cor p, 174 F.3 d 103 6, 105 5 (9th Cir. 199 9) (T he dom ain nam e is mor e tha n a mer e add res s: like
trademarks, second -le vel dom ain nam es com mun ica te inf orm ati on as to sou rce ); In re Min e Saf ety
Appliances Co. , 66 U.S .P. Q.2 d 169 4, 170 0 (T. T.A .B. 200 2) ([ T]h e use [of the TM sym bol ] by
applicant in connecti on with its adve rtis ing and pro mot ion al mate rial s for its WO RKM ASK self –
contained brea thin g appa ratu s is evid ence of appl ican ts atte mpts and inte nt to educ ate the trad e and
purchasing publ ic that it rega rds the ter m WO RKM ASK as its tra dem ark for such goo ds ).
A. Internet Presence
Courts recognize that intemet presence can make consumers aware of a brand, widespread
presence on the intemet can support a ?nding of secondary meaning, and intemet domain names can
serve as powerful source identi?ers. See In re My Virtual Model Inc., 2005 WL 1822537, * 5 (T.T.A.B.
July 21, 2005 ) (Gi ven the year s of usag e of this term by appl ican t on the Inter net, acco mpan ied by a
showing of adve rtis ing expe ndit ures of near ly a mill ion doll ars a year over a peri od of year s, we conc lude
that applicant has proven acquired distinctiveness by a preponderance of the evidence); PACCAR Inc.,
319 F.3d at 250; Broolrjield Communications, Inc., 174 F .3d at 1055; Panavision Int 1, LP. v. Toeppen,
141 F.3d 1316, 1327 (9th Cir. 1998) (A signi?cant purpose of a domain name is to identify the entity
that owns the web site); Steelbuilding.com, 415 F.3d at 1301 (Linn, J., dissenting) (In the Internet
world, domain-name recognition is a form of source identi?cation and may even evidence acquired
distinctiveness. . . ..).
PALOALTO 82564 (2K) ‘1 1’
The Applicant owns the domain name associated with the Mark, www.thumbdrive.com, which it
registered on February 11, 2000. Singh Declaration 11 10, Exh. C; WHOIS domain registration
information results for thumbdrive.com from Network Solutions, available at
http://www.networksolutions.com/whois/results.jsp?domain=thumbdrive.com (last viewed Nov. 27,
2007). The Applicants thumbdrive.com domain serves as a way to inform the public that
THUMBDRIVE identi?es the source of the product, Trek 2000, and not the product itself. Internet users
that visit the thumbdrive.com website will quickly realize that Trek 2000 owns the THUMBDRIVE mark
and uses it only in connection with portable USB devices. Singh Declaration 11 10, Exh. C. Moreover,
the Applicant has consistently and continuously protected its mark and its domain name against
cybersquatting, trademark infringement, and trademark dilution by issuing cease and desist letters and
engaging in other protective action. Singh Declaration 11 12.
B. Consistent and Continuous Use of the TM Symbol
Use of a mark with the TM symbol may also support a ?nding of acquired distinctiveness. In
re Aline Safety Appliances C0., 66 U.S.P.Q.2d at 1700. In Mine Safety, the court considered that the
applicant had used its proposed mark on its advertising and promotional materials in conjunction with the
TM symbol. Id. at 1698. The court found that applicants use of the symbol established that the
applicant intended to educate the public that WORKMASK was a source identi?er. Id. at 1700. The
court noted that the applicants intent, combined with its manner of use and sales numbers, was enough
evidence to establish acquired distinctiveness for the applicants mark. Id. The court therefore did not
require the applicant to submit additional evidence of secondary meaning. Id.
Like the applicant in Mine Safety, and since 2000, the Applicant has used the TM symbol and
the ® symbol in conjunction with the mark THUMBDRIVE consistently and continuously on its
products, product packaging, posters, advertising, and other promotional materials, in the United States
and on the intemet. Singh Declaration W 1011, Exhs. C & D. The Applicant has used the
THUMBDRIVE mark and the TM and ® symbols in a manner that expresses and represents the mark
PALOALTO 82564 (2K) ’12-
as an identi?er of origin . See id. If the Exa min ing Att orn ey fol low s the cou rt s ana lys is in Min e Saf ety ,
the Applicants use of the TM symbol wit h its TH UM BD RI VE mar k sho uld be suf ?ci ent to est abl ish
the Marks acquired distinctiveness. See id. at 1699700.
VIII. The Weight of Evidence Reg uired
Acquired distin cti ven ess is a que sti on of fact ; the exa ct amo unt of evi den ce req uir ed vari es fro m
case to case. Yamaha Int 1 Cor p. v. Hos hin o Gak ki Ca, 840 F.2 d 157 2, 158 1 (Fe d. Cir. 198 8). The mor e
descriptive a term, the higher the evi den tia ry bur den to esta blis h sec ond ary mea nin g. Id. The evi den tia ry
burden plac ed on the appl ican t vari es with the degr ee of desc ript iven ess of the pro pos ed mar k. In re .Min e
Safety Appliances Co., 66 U.S .P. Q.2 d at 1697 . For exa mpl e, in Min e Safe ty, alth ough the cour t fou nd that
the applicants WO RK MA SK mar k for brea thin g mas ks was hig hly desc ript ive, it held that the
applicant had sati s?ed its evid enti ary bur den by sho win g that it had use d its mar k on its prod uct lite ratu re
for ?ve year s, and did not requ ire the appl ican t to sub mit furt her evid ence of adve rtis ing or con sum er
reco gnit ion. Id. at 169 87 00. In In re SRO Man age men t, the cour t fou nd that the appl ican t had sati s?ed
its evidentiary burden for its THE CON TIN ENT AL RE ST AU RA NT AN D MAR TIN I BA R mar k by
subm itti ng evid ence indi cati ng its rest aura nt had been ment ione d in two maga zine artic les and on one
television broadcast. 72 U.S.P.Q.2d 1060, 106162 (T.T.A.B. 2004).
The Applicant has continuously and consistently used the THUMBDRIVE mark, in conjunction
with the TM symb ol, for over 7 year s on its prod ucts , prod uct pack agin g, and prom otio nal mate rial s
(both in print and on the intemet, including on its own webpage, thumbdrivecom), achieving successful
and increasing sales that exceeds $4.3 million over the past ?ve years. Moreover, the Applicant has
received unsolicited media coverage and defended its Mark against third parties attempting to bene?t
from misappropriation and infringement of the Mark. The Applicant has established and continues to
establish consumer awareness of its Mark and its role as a source identi?er for portable USB storage
devices manufactured by the Applicant. The Applicant has met and exceeded the evidentiary thresholds
applied in Aline Safety and SRO Management, and registration of the Mark on the Principal Register
PALOALTO 82564 (2K) ’13 ‘
should be allowed.
Based on the fore goin g, the Appl ican t resp ectf ully requ ests that the Exa min ing Atto rney allo w
the present application to move forward to publication on the Principal Register.
* * *
Dated: Palo Alto, California
December 5, 2007
WHITE & CASE LLP
– – . Hisc
Cynthia-Clar t . ey, Esq.
Jennifer L. Co, Esq.
3000 El Camino Real
5 Palo Alto Square, 9th Floor
Palo Alto, California 94306
Attorneys for Applicant
PALOALTO 82564 (2K) ’14-