IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
TRADEMARK EXAMINING DIVISION

In the matter of

Serial No. : 77/668,309

Mark : YELLOW PAGES GROUP and Design

International Classes : 16, 35, 38, 41, 42

Applicant : Yellow Pages Group Co./Groupe Pages Jauncs Cie

Filed : February 11, 2009

Examining Attorney : Sharon A. Meier, Esq.

Law Of?ce : 112

Commissioner for Trademarks
PO. Box 1451
Alexandria, Virginia 22313-1451

RESPONSE TO OFFICE ACTION

This is in response to the Of?ce Action mailed on May 13, 2009 (“Of?ce

Action”).

BACKGROUND

Applicant Yellow Pages Group Co. (“Applicant”), a well-known

forerunner in the directory and directory publishing industry, is the leading commercial

search provider and the largest directory publisher in Canada. See Lu Decl.. 1] 2, Ex. A.

It has been an industry leader since it published its ?rst directory in 1908 and today is the

of?cial publisher of Bell Canada’s directories. It is currently the directory publisher in

Quebec, Ontario, Manitoba, Alberta, British Columbia, the Territories and Atlantic

Canada, and also publishes regional community directories in Saskatchewan. See id.
Applicant not only engages in directory publishing, but also is a leading

provider of online directory services. It owns and manages Canada’s most visited online

directories — yellowpagesca, Canada41 Lea and CanadaPlus.ca — as well as a network of

seven local Canadian city sites. These sites attract seven million unique visitors per

month alone. See id

In recent years, Applicant has begun to extend its national Canadian

platform of directories into the United States. Today, operating under the YOUR

COMMUNITY PHONEBOOK name, Applicant publishes numerous independent

directories in certain Mid-Atlantic and Southeast markets in the US. See id. There are

over 150 directories targeting local markets, and approximately 8 million copies are

printed annually. Id. ,1] 3, Ex. B. Applicant also owns and manages

yourcommunity.com, a popular US. online directory site. 1d. ,11 2, Ex. A. In extending

its national Canadian platform of directories into the United States, Applicant provides

print and online solutions to targeted local communities, and offers to its customers

experienced, professional advertising consultants and professional advertisement

development services. 1d.,1[ 3, Ex. B. In addition, Applicant intends to provide mobile

applications that would allow individuals to perform directory searches with their

handheld devices. Applicant seeks registration of the subject mark on the Principal

Register in connection with its goods and services.

DISCUSSION

1. APPLICANT’S MARK IS NOT MERELY DESCRIPTIVE

The Examining Attorney has refused registration on the ground that

Applicant’s mark “merely describes a feature, characteristic, or function of applicant’s
goods and/or services.” Applicant respectfully disagrees with the Examining Attorney’s

conclusion and submits that its mark is entitled to registration on the Principal Register.

For a mark to be merely descriptive, it must “‘“z’mmediately convey to one

seeing or hearing it the thought of appellant’s [product].””’ In re Hutchinson Tech, Inc,

852 F.2d 552, 555, 7 U.S.l’.Q.2d 1490, 1492 (Fed. Cir. 1988) (emphasis added) (citations

omitted). Doubts about whether a mark is merely descriptive are to be resolved in favor

ofthc applicant. In re WSI Corp. 1 U.S.P.Q.2d 1570, 1573 (T.T.A.B. 1986); In re

I’ennwalt Corp, 173 U.S.P.Q. 317, 318 (T.T.A.B. 1972); see also In re Remacle, 66

U.S.P.Q.2d 1222, 1224 (T.’I‘.A.B. 2002) (“[T]he Examining Attorney has the burden of

establishing that the mark is merely descriptive . . . .”). If there is any doubt concerning

the suf?ciency of the Examining Attorney’s evidence, the mark should be published for

opposition. In re Bel Paese Sales (‘o., 1 U.S.P.Q.2d 1233, 1235 (T.’l‘.A.B. 1986).

A. Applicant’s Mark ls Arbitrary, Or At A Minimum, Suggestive, And
Therefore lnhcrently Distinctive

Because Applicant’s mark has little to no meaning with respect to

Applicant’s particular goods and services, it is arbitrary in nature. Arbitrary marks are

those “which, when used with the goods or services at issue, neither suggest nor describe

any attribute of those goods or services.” Na! ’1 Customer Eng ’g Inc. v. Lockheed Martin

Corp, 43 U.S.P.Q.2d 1036, 1038 (CD. Cal. 1997) (quoting J. THOMAS MCCARTHY,

MCCARTHY ON TRADEMARKS AND UNFAIR COMPETITION § 1 1.04 [1], at 13-15 (4th ed.

1996)). Because neither the terms “YELLOW,” “PAGES,” or “GROUP,” nor the phrase

“YELLOW PAGES,” nor Applicant’s walking ?ngers logo, suggests or describes any

attribute of Applicant’s particular advertising, advertising consultation, personal

communications or website design services, Applicant’s mark is arbitrary. These terms
do not even suggest the most prominent features of Applicant’s directories and services,

namely, the ef?cient targeting of local communities, and the fact that Applicant’s

directories are active media. See Lu Decl., 113, Ex. B. Nor do these terms remotely

describe Applicant’s services of providing lead—generating experts. See id.; see also Sun

Microsystems Inc. v. SunRiver Corp, 36 U.S.P.Q.2d 1266, 1269 (NB. Cal. 1995)

(?nding SUN to be an arbitrary mark because “it does not describe computer products”).

And the terms have nothing to do with the personal communication services that

Applicant intends to offer.

If Applicant’s mark cannot be considered arbitrary, it must be considered,

at a minimum, suggestive. To determine whether a mark is suggestive, as opposed to

descriptive, one must examine “‘how immediate and direct . . . the thought process [is]

from the mark to the particular product [or serviee|.’” Nautilus Group Inc. v. ICON

Health & Fitness Inc, 372 F.3d 1330, 1342-43, 71 U.S.P.Q.2d 1173, 1183 (Fed. Cir.

2004) (citations omitted). If it can be said that the mark requires “‘imagination or any

type of multistage reasoning to understand the mark’s signi?cance,m then the mark is

suggestive. Id. (citation omitted). In this case, imagination is required to understand the

signi?cance of the subject mark. The word and design components of the mark do not

describe the nature of Applicant’s goods and services. See supra at pp. 3-4. Certainly,

imagination is required to link the words “YELLOW,” “PAGES” and “GROUP” to the

mobile applications that Applicant intends to offer and Applicant’s website design

services, and a “multistage reasoning” is necessary to connect Applicant’s mark with its

particular advertising and publishing services, which target consumers whom advertisers

would like to target in an ef?cient manner. See Lu Decl., 1] 3, Ex. 13. Therefore,
regardless of whether Applicant’s mark is deemed to be arbitrary or suggestive in nature,

it is considered inherently distinctive, and not merely descriptive.

1. The Dictionary De?nitions of “YELLOW PA GES” Attached To
the Of?ce Action Do Not Demonstrate That Applicant’s Mark Is
Descriptive

The Examining Attorney presented dictionary de?nitions associated with

the words “YELLOW PAGES” and the word “GROUP” to support the assertion that

Applicant’s mark merely describes a feature, characteristic, purpose and/or use of the

relevant goods. These definitions, however, convey to consumers little, if anything,

about Applicant’s particular business and telephone directories, advertising services,

telecommunications services, publishing services and website design services. The use

0f“YEl,liOW PAGES GROUP” as a phrase certainly does not “immediately convey” the

nature of Applicant’s goods and services. In re Remacle, 66 U.S.P.Q.2d at 1224.

Applicant’s goods and services do not fall within the purview of the

general de?nition of “YELLOW PAGES” cited by the Examining Attorney. In terms of

its goods, Applicant speci?cally provides “business and telephone directories featuring

listings, maps. advertising and local information guides,” which are active “solutions to

targeted local communities.” See Lu Decl., W 3-4, Exs. B-C. The de?nitions of

YELLOW PAGES attached to the Of?ce Action are “a telephone directory printed on

yellow paper and listing businesses and other organizations according to the goods or

services they offer” and “[a] volume or section of a telephone directory that lists

businesses, services, or products alphabetically according to the ?eld . . . [s]o called

because they are usually printed on yellow paper.” However, Applicant’s goods are not

mere telephone directories that list businesses and the services they provide in

alphabetical order. Applicant’s directories are demarcated by the fact that they offer a
host of “extra” useful features such as local attractions, maps, event calendars,

entertainment information, and the fact that the directories “are an active media — users

seek out information when they are ready to make a purchase.” See Lu Dec1., 1111 3-4,

Exs. B-C. Thus, the de?nitions cited by the Examining Attorney do not encompass the

goods provided by Applicant under the subject mark. Nor do those de?nitions describe

the essence of Applicant’s directories which target local communities.

Similarly, Applicant’s services do not fall within the purview of the

de?nition of “YELLOW PAGES,” as cited by the Examining Attorney. The de?nitions,

“a telephone directory printed on yellow paper and listing businesses and other

organizations according to the goods or services they offer” and “[a] volume or section of

a telephone directory that lists businesses, services, or products alphabetically according

to the ?eld . . . [s]o called because they are usually printed on yellow paper,” do not

describe Applicant’s targeted advertising services, mobile application services,

publishing services or website design services, which speci?cally target local

communities. See Lu Dec1., 111] 3—4, Exs. B-C. Indeed, these de?nitions say nothing

about Applicant’s unique advertising consulting services which offer lead—generating

experts for advertising. See id, 1] 3, Ex. B. Therefore, it cannot be said that the subject

mark is merely descriptive of Applicant’s services.

Furthermore, because consumers may attach several meanings to the

phrase “YELLOW PAGES,” Applicant’s mark does not, and cannot, immediately convey

the nature of Applicant’s goods and services. For example, a de?nition of“YELLOW

PAGES” from Wikipedia. com states that the phrase means “a client-server directory

service protocol for distributing system con?guration data such as user and host names

between computers on a computer network.” See I.u Decl.. 11 5, Ex. D. This de?nition
certainly does not encompass any goods or services that are provided by Applicant under

the subject mark. There is no inkling that Applicant’s active directories, which target

local communities, and the various services that Applicant offer are or will be used for

distributing system con?guration data such as user and host names between computers on

a computer network because that is not a service that Applicant provides. See id, 111] 3-4,

Exs. B—C.

Based upon the de?nitions of “YELLOW PAGES” provided by the

Examining Attorney and from Wikipedia. com, consumers and users would have no idea

that Applicant’s mark is used for business and telephone directories targeting local

communities and featuring specialized listings, maps, advertising and local information

guides; or for providing mobile applications, by which users can perform directory

searches with their handheld devices. See id. Furthermore, the de?nitions of “YELLOW

PAGES” have absolutely nothing to do with the advertising consulting and website

design services that Applicant offers under the subject mark. Where, as here, a word’s

principal meaning does not describe the products, the word is at least suggestive, and not

descriptive. See Glamorene Prods. Corp. v. Boyle—Midway, Inc., 188 U .S.P.Q. 145, 164

(S.D.N.Y. 1975) (?nding the mark SPRAY & VAC for aerosol spray on scrub rug

cleaners to be suggestive because “[a] mark is not merely descriptive unless

descriptiveness is its principal signi?cance. A mark is not descriptive if it merely

suggests the nature or class of the product on which it is used”) (emphasis added). At a

minimum, consumer thought and imagination are required for a consumer to make any

connection between the phrase “YELLOW PAGES” and Applicant’s goods and services.

Therefore, in spite of the de?nitions of“YELLOW PAGES” attached to the Of?ce

Action, Applicant’s mark is inherently distinctive.
2. The Dictionary De?nitions of “GROUP”Attached To The Of?ce
Action Do Not Demonstrate That Applicant’s Mark Is
Descriptive

The Examining Attorney also provides as attachments to the Of?ce Action

numerous de?nitions of the word “GROUP” to support the proposition that the subject

mark “immediately names the exact nature and purpose of the goods and services and

does nothing else.” These de?nitions of “GROUP,” however, say nothing ~— let alone,

nothing immedialely w to consumers about the nature of Applicant’s goods and services.

For example, neither a “set of people or things,” “a number of people or things
9’ 6‘
considered together or regarded as belonging together, a number of people sharing

something in common such as an interest, belief, or political aim,” nor “a small number

of musicians, especially in pop music, who play together as a unit,” imparts any

knowledge about Applicant’s goods and services, which consist primarily of business

solutions to targeted local communities using active media and lead generating experts.

See Lu Dec1., 1] 3, Ex. B; see also Alberto-Culver Co. v. Helene Curtis Indus, Inc, 167

U.S.P.Q. 365, 370 (‘l‘.’l‘.A.B. 1970) (“The fact that a word or term may be found in a

dictionary does not indicate that the word is lacking in trademark signi?cance . . . .”).

For these reasons, the word “GROUP” cannot “immediately convey” the nature of

Applicant’s goods and services. In re Remacle, 66 U.S.P.Q.2d at 1224.

B. The Third Party Registrations Attached To The Of?ce Action Do Not
Demonstrate That Applicant’s Mark ls Descriptive

‘l’he Examining Attorney has attached to the Of?ce Action third party

registrations containing disclaimers of “YELLOW PAGES,” “GROUP” and

representations ofa walking ?ngers logo to show that these terms are merely descriptive.

Even if these features of Applicant’s mark were deemed descriptive, however, that would
not mean that Applicant’s mark in its entirety would not be entitled to registration. See

infra at pp. 9-11. Thus, Applicant submits that its mark is, if not arbitrary, suggestive,

and therefore inherently distinctive and entitled to registration on the Principal Register.

C. Applicant’s Mark Is A Unitary Mark That Is lnherently Distinctive

Applicant’s mark is a composite mark in that it consists of stylized words

that are inseparable from a unique walking ?ngers design. Therefore, even if all of the

literal elements of Applicant’s mark were descriptive, which they are not, the distinctive

design and stylistic aspects of Applicant’s mark combine with the literal elements to

create a unitary mark with a suggestive, and therefore an inherently distinctive, overall

commercial impression. lnherently distinctive design marks can be registered and

protected without proof of secondary meaning. 2 J. THOMAS MCCARTHY, MCCARTHY 0N

TRADEMARKS AND UNFAIR COMPETITION § 11:25 (4th ed. 2009); see Philip Morris Inc. v.

Rothmans ofPall Mall Ltd, 180 U.S.P.Q. 592 (T.T.A.B. 1973) (holding that stripes and

other design elements of a cigarette package created a distinct commercial impression);

In re W.B. Roddenbeiy (70., 135 U.S.P.Q. 215, 216 (‘l‘.T.A.B. 1962) (holding that the

design of a gold coin combined with colored panels was inherently distinctive); In re

Swift & (30., 223 F.2d 950, 955, 106 U.S.P.Q. 286, 289 (C.C.P.A. 1955) (holding that a

red and white polka dot band design created a distinct commercial impression).

Unitary marks may create arbitrary or suggestive commercial impressions,

even if some portion of the mark may be descriptive. 2 MCCARTI lY ON TRADEMARKS

AND UNFAIR COMPETITION § 11:26 (stating that a “composite may be more than the sum

of its parts”); see id. at § 11:30 (“liven if a descriptive word or composite of words is not

registrable as a trademark, a distinctive display of the words is registrable in the same

way as any distinctive picture”).