Walters
Walsh
Ritchie [Opinion "By the Board" (Adlin)]
THIS OPINION IS NOT A
PRECEDENT OF THE
UNITED STATES PATENT AND TRADEMARK OFFICE
T.T.A.B. Trademark Trial and Appeal Board
P.O. Box 1451
Alexandria, VA 22313-1451
MBA Mailed: January 29, 2009
Opposition No. 91157178
Opposition No. 91158299
International Star Registry
of Illinois, Ltd.
v.
Tonya S. Vaughan
Before Walters, Walsh and Ritchie, Administrative Trademark
Judges
By the Board:
This is the second time this case has come up for
consideration of whether applicants marks are generic, and,
if not, whether they have acquired distinctiveness under 15
U.S.C. § 1052(f). The Board first considered the issue when
Tonya S. Vaughan (applicant) moved for summary judgment in
her favor on the ground that her marks NAME A STAR1, and NAME
A STAR and Design, as shown below,
1 Serial No. 76448314, filed September 10, 2002, alleging
first use in commerce on December 25, 1978, for: (a) printed
publications, namely, certificates of registration, charts,
printed sheets and registers all identifying celestial stars as
named by persons dedicating a celestial star as a personal gift,
charts and printed sheets identifying celestial bodies, and
essays regarding celestial bodies and astronomy, in
International Class 16; and (b) novelty gift registry services,
namely, registering celestial stars with names selected by
customers and providing personalized certificates of registration
Opposition Nos. 91157178 and 91158299
2
are not generic for printed publications and novelty gift
registry services, and have become distinctive of applicants
goods and services. The Board denied applicants motion in
its order of November 16, 2007 (the Prior Order), and in
doing so stated that NAME A STAR may very well be generic.
Prior Order p. 16.
This case now comes up for consideration of essentially
the same issues, this time on International Star Registry of
Illinois, Ltd.s (opposer) motion, filed August 20, 2008,
for summary judgment in its favor on the ground that NAME A
STAR is generic, or so highly descriptive, and could not have
possibly acquired distinctiveness for name a star or star
naming services and products . The motion is fully briefed,
and is based primarily on the same evidence and arguments as
applicants earlier motion for summary judgment. While each
as gifts, in International Class 35. The application includes a
claim of acquired distinctiveness under Section 2(f).
2 Serial No. 76448315, filed September 10, 2002, alleging
first use in commerce on October 7, 1999, for essentially the
same goods and services as those identified in Serial No.
76448314. The application includes a claim of acquired
distinctiveness under Section 2(f) as to the phrase NAME A STAR.
2
Opposition Nos. 91157178 and 91158299
party has introduced a limited amount of new evidence, this
new evidence is for the most part cumulative.
The Parties Contentions
The relevant facts and primary arguments are discussed in
detail in the Prior Order, and for the most part need not be
repeated here. Opposer summarizes its argument as follows:
The phrase name a star is not
exclusive to Applicant, and has been
more prominently used for decades by
Opposer than by Applicant to such an
extent that Applicants claimed own use
of the phrase has been de minimus or
pales in comparison to the Opposers
usage. A multitude of third party
competitors have long used the phrase
name a star to identify
their star
naming services and products. The media
has extensively long used the term name
a star generically. Even Applicants
own materials have demonstrated long
spread generic or descriptive uses by
the Applicant herself.
In her response to opposers motion, applicant claims
that her mark is whimsical and incongruent, of star
registration goods and services, and that it acquired
secondary meaning long ago, and prior to any but sporadic
infringements by Opposer and third-parties. In addition,
the fact that the word sequence of name a star exists in
the literature outside of Applicants mark does not detract
from the Name A Star marks capability as a trademark and
service mark, and, in any event, [o]pposer and the primary
third-party infringers have been warned in writing, that
3
Opposition Nos. 91157178 and 91158299
their infringements will be dealt with upon the registration
of Applicants Name A Star mark.
In its reply brief, opposer primarily restates its
original arguments, and claims that [a]pplicant never points
to an affidavit from anyone that it ever once stopped even one
single use [of name a star] by others.
Decision
As explained in the Prior Order, summary judgment is
only appropriate where there are no genuine issues of
material fact in dispute, thus allowing the case to be
resolved as a matter of law. Fed. R. Civ. P. 56(c).
Opposer, as the movant seeking summary judgment, bears the
initial burden of demonstrating the absence of any genuine
issue of material fact. See, Celotex Corp. v. Catrett, 477
U.S. 317, 323 (1986); Sweats Fashions, Inc. v. Pannill
Knitting Co. Inc., 833 F.2d 1560, 1563, 4 USPQ2d 1793, 1796
(Fed. Cir. 1987). A factual dispute is genuine if, on the
evidence of record, a reasonable fact finder could resolve
the matter in favor of the non-moving party. See, Opryland
USA Inc. v. Great American Music Show Inc., 970 F.2d 847,
850, 23 USPQ2d 1471, 1472 (Fed. Cir. 1992); Olde Tyme Foods,
Inc. v. Roundys, Inc., 961 F.2d 200, 202, 22 USPQ2d 1542,
1544 (Fed. Cir. 1992).
The evidence on summary judgment must be viewed in a
light most favorable to the non-movant, in this case
4
Opposition Nos. 91157178 and 91158299
applicant, and all justifiable inferences are to be drawn in
applicants favor. Lloyds Food Products, Inc. v. Elis,
Inc., 987 F.2d 766, 767, 25 USPQ2d 2027, 2029 (Fed. Cir.
1993); Opryland USA, supra. The Board may not resolve
issues of material fact; it may only ascertain whether
issues of material fact exist. See, Lloyds Food Products,
987 F.2d at 766, 25 USPQ2d at 2029; Olde Tyme Foods, 961
F.2d at 200, 22 USPQ2d at 1542.
Standing
There is no genuine issue that opposer and applicant
are competitors in the field of registering names of
stars, using dedication names chosen by customers.
Applicants Answer to Notice of Opposition ¶¶ 3-5. As a
result, there is no genuine issue that opposer has standing
to oppose registration of applicants marks. Plyboo America
Inc. v. Smith & Fong Co., 51 USPQ2d 1633, 1634 (TTAB 1999).3
Genericness
As set forth in the Prior Order, a mark is a generic
name if it refers to the class, genus or category of goods
and/or services on or in connection with which it is used.
In re Dial-A-Mattress Operating Corp., 240 F.3d 1341, 57
3 In related Opposition No. 91163697, applicant herein is
challenging opposer hereins application Serial No. 76415083, for
registration of INTERNATIONAL STAR REGISTRY NAME A STAR & Design,
with NAME A STAR disclaimed. In that proceeding, applicant
alleges, among other things, that she has priority of use and
that opposers mark is likely to be confused with applicants
alleged mark NAME A STAR.
5
Opposition Nos. 91157178 and 91158299
USPQ2d 1807 (Fed. Cir. 2001), citing H. Marvin Ginn Corp. v.
International Association of Fire Chiefs, Inc., 782 F.2d
987, 228 USPQ 528 (Fed. Cir. 1986); see also, In re Outdoor
Recreation Group, 81 USPQ2d 1392, 1397 (TTAB 2006). The
test for determining whether a mark is generic is its
primary significance to the relevant public. Section 14(3)
of the Act; In re American Fertility Society, 188 F.3d 1341,
51 USPQ2d 1832 (Fed. Cir. 1999); Magic Wand Inc. v. RDB
Inc., 940 F.2d 638, 19 USPQ2d 1551, 1553 (Fed. Cir. 1991).
Opposer bears the burden of establishing that applicants
mark is generic. Magic Wand, 940 F.2d 638, 19 USPQ2d at
1554; Tea Board of India v. Republic of Tea Inc., 80 USPQ2d
1881, 1887 (TTAB 2006). Evidence of the relevant publics
understanding of a term may be obtained from any competent
source, including 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). [E]vidence of competitors use of
particular words as the name of their goods or services is,
of course, persuasive evidence that those words would be
perceived by purchasers as a generic designation for the
goods and services. Continental Airlines Inc. v. United
Air Lines Inc., 53 USPQ2d 1385, 1395 (TTAB 1999).
In this case, applicant seeks registration of her mark
for both gift registry services and printed
6
Opposition Nos. 91157178 and 91158299
publications. While the identification of goods and
services is extremely broad and could encompass many fields,
the evidence clearly establishes, i.e. there is no genuine
issue of material fact, that with respect at least to the
subset of star-naming and registration publications and
services, these goods and services are inextricably
intertwined. Indeed, applicant, opposer and the numerous
third parties shown herein to be involved in the business of
star-registration or star-naming offer essentially the
same thing: the service of registering a star, part and
parcel of which are the goods or fulfillment materials
like registration certificates and books about stars that
star-registration customers receive. For example:
applicants Web site states
Our Standard Name a Star
Package includes a certificate
of star registration
and
When you buy a star name from
Name a Star you can place
your own unique personalized
tribute on your Name a Star
certificate of registration;
Opposers DA-1 and DA-2;
opposers radio advertisement
states we will name a star
after your sweetheart and send
a beautiful gift package;
Opposers Ex. F-1;
the starnamer.net website
states Name a star with us
and enjoy these unique
advantages
in addition to
the star chart
is a free
7
Opposition Nos. 91157178 and 91158299
Star Map software CD
;
Opposers Ex. G-1;
the freenameastar.com
website states Other sites
charge $50 or more to name a
star. With FreeNameAStar.com
you can name a star for free.
You print your own
certificates on your own
printer; Opposers Ex. G-5;
and
the buyastar.net website
states $39.95 Standard Name a
Star Package includes: Name a
Star Certificate without
Wooden Plaque
Star
Foundation Signature Lapel Pin
; Opposers Ex. G-17.
See also, Opposers Ex. CA-42, CA-44. Unsolicited media
reports also make clear that printed publications are
generally part and parcel of star-registration services.
For example:
a January 24, 2006 article in
New River Journal states they
sell you the opportunity to
name a star
Several
successful outfits
will
gladly sell you a bit of prime
celestial real estate
. This
gets you an official-looking
certificate
; Opposers Ex.
H-1;
an article printed from the
forbes.com web site states
At least half a dozen
companies will sell you the
rights to name a star, along
with a handsome official
certificate
; Opposers Ex.
H-2;
8
Opposition Nos. 91157178 and 91158299
A March 6, 2003 article in the
Christian Science Monitor
states There are several
companies who, for a fee, will
name a star after you.
Apparently, you get a nice
certificate and a star map
showing the location of your
very own star; Opposers Ex.
H-14.
Applicant herself states that the star-registration, or
star-naming, concept/format includes both registration
services and associated printed products. Applicants
Response to Motion for Summary Judgment at pp. 3-4.
Therefore, and as we pointed out in the Prior Order, the
evidence establishes that if NAME A STAR is generic for
applicants services, it is also generic for her goods, and
vice versa. Prior Order at p. 13; see, In re Candy Bouquet
International Inc., 73 USPQ2d 1883, 1888 (TTAB 2004); In re
A La Vielle Russie Inc., 60 USPQ2d 1895, 1900 (TTAB 2001);
In re Log Cabin Homes Ltd., 52 USPQ2d 1206 (TTAB 1999).
The evidence establishes the following additional
facts:
(1) The evidence shows that applicant often uses the
phrase name a star in a non-trademark manner, in
particular she offers her customers the ability to name a
star and obtain a registration certificate and other
printed publications pertaining to the naming of the star
and registration of that name.
9
Opposition Nos. 91157178 and 91158299
For example, in her opposition to opposers motion,
applicant makes the following statement:
The Name A Star business originated the
star-registration, or star-naming,
concept/format of: (a) registering
dedication names selected by customers
together with a specific star assigned
to the dedication name, (b) providing
personalized Certificates of
Registration in a portfolio together
with star charts and other printed
material about the assigned star, and
stars and celestial bodies, (c)
providing compilations of the star
dedications in registers.
Response to Opposers Motion pp. 3-4 (emphasis supplied).
While applicant claims that her alleged mark is only
marginally descriptive, id. at p. 10, she also admits that
star-registration or star-naming goods/services involve
stars and (assigned) names. Id. p. 8.
Applicants own advertising uses the phrase name a
star to indicate the specific activity of naming a star.
For example, one of applicants advertisements stated Name
a Star to Honor Someone Special and another was headlined
Name A Star After Someone You Love. Opposers Ex. D-11,
D-15; Applicants Ex. 1. Similarly, applicants website
previously stated How to Name a Star, Name a Star in
the heavens today for that special occasion or person you
know! and Click here to Name a Star!. Opposers Ex. D-2,
D-3, D-6. Despite the use of the TM following certain
uses of Name a Star, the phrase is an integral part of a
10
Opposition Nos. 91157178 and 91158299
larger sentence and it denotes the nature of applicants
services.
(2) Opposer uses name a star in a non-trademark
manner to describe star registration services and related
goods, including through television, radio and national
print advertisements spanning the past 25 years. Prior
Order at pp. 13-14 (identifying relevant evidence filed in
response to applicants motion for summary judgment in
2005).
(3) Opposer uses the mark INTERNATIONAL STAR REGISTRY
NAME A STAR & Design to identify its own goods and services,
which are essentially the same as applicants goods and
services. See, e.g., Opposers Ex. A-63 through A-66.
(4) From 2003-2007, opposer spent on average
approximately $2,000,000 per year on radio advertising
alone. Evidence of opposers advertising, its significant
promotional activities and traffic on its website
demonstrate opposers use of name a star in a non-
trademark manner to describe the nature of its goods and
services. Second Supplemental Affidavit of Peter Rocky
Mosele ¶ 22; see also, Second Supplemental Affidavit of
Michael Hazelrigg ¶¶ 2, 16; cf. Applicants Response to
Opposers Motion at 5-6 (quantifying applicants use of NAME
A STAR).
11
Opposition Nos. 91157178 and 91158299
(5) Numerous third parties have also used name a
star to denote their own star-naming goods and services.
Prior Order at pp. 14-15 (identifying relevant evidence).4
Opposers supplemental evidence submitted in support of its
motion for summary judgment establishes that these non-
trademark third-party uses of name a star have, for the
most part, continued to the present. Opposers Ex. G-1
through G-5, G-7, G-8, and G-12 through G-18.
(6) The phrase name a star is used extensively to
indicate various entities star-naming and registration
goods and services in unsolicited media reports about such
products and services. Prior Order at pp. 15-16
(identifying relevant evidence). Opposers supplemental
evidence establishes additional and continued media uses of
name a star to denote the discussed goods and services.
Opposers Ex. H-1, H-2, H-13, H-14 and H-16 through H-18.
The aforementioned factual findings clearly establish,
i.e., there is no genuine issue of material fact, that the
genus of applicants services is the naming and registration
of stars and the genus of the goods is star-naming
certificates and publications. Name a star is merely the
rearrangement of this genus of goods and services to the
4 While applicant points out that the dedicateastar.com web
site is no longer active, Supplemental Declaration of Tonya S.
Vaughan ¶ 9, applicant does not dispute that the other third
party uses of name a star identified in the Prior Order
continue.
12
Opposition Nos. 91157178 and 91158299
declarative form and it is, thus, legally equivalent to the
identified genus of applicants goods and services.
Additionally, the aforementioned factual findings
clearly establish, i.e., there is no genuine issue of
material fact, that the relevant public understands NAME A
STAR to primarily refer to that genus of goods and
services. In re American Fertility Society, supra.
While applicant claims that there may be more than one
name for these goods and services, that does not detract
from the finding that name a star is one of the generic
names for these goods and services. Continental Airlines,
53 USPQ2d at 1394. Furthermore, while applicant and perhaps
others at times use name a star5 in the manner of a
trademark, that does not mean that the phrase is not
generic, or that genuine issues of material fact remain
about whether the term is generic. Id. at 1394-95.
Finally, while applicant asserts that her competitors
and the medias uses of name a star have been infringing
or improper, and that she intends to challenge their uses if
and when she obtains a federal registration of NAME A STAR,
the fact remains that her competitors and the medias
5 Applicant claims that certain third parties use name a
star as a source identifier, but at least some of the uses upon
which applicant relies are in fact non-trademark uses of the
phrase. Furthermore, even if applicant was correct that all of
the third party uses upon which she relies were of name a star
as a source identifier, these uses are less extensive than the
non-trademark uses cited herein.
13
Opposition Nos. 91157178 and 91158299
widespread uses of name a star in a non-trademark manner
continue, and are more extensive than the uses by applicant.
For all of these reasons, opposers motion for summary
judgment that applicants marks are generic in connection
with the identified goods and services is hereby GRANTED.6
The opposition is therefore sustained.
6 Should applicant ultimately prevail on the issue of
genericness in any appeal, we find that the evidence of
widespread generic use of name a star by opposer, third parties
and the media establish that there are no genuine issues of
material fact that name a star has not acquired distinctiveness
as a mark in connection with applicants goods and services.
See, Continental Airlines, 53 USPQ2d at 1395; see also, In re
Candy Bouquet, 73 USPQ2d at 1889.
14