International Star Registry of Illinois, Ltd. v. Tonya S. Vaughan

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 applicant’s 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

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are not generic for printed publications and novelty gift

registry services, and have become distinctive of applicant’s

goods and services. The Board denied applicant’s 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

applicant’s 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.

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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 Applicant’s claimed own use
of the phrase has been de minimus or
pales in comparison to the Opposer’s
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 Applicant’s
own materials have demonstrated long
spread generic or descriptive uses by
the Applicant herself.

In her response to opposer’s 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 Applicant’s mark does not detract

from the Name A Star mark’s 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

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Opposition Nos. 91157178 and 91158299

their infringements will be dealt with upon the registration

of Applicant’s 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. Roundy’s, 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

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Opposition Nos. 91157178 and 91158299

applicant, and all justifiable inferences are to be drawn in

applicant’s favor. Lloyd’s Food Products, Inc. v. Eli’s,

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, Lloyd’s 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.

Applicant’s Answer to Notice of Opposition ¶¶ 3-5. As a

result, there is no genuine issue that opposer has standing

to oppose registration of applicant’s 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 herein’s 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 opposer’s mark is likely to be confused with applicant’s
alleged mark NAME A STAR.

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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 applicant’s

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 public’s

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

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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:

• applicant’s 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”;
Opposer’s DA-1 and DA-2;

• opposer’s radio advertisement
states “we will name a star
after your sweetheart and send
a beautiful gift package;
Opposer’s 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

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Opposition Nos. 91157178 and 91158299

Star Map software CD …;
Opposer’s 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;” Opposer’s 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
…;” Opposer’s Ex. G-17.

See also, Opposer’s 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 …;” Opposer’s 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 …;” Opposer’s Ex.
H-2;

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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;” Opposer’s Ex.
H-14.

Applicant herself states that “the star-registration, or

star-naming, concept/format” includes both “registration”

services and associated printed products. Applicant’s

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

applicant’s 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.

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Opposition Nos. 91157178 and 91158299

For example, in her opposition to opposer’s 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 Opposer’s 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.

Applicant’s own advertising uses the phrase “name a

star” to indicate the specific activity of “naming a star.”

For example, one of applicant’s advertisements stated “Name

a Star to Honor Someone Special” and another was headlined

“Name A Star After Someone You Love.” Opposer’s Ex. D-11,

D-15; Applicant’s Ex. 1. Similarly, applicant’s 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!.” Opposer’s 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

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Opposition Nos. 91157178 and 91158299

larger sentence and it denotes the nature of applicant’s

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 applicant’s 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 applicant’s goods and

services. See, e.g., Opposer’s 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 opposer’s advertising, its significant

promotional activities and traffic on its website

demonstrate opposer’s 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. Applicant’s Response to

Opposer’s Motion at 5-6 (quantifying applicant’s use of NAME

A STAR).

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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

Opposer’s 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. Opposer’s 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). Opposer’s supplemental

evidence establishes additional and continued media uses of

“name a star” to denote the discussed goods and services.

Opposer’s 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 applicant’s 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.

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Opposition Nos. 91157178 and 91158299

declarative form and it is, thus, legally equivalent to the

identified genus of applicant’s 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 star”5 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 media’s 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 media’s

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.

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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, opposer’s motion for summary

judgment that applicant’s 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 applicant’s goods and services.
See, Continental Airlines, 53 USPQ2d at 1395; see also, In re
Candy Bouquet, 73 USPQ2d at 1889.

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