This Opinion is not a
`Precedent of the TTAB
`
`Mailed: August 7, 2015
`
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____
`
`Trademark Trial and Appeal Board
`_____
`
`In re Big Apple Performing Arts, Inc.
`_____
`
`Serial Nos. 85781180
`and 85781188
`_____
`
`Phillip A. Rosenberg and Jason M. Vogel of Kilpatrick Townsend & Stockton LLP
`for Big Apple Performing Arts, Inc.
`
`
`Odessa Bibbins, Trademark Examining Attorney, Law Office 118,
`Thomas G. Howell, Managing Attorney.
`_____
`
`
`Before Seeherman, Lykos and Goodman,
`Administrative Trademark Judges.
`
`
`Opinion by Seeherman, Administrative Trademark Judge:
`On November 16, 2012, Big Apple Performing Arts, Inc. (“Applicant”) filed two
`
`applications to register YOUTH PRIDE CHORUS, one in standard characters1 and
`
`one in the stylized form shown below:2
`
`
`1 Serial No. 85781180 asserting first use and first use in commerce as early as April 30,
`2003.
`2 Serial No. 85781188 asserting first use and first use in commerce as early as
`September 30, 2008.
`
`
`
`

`
`Serial Nos. 85781180 and 85781188
`
`
`
`The stylized mark is described as follows:
`
`The mark consists of the wording “YOUTH PRIDE CHORUS” with the
`term “YOUTH” in lower case letters, depicted above the term “PRIDE”
`with the letters “PRIDE” in all caps and the letter “I” in lower case, all
`above the word “CHORUS” which is depicted all in lower case letters.
`
`
`Color is not claimed as a feature of the mark.
`
`Both applications contain a disclaimer of CHORUS, and both have the following
`
`identification of services:
`
`Entertainment services, namely, provision of live music concerts in the
`nature of chorus singing, production of shows, namely, choral
`performances; educational services, namely, providing educational
`speakers and live programs in the field of issues affecting gay, lesbian,
`bi sexual and transgendered communities; teacher training in the field
`of performing arts programs; consulting in the field of performing arts
`program design and development. (Class 41).
`
`
`The Examining Attorney refused registration of both marks pursuant to Section
`
`2(e)(1) of the Trademark Act, 15 U.S.C. § 1052(e)(1), on the ground that both of
`
`Applicant’s marks are merely descriptive of its services. The Examining Attorney
`
`also refused to accept Applicant’s alternative claim that the marks have acquired
`
`distinctiveness, and are therefore registrable under Section 2(f) of the Act, stating
`
`that the marks are so highly descriptive that Applicant did not meet its burden of
`
`showing acquired distinctiveness.
`
`- 2 -
`
`

`
`Serial Nos. 85781180 and 85781188
`
`I. Preliminary Matters
`
`A. After Applicant filed its appeal briefs, it filed a motion to consolidate the two
`
`appeals. Because the appeals involve nearly identical marks and identical services,
`
`as well as the same issues and evidence, the Board granted the motion. See TMBP §
`
`1214 and cases cited therein at Note 1. Accordingly, we decide both appeals in this
`
`decision. References to page numbers of Office actions and responses are to the
`
`filings in Serial No. 85781180 unless otherwise specified.
`
`B. We note that Applicant has submitted over 350 pages of attachments to each
`
`of its appeal briefs. Based on statements made by Applicant in its briefs, it appears
`
`that these are exhibits that it previously made of record during prosecution of the
`
`applications. However, we will not examine the attachments to determine whether
`
`or not they are properly of record. If they are of record, we have reviewed the
`
`material as part of the application files; if they are not properly of record, we give
`
`them no consideration. See Trademark Rule 2.142(d). See also, In re Thor Tech Inc.,
`
`85 USPQ2d 1474, 1475 n.3 (TTAB 2007) (attaching evidence from record to briefs is
`
`duplicative and is unnecessary).
`
`C. In its consolidated reply brief Applicant takes issue with the Examining
`
`Attorney’s reliance on an entry from Wikipedia, citing In re Carrier Consulting
`
`Grp., 84 USPQ2d 1028 (TTAB 2007), for the proposition that any information
`
`obtained from Wikipedia should be treated as having limited probative value.
`
`Applicant also points to a statement in the Trademark Manual of Examining
`
`Procedure (“TMEP”) to essentially assert that any evidence from Wikipedia must be
`
`- 3 -
`
`

`
`Serial Nos. 85781180 and 85781188
`
`corroborated.3 Applicant’s contentions overstate the problem with evidence from
`
`Wikipedia. “The Board gives consideration to evidence taken from Wikipedia,
`
`bearing in mind the limitations inherent in this reference work, so long as the non-
`
`offering party has an opportunity to rebut the evidence by submitting other
`
`evidence that may call its accuracy into question.” In re Swatch Grp. Mgmt. Servs.
`
`AG, 110 USPQ2d 1751, 1754, n.2 (TTAB 2014). As was the case in Swatch, here the
`
`Examining Attorney submitted the Wikipedia article with the first Office action,
`
`(March 13, 2013, p. 4), so if Applicant believed it was inaccurate it had multiple
`
`opportunities to rebut it (response filed September 13, 2013; response filed April 7,
`
`2014; request for reconsideration filed November 7, 2014). Applicant did not do so.
`
`In fact, ironically, Applicant has relied on Wikipedia entries on other topics. We
`
`further note that the Wikipedia article submitted by the Examining Attorney lists
`
`quite a number of sources in support of the statements made in the article,
`
`including the statements relevant to the issue involved in this appeal. Because
`
`Applicant has not shown that the Wikipedia article is inaccurate, we have accorded
`
`it the appropriate probative value.
`
`D. During prosecution, Applicant stated that its claim of acquired distinctiveness
`
`was made in the alternative, that is, it was seeking registration under Section 2(f)
`
`
`3 “If the examining attorney relies upon Wikipedia evidence and makes it of record, then
`additional supportive and corroborative evidence from other sources should also be made of
`record, especially when issuing final actions.” TMEP § 710.01(b) (July 2015). We do not
`regard this directive to examining attorneys in connection with the examination of
`applications as preventing the Board from considering Wikipedia evidence even if the
`examining attorney has not submitted corroborative evidence from other sources. We also
`point out that in the present case the Examining Attorney has, as detailed infra, submitted
`corroborating and supporting evidence.
`
`- 4 -
`
`

`
`Serial Nos. 85781180 and 85781188
`
`only if the Examining Attorney and ultimately the Board did not agree with its
`
`position that its marks are inherently distinctive. However, in its briefs and
`
`consolidated reply brief Applicant presented no arguments against the mere
`
`descriptiveness refusal. Therefore, we consider Applicant to have waived its claim
`
`for registration under Section 2(f) as being in the alternative, and view Applicant as
`
`now seeking registration only pursuant to Section 2(f). Accordingly, the question of
`
`whether the marks are inherently distinctive is no longer before us, and the only
`
`issue currently on appeal is whether or not Applicant has shown that its marks
`
`have acquired distinctiveness. However, in determining whether the marks have
`
`acquired distinctiveness, we must still consider the evidence on the issue of mere
`
`descriptiveness, since the degree of descriptiveness has an impact on a showing of
`
`acquired distinctiveness.
`
`II. Statutory Refusal
`
`A term is merely descriptive if it immediately conveys knowledge of a significant
`
`quality, characteristic, function, feature or purpose of the goods or services it
`
`identifies. See, e.g., In re Chamber of Commerce of the U.S., 675 F.3d 1297, 102
`
`USPQ2d 1217, 1219 (Fed. Cir. 2012); In re Gyulay, 820 F.2d 1216, 3 USPQ2d 1009,
`
`1009 (Fed. Cir. 1987). If the mark is descriptive of any of the goods or services for
`
`which registration is sought, it is proper to refuse registration as to the entire class.
`
`In re Analog Devices Inc., 6 USPQ2d 1808 (TTAB 1988), aff’d without pub. op., 871
`
`F.2d 1097, 10 USPQ2d 1879 (Fed. Cir. 1989). Although Section 2(e)(1) prohibits the
`
`registration of a merely descriptive mark, an applicant may overcome such a bar if
`
`- 5 -
`
`

`
`Serial Nos. 85781180 and 85781188
`
`the applicant can show that the mark has become distinctive of the applicant’s
`
`goods or services.4 The Director may accept as prima facie evidence that the mark
`
`has become distinctive proof of substantially exclusive and continuous use of the
`
`term as a mark by the applicant in commerce for the five years before the date on
`
`which the claim of distinctiveness is made. Section 2(f), 15 U.S.C. § 1052(f).
`
`However, it depends on the degree of descriptiveness of the mark whether an
`
`affidavit or declaration of five years use will be acceptable to show acquired
`
`distinctiveness. The greater the degree of descriptiveness the term has, the heavier
`
`the burden to prove it has acquired distinctiveness. Yamaha Int’l Corp. v. Hoshino
`
`Gakki Co., 840 F.2d 1572, 6 USPQ2d 1001 (Fed. Cir. 1988).
`
`The Examining Attorney asserts that YOUTH PRIDE CHORUS is merely
`
`descriptive of Applicant’s services. Specifically, she contends that “youth pride” is an
`
`extension of the gay pride and LGBT5 movement, and “chorus” is a body of singers
`
`who perform choral compositions, and that when these words are combined in the
`
`mark YOUTH PRIDE CHORUS, the mark as a whole describes the identified
`
`services, which is directed to the LGBT community and features chorus singing. In
`
`support of her position, the Examining Attorney made of record a number of articles
`
`and entries referencing “youth pride,” including the following:
`
`
`4 Section 3 of the Trademark Act makes the provisions of Section 2 applicable to service
`marks.
`5 LGBT stands for “lesbian, gay, bisexual and transgender.” Some mentions add I, Q and A
`to this initialism; I stands for “intersexual,” Q stands for “queer” or “questioning” and A
`stands for “allies.” For ease of reference, we will use LGBT in this opinion to refer to the
`entire community, which includes “allies,” i.e., those who support the people and aims of the
`community.
`
`- 6 -
`
`

`
`Serial Nos. 85781180 and 85781188
`
`An entry for “LGBT culture” in Wikipedia,6 with the section title
`“Youth culture,” three paragraphs of which are shown below:
`
`
`Youth Pride, an extension of the gay pride and LGBT social
`movements, promotes equality amongst young members (usually above
`the age of consent) of the lesbian, gay, bisexual, transgender, intersex
`and questioning (LGBTIQ) community. The movement exists in many
`countries and focuses on festivals and parades, enabling many
`LGBTIQ youth to network, communicate, and celebrate their gender
`and sexual identities. Youth Pride organizers also point to the value in
`building community and supporting young people….
`
`…prompted the Massachusetts Governor’s Commission on Gay and
`Lesbian Youth to begin an annual Gay-Straight Youth Pride
`observance in 1995. In 1997 the nonprofit Youth Pride Alliance, a
`coalition of 25 youth-support and advocacy groups, was founded to hold
`an annual youth-pride event in Washington, D.C. …In 1999, the first
`annual Vermont Youth Pride Day was held. As of 2009 it is the largest
`queer and allied-youth event in Vermont….
`
`In 2004 the San Diego chapter of Gay, Lesbian and Straight Education
`Network (GLSEN) worked with San Diego Youth Pride coordinators to
`organize a Day of Silence throughout the county. In 2005, Decatur
`(Georgia) Youth Pride participated in a counter-demonstration ….
`…In 2008 Chicago’s Youth Pride Center, primarily serving “LGBT
`youth of color”…. In 2009, the Utah Pride Center held an event to
`coincide with Youth Pride Walk 2009, a “cross-country walk … to draw
`attention to the problems faced by homeless LGBT youth.” In August
`2010 the first Hollywood Youth Pride was held, focusing on the “large
`number of homeless LGBT youth….”
`___
`
`
`NoVa Youth Pride exists to provide resources and support to Lesbian,
`Gay, Bisexual, Transgender, Queer, and Questioning students from the
`Northern Virginia area.
`http://hovayouthpride.tumblr.com7
`___
`
`
`D.C.’s Youth Pride marks a second year back in Dupont Circle
`(subtitle)
`
`
`6 March 13, 2013 Office action, p. 4.
`7 March 13, 2013 Office action, p. 5.
`
`- 7 -
`
`

`
`Serial Nos. 85781180 and 85781188
`
`D.C. 16th annual Youth Pride celebration went ahead as planned
`Saturday, April 28, with periods of cloudiness and sunshine….
`
`The Dupont Circle event, which featured booths from various LGBT
`and ally organizations … was organized by Youth Pride Alliance, a
`nonprofit organization for “Lesbian, Gay, Bisexual, Transgender,
`Queer, Questioning, and Ally youth empowerment.”
`Metro Weekly, published May 3, 20128
`___
`
`
`Massachusetts Youth Pride is a one-day annual festival dedicated to
`celebrating LGBTQ youth in the Commonwealth of Massachusetts.
`www.bostonpride.org9
`
`___
`
`
`GLSEN hosts annual Youth Pride Dance for LGBTQ teens (title)
`Seattle Parks and Recreation and the Gay, Lesbian, and Straight
`Education Network (GLSEN) of Washington State will hold a Youth
`Pride Dance at Yesler Community Center from 8-11 p.m. on Friday,
`June 22…. The Youth Pride Dance honors the theme by allowing youth
`a space to celebrate ….
`Seattle.gov10
`
`Applicant’s Youth Pride Chorus “harnesses the power of the performing arts to
`
`
`
`galvanize lesbian, gay, bisexual, transgender and straight young people ages 13-22
`
`as agents of change.” Declaration of Peter Criswell, dated September 12, 2013
`
`(hereafter Criswell dec. I), ¶ 2.11 One purpose of the Youth Pride Chorus is to fight
`
`homophobia. Id. Further, Applicant’s educational services are in the field of issues
`
`affecting gay, lesbian, bisexual and transgendered communities. Thus, it is accurate
`
`to say that Applicant serves the interests of those in the LGBT community.
`
`
`8 March 13, 2013 Office action, p. 6.
`9 March 13, 2013 Office action, p. 8.
`10 March 13, 2013 Office action, p. 9.
`11 September 13, 2013 response, p. 123.
`
`- 8 -
`
`

`
`Serial Nos. 85781180 and 85781188
`
`Applicant has acknowledged that many LGBT organizations “have adopted the
`
`expression ‘Youth Pride’ as a mode of empowerment.” Response filed November 7,
`
`2014, p. 5. In fact, Applicant has submitted, as Exhibit 6 to its September 13, 2013
`
`response, pp. 45-122, evidence of a large number of third parties that have adopted
`
`marks or names with include the term “Youth Pride.” See, for example, Youth Pride,
`
`an organization which “protects, unites, and dignifies the lives of gay, lesbian,
`
`bisexual, transgender, queer and questioning youth and young adults,” pp. 60-63;
`
`YouthPride Alliance, which serves LGBT youth and hosts programs like Youth
`
`Pride Day, pp. 65-68; Youth Pride Coalition, which strives “to increase awareness
`
`toward LGBTQQ youth issues.” pp. 70-73; and Youth Pride Center, “an organization
`
`geared towards helping LGBTIQ Black youth.” We realize that the services
`
`provided by these third parties are not technically the same as those Applicant has
`
`identified in its applications. However, this evidence is relevant to show that the
`
`term “youth pride” has a recognized meaning in the LGBT community.
`
`As for the word “Chorus,” the Examining Attorney required a disclaimer of this
`
`term because
`
`it
`
`is generic
`
`for Applicant’s
`
`identified services. Applicant
`
`acknowledged this by submitting the required disclaimer.12 Applicant has also
`
`asserted that “youth chorus” is the generic term for a choral group that provides the
`
`type of entertainment services rendered by Applicant, and has submitted evidence
`
`
`12 The Examining Attorney also made of record a dictionary definition of “chorus”: “A body
`of singers who perform choral compositions, usually having more than one singer for each
`part.” Houghton Mifflin, in Yahoo! Education, submitted with March 13, 2013 Office action,
`p. 10.
`
`- 9 -
`
`

`
`Serial Nos. 85781180 and 85781188
`
`to this effect; clearly “chorus” would be the generic term for any choral
`
`performances, whether the group is composed of “youth” or people of any age.
`
`In view of the foregoing evidence, we find that the term YOUTH PRIDE
`
`CHORUS is highly descriptive of Applicant’s identified services. The term YOUTH
`
`PRIDE is a recognized term for the consumers of the services, that is, to the
`
`members of the LGBT community, and CHORUS is a generic term for concerts in
`
`the nature of chorus singing, and choral performances. Together, YOUTH PRIDE
`
`CHORUS would be understood by the LGBT community as a chorus that
`
`exemplifies or fosters youth pride, and that this is a major characteristic and
`
`purpose of Applicant’s services. We understand Applicant’s point that “youth pride
`
`chorus” is not found as a dictionary term. However, the Examining Attorney has not
`
`asserted that Applicant’s mark in its entirety, YOUTH PRIDE CHORUS, is generic,
`
`and therefore the fact that it is not found in the dictionary does not alter our
`
`conclusion that YOUTH PRIDE CHORUS, whether in standard characters or in the
`
`stylized form for which Applicant also seeks registration in Application Serial No.
`
`85781188, is highly descriptive.
`
`This case presents a somewhat unusual situation, because although the mark is
`
`highly descriptive, it would be highly descriptive only to those who are connected
`
`with the LGBT community. Based on the evidence of record, it is those consumers
`
`who would understand the specific meaning of “youth pride.” Therefore, although
`
`Applicant, in order to demonstrate that its marks are registrable under Section 2(f),
`
`- 10 -
`
`

`
`Serial Nos. 85781180 and 85781188
`
`has a heavy burden to prove that its marks have acquired distinctiveness, it must
`
`do so with respect to the LGBT community, the consumers of the services.
`
`Applicant has submitted two declarations of Peter Criswell, its executive
`
`director (Criswell I and II) and declarations by Robin Godfrey, Executive Director
`
`for the Gay and Lesbian Association of Choruses (GALA); Elven Hickmon, General
`
`Manager for PerformOUTKC, and Christopher Verdugo, Executive Director for the
`
`Gay Men’s Chorus of Los Angeles.
`
`Mr. Criswell averred in his first declaration13 that Youth Pride Chorus was
`
`founded in 2003, and is a program of The New York City Gay Men’s Chorus and the
`
`Lesbian, Gay, Bisexual & Transgender Community Center. ¶ 2. Among the more
`
`significant evidence submitted by Applicant is the following:
`
`Its chorus members have performed under the YOUTH PRIDE
`CHORUS mark at nationally attended events, including the GLAAD
`Media Awards, GLSEN’s Respect Awards, Broadway Backwards at
`Lincoln Center, and with Cyndi Lauper on her True Colors Tour and
`her Home for the Holidays concert benefitting homeless LGBT youth,
`¶ 3.
`
`Its initial YOUTH PRIDE CHORUS concert at Carnegie Hall sold
`approximately 2,000 tickets, ¶ 4.
`
`It has performed two YOUTH PRIDE CHORUS concerts per year for
`the last 10 years, with 5000 palm cards distributed for each, and each
`concert selling 300 tickets, id.; in addition, it has performed at various
`other venues, including Carnegie Hall in 200614 and 2008.15
`
`
`
`13 Filed September 13, 2013, pp. 123-129, with exhibits A through D, from p. 130 through
`p. 320.
`14 “New York Times,” December 8, 2006, submitted as an exhibit to Criswell I dec.,
`Response filed September 13, 2013, p. 152.
`15 “Home News Tribune,” May 23, 2008, Response filed September 13, 2013, p. 156.
`
`- 11 -
`
`

`
`Serial Nos. 85781180 and 85781188
`
`It has performed YOUTH PRIDE CHORUS concerts at the Gay and
`Lesbian Association of Choruses (GALA) quadrennial Festival in 2008
`and 2012, reaching 4000 consumers from different cities across the
`United States. Criswell dec. I, ¶ 4. GALA leads the North American
`LGBT choral movement, and the Festival is GALA’s signature event
`which brings together over 130 ensembles and 6000 singers for the
`world’s largest LGBT performing arts event. Dec. of Robin Godfrey,
`¶ 3.16
`
`There is a Youtube YOUTH PRIDE CHORUS Channel which received
`over 126,000 views between 2009-2013. Criswell dec. I, ¶ 5.
`
`“Out” magazine, December 2003 feature article about the formation of
`the Youth Pride Chorus, their appearance at the New York City Gay
`Men’s Chorus annual pride concert at Carnegie Hall in 2003, and
`future performance plans.17
`
`“The Villager,” July 19-25, 2006 article about the Young Pride
`Chorus.18
`
`“Now Chelsea,” self-described as “The Weekly Newspaper of Chelsea,”
`December 1-7, 2006, article entitled “Pride Chorus ready to rock too,”
`and is about the Youth Pride Chorus and a rock ‘n roll program to
`usher in the holidays.19
`
`CBS News, October 20, 2010 posting on website www.cbsnews.com,
`with article about “It Gets Better” project regarding gay teens; article
`reports on video in which members of Youth Pride Chorus both talk
`about being bullied and then sing “Ooh Child.”20
`
`“Next Magazine,” February 29, 2012 article entitled “Youth Pride
`Chorus Brings Audience To Tears at New York Gay Men’s Chorus’
`Annual Benefit, Harmony,” about a benefit concert at which the Youth
`Pride Chorus entertained. Article reported in some detail on the
`chorus’s performance, and included a photo of the Youth Pride
`Chorus.21
`
`16 Response filed November 7, 2014, p. 8.
`17 Exhibit C to Criswell dec. I, Response filed September 13, 2013, p. 201-02.
`18 Response filed September 13, 2013, p. 231-34.
`19 Response filed September 13, 2013, p. 235-36.
`20 Response filed September 13, 2013, p. 258-264.
`21 Response filed September 13, 2013, p. 282-83.
`
`- 12 -
`
`

`
`Serial Nos. 85781180 and 85781188
`
`
`We must emphasize that the kind and amount of evidence necessary to establish
`
`that a mark has acquired distinctiveness in relation to goods or services depends on
`
`the nature of the mark and the circumstances surrounding the use of the mark.
`
`Yamaha Int’l Corp. v. Hoshino Gakki Co., 6 USPQ2d at 1008; Roux Labs., Inc. v.
`
`Clairol Inc., 427 F.2d 823, 829, 166 USPQ 34, 39 (CCPA 1970); In re Hehr Mfg. Co.,
`
`279 F.2d 526, 126 USPQ 381, 383 (CCPA 1960). In this case, the Youth Pride
`
`Chorus is not a normal commercial entity, but a program of the New York City Gay
`
`Men’s Chorus and the Lesbian, Gay, Bisexual & Transgender Community Center.
`
`Its purpose is to help fight homophobia and bullying, and to help teens through the
`
`avenue of entertainment and education services. As a result, many of the normal
`
`indicia of acquired distinctiveness that we consider for consumer products, such as
`
`sales and advertising expenditures, do not apply to this situation.
`
`Further, as we have said, Applicant must show that its marks have acquired
`
`distinctiveness for the members of the LGBT community, since it is only to that
`
`community that the marks would be understood as descriptive of Applicant’s
`
`services. We find that the evidence submitted by Applicant is sufficient to show that
`
`the marks have acquired distinctiveness for these consumers. For more than ten
`
`years the members of the chorus have given numerous performances under the
`
`mark YOUTH PRIDE CHORUS at events, including major national events, that are
`
`of interest to members of the LGBT community. The community would be aware of
`
`the performances by being in the audience for such performances, or by word-of-
`
`mouth from those in attendance, or by watching or reading about the events and the
`
`- 13 -
`
`

`
`Serial Nos. 85781180 and 85781188
`
`performances. We acknowledge that most of the evidence relates to the phrase
`
`YOUTH PRIDE CHORUS, rather than to the mark in stylized form. However,
`
`because it is the words that are highly descriptive, the evidence showing that the
`
`words have acquired distinctiveness is sufficient for us to find that the stylized
`
`version of the mark has also acquired distinctiveness.
`
`We reiterate that we
`
`find the evidence sufficient to show acquired
`
`distinctiveness in the special circumstances of this case, and that such evidence
`
`would not necessarily be persuasive if the consumers of the goods or services were
`
`the public as a whole.
`
`Decision: We find that Applicant’s marks YOUTH PRIDE CHORUS in
`
`standard characters and in stylized form are registrable pursuant to Section 2(f) of
`
`the Trademark Act, and therefore the refusals to register these marks as merely
`
`descriptive is reversed.
`
`
`
`- 14 -