Under the Paperwork Reduction Act of 1995 no persons are required to respond to a collection of information unless it displays a valid OMB control number.
`PTO Form 1960 (Rev 10/2011)
`
`OMB No. 0651-0050 (Exp 09/20/2020)
`
`Request for Reconsideration after Final Action
`
`Input Field
`
`SERIAL NUMBER
`
`LAW OFFICE ASSIGNED
`
`MARK SECTION
`
`MARK
`
`LITERAL ELEMENT
`
`STANDARD CHARACTERS
`
`USPTO-GENERATED IMAGE
`
`MARK STATEMENT
`
`ARGUMENT(S)
`
`The table below presents the data as entered.
`
`Entered
`
`87254643
`
`LAW OFFICE 104
`
`https://tmng-al.uspto.gov/resting2/api/img/87254643/large
`
`SALARY.COM
`
`YES
`
`YES
`
`The mark consists of standard characters, without claim to any particular font style,
`size or color.
`
`Applicant previously owned, by assignment, a registration for the word mark SALARY.COM® which issued on
`February 2, 2010 under Registration No. 3744781 claiming first use since August 1, 2000 for providing “online
`non-
`downloadable software for enabling user access to data and services relating to employee compensation and performance ”
`(the “Registration”). That Registration issued   on the Principal Register under Section 2(f) after the then owner, Salary.com,
`Inc., successfully argued with supporting evidence that the mark had acquired distinctiveness by virtue of the fact that
`(a)
`prospective and actual purchasers in the relevant market recognized SALARY.COM as a trademark; (b) the SALARY.COM
`mark had received extensive publicity; (c) the Applicant had extensively invested in promoting and advertising the mark as an
`indicator of source; (d) the sales of the SALARY.COM service and the size of the Applicant were significant; (e)
`the
`SALARY.COM services had received extensive favorable recognition and acceptance; (f) the mark had been in continuous use
`over a period exceeding six and one-half years; and (g) to the extent the examiner had any doubt on the question
`of
`descriptiveness, the issue must resolved in the Applicant’s favor. Applicant Salary.com, LLC acquired that Registration by
`assignment on December 21, 2015 as evidenced by the document submitted with its Response to Office Action filed August
`17, 2017 in connection with the present application. Through an inadvertent oversight, Applicant missed the deadlines
`for
`filing its Section 8 Affidavit of Continued Use for the Registration and it was cancelled on September 9, 2016. At no time was
`use of the SALARY.COM mark discontinued.
`
`PREVIOUSLY SUBMITTED EVIDENCE AND ARGUMENTS
`
`Applicant submits herewith and incorporates herein by reference the evidence and arguments that were submitted to the
`Trademark Office by its predecessor-in-interest on March 27, 2007 and that were accepted as sufficient to establish at that time
`that the mark SALARY.COM had acquired distinctiveness under Section 2(f).
`
`1.
`
`The SALARY.COM Mark Has Acquired Secondary Meaning Because Prospective and Actual Purchasers in the Relevant
`Market Recognize SALARY.COM as a Trademark
`
`Secondary meaning is achieved if a significant number of prospective purchasers in the relevant market
`
` 
` 
` 
` 
`

`

`trademark
`recognize a symbol as a trademark.  The high level of recognition in the marketplace of SALARY.COM as a
`in 2007 is demonstrated by  Exhibit A, the MyMetrix Media Trend Report for the period August 2005 through October 2006. It
`shows that the SALARY.COM service was at that time ranked tenth out of 176 in total traffic of career resources sites on the
`Internet in October 2006, with almost 27 million total visits from August 2005 through October 2006. The MyMetrix Key
`Measures Report for February 2007 shows that the SALARY.COM service increased its rank to seventh in total traffic of
`career resources sites on the Internet with over 1.4 million unique visitors per month.
`
`in
`The high level of market recognition of the mark in 2007 is further evidenced by information provided
`the Affidavit of the then Chief Marketing Officer of Salary.com, Inc. attached hereto as  Exhibit B (the “Applicant Affidavit”),
`which attests to the following:
`
`The Company in 2007 had approximately 555,000 subscribers to its various SALARY.COM-branded newsletters.
`
`The Company’s consumer-facing SALARY.COM-branded site at that time had generated over 1.4 million unique
`visitors per month and syndicated its content to over 500 partners comprising a network of over 2,000 sites
`including
`AOL, Yahoo and Monster.com.  The total Salary.com network generated over three million unique visitors per month as
`of March 2007.
`
`The Company had more than 30,000 paying subscribers for its combined services in 2007.
`
`In 2007, nearly 1,900 enterprise customers depended on SALARY.COM software products, with approximately 18% of
`those ranked in the Fortune 1000.
`
`The Company’s small and medium sized business offerings had over 2,000 paying subscribers and over
`registered customers in 2007.
`
`31,000
`
`The SALARY.COM Salary Wizard and related content was syndicated in 2007 to over 500 distinct partners representing
`more than 2,000 partner websites.
`
`Evidence of the association of the SALARY.COM mark with the Applicant’s services was further evidenced by
`the evidence provided in the affidavits attached hereto as  Exhibit C by Patrick Berry, Director of Compensation of
`UnitedHealth Group, Inc., and Chad Genac, the Compensation Manager for a large public company with 2006 sales in excess
`of $5.5 billion, respectively, each of whom attests to the fact that his company associates the SALARY.COM mark with the
`Applicant.
`
`Given the high level of recognition in the marketplace of SALARY.COM as a trademark of the Applicant, it is evident
`that the mark had acquired secondary meaning as early as 2007.
`
`1.
`
`The SALARY.COM Mark Has Acquired Secondary Meaning Because of the Extensive Publicity It Has Received
`
`under
`supporting registration
`evidence
`relevant
`is
`to a mark in third party publications
`References
`Section 2(f).   See   McCarthy, § 15:44 at 15-63 (“. . . it might be said of proving consumer association, that ‘any publicity is
`good publicity.’”).  Due
`in large part to the extensive investment the Applicant has made in marketing, advertising and public
`relations (as discussed below),
`  numerous articles in third-party publications   discuss or cite the SALARY.COM
`service, demonstrating that the SALARY.COM mark had acquired secondary meaning at least as early as 2007.  For
`example, in 2006 the mark generated at least 43 million print impressions and 50 million broadcast impressions. With
`local affiliate coverage it is likely that the broadcast impressions are at least 50% higher than the foregoing
`figures.
`From January of 2005 to August 2007,
`the mark generated at
`least 65 million print
`impressions and 61 million
`broadcast impressions. The mark achieved 1,455 distinct print placements from January of 2005 to August 2017. This
`
` 
` 
` 
` 
` 
` 
`

`

`per
`means that for 92 weeks the mark had received an average of 16 print placements per week or three stories
`also
`day.  The Applicant’s
`initial public offering of its common stock in February 2007 under the Salary.com name
`the
`generated extensive publicity for the SALARY.COM mark and further
`linked the SALARY.COM mark with
`products and services provided by the Applicant.  For
`example, a Google search for “SALARY.COM” and “initial
`public offering” in 2007 resulted in over 10,000 hits (See  Exhibit D).
`
`By 2007, the SALARY.COM mark appeared in virtually all major newspapers and national broadcast outlets. For
`example, the coverage appearing as a result of the Applicant’s then Mother’s Day public relations initiative alone included
`the following newspapers and broadcast outlets (where applicable accompanied by the number of readers or viewers of
`the
`newspaper or broadcast outlet):
`
`ABC News  7.3 million
`All Headline News
`Arizona Daily Star   101K
`Asbury Park Press  75K
`Atlanta Journal Constitution  382K
`Benefitnews.com
`Boston Globe (2 articles)  450K X 2 stories
`Cape Times, South Africa
`CBS News   7.4 million
`Chicago Sun Times   484K
`Christian Science Monitor  83K
`Cleveland Plain Dealer  365K
`CNN Headline News  431K
`CNN International
`CNN Live Today
`CNNMoney.com   214K
`CRI, China
`Daily Press, VA
`Daily Record
`Detroit News   227K
`Family in Focus
`Financial Express, India
`FOX News  820K
`Fresno Bee   183K
`Gannett Newswire
`Globe and Mail, Canada  309K
`Greater Milwaukee Today
`Guardian Unlimited (UK)
`Hartford Courant  185K
`Independent Online, South Africa
`Indianapolis Star  249K
`International Herald Tribune
`Investors’ Business Daily  276K
`Kansas City Star (2 articles)  267 X 2
`Lansing State Journal  75K
`Los Angeles Daily News  178K
`Monterey County Herald  34K
`Motley Fool  3.8 Million
`MSNBC  242K
`Nashua Telegraph  27K
`New York Post  652K
`NorthJersey.com  277K
`NPR Morning Edition  13 million
`
` 
` 
`

`

`Oregonian   334K
`Orlando Sentinel   257K
`Parents.com  324K
`PBS Nightly Business Report
`Reuters  5.4 million
`Salem News  36K
`Scripps Howard News Service
`Seattle Times  231K
`Shreveport Times  63K
`SHRM Magazine  333K monthly visits
`Times of India  7 million
`Today Show   6 million
`Toronto Star  640K
`United Press International  1.0 million
`US News and World Report  2 million
`USA Today (2 articles)  2.1 million X 2
`Ventura County Star  90K
`Wall Street Journal  2.1 million
`Washington Post  733K
`
`at
`the SALARY.COM “Salary Value Index” aimed
`Another of the Applicant’s public relations initiatives,
`national media with a focus on the “best and worst” U.S. cities based on cost-of-living and average salaries in each
`city, also resulted in widespread coverage, with placements in broadcast on ABC-TV’s Good Morning America,
`CNN, MSNBC, BusinessWeek TV, Bloomberg TV and several hundred local television stations around the country.
`In
`addition, several high profile articles appeared in  Reuters, Associated Press, Dow Jones, New York Times  and more than 100
`newspapers around the country. CNN and Money Magazine columnist Jeanne Sahadi wrote a story about the SALARY.COM
`Salary Value Index that has been widely spread among bloggers.
`
`In another example, the Applicant’s public relations team arranged for a Salary.com executive to talk with a reporter at
`the Associated Press for an article on “How to Ask for Pay Raise.” The resulting story prominently featured
`the
`SALARY.COM mark and appeared in syndication in more than 100 newspapers and online sites.
`
`together with America Online, published the SALARY.COM
`the Applicant,
`Additionally, during 2005-2006,
`“Wasted Time at Work” survey. Each survey resulted in hundreds of stories.  These
`surveys have an
`unusual
`persistence in the media – more than a year after the first survey was released the story was still being cited in media
`stories.  A blogger wrote a short piece about the first release and 2,593 other bloggers linked to this piece.  A Google
`search then for “SALARY.COM and wasting time and 2.09 hours” resulted in 674 hits (See  Exhibit E).
`
`In addition, during year-and-half prior to the August 2017 response filing, SALARY.COM appeared on:
`
`Fox News Live
`The View
`CNN Sunday Morning
`Countdown with Keith Olberman
`Good Morning America
`
`In addition, SALARY.COM had been included in 177 newspaper editorials and in opinion pieces by columnists
`that appeared in 355 newspapers. The mark also appeared in Reuters, Business Week, New York Times, Inc., Charlotte
`Observer, Forbes, Fortune, NPR, Baltimore Sun, Entrepreneur, “Dear Abby,” U.S. News and World Report,
`and
`Associated Press. For a small sampling of the articles during this time referring to SALARY.COM, see the
`summary
`and the articles attached hereto as  Exhibit F. 
`
` 
` 
` 
` 
` 
` 
`

`

`national
`if not all, of the articles and mentions referred to above were available on a
`that most,
`The fact
`national
`the
`fact
`that
`the mark has
`acquired secondary meaning,
`since
`“[w]ith
`emphasizes
`further
`level,
`advertising, secondary meaning in an initially non-distinctive mark can be established much more quickly than
`in
`the old days of limited geographical markets and limited advertising.”  
`
`Id. § 15:50 at 15-74.  
`
`journals (See, e.g., Exhibit G). If a symbol
`Moreover, many of these articles are found in professional
`used as a mark in professional circles, it is logical to infer that the buyer class is also using the symbol in
`sense, thus militating a finding of secondary meaning.   Id.  § 15:43 at 15-66.
`
`is
`that
`
`As a result of the extensive publicity the mark has received, including publicity on a national level and within
`professional services, it is evident that the SALARY.COM mark has acquired secondary meaning.
`
`1.
`
`The SALARY.COM Mark Has Acquired Secondary Meaning Because of the Extensive Investment the Applicant Has
`Made In Promoting and Advertising the Mark as an Indicator of Source
`
`of
`to the issue
`Evidence of the amount of money spent in promotion and advertising of a mark is relevant
`is
`secondary meaning.  Id.  § 15:51 at 15-80. As noted above, the mark has obtained significant exposure and publicity.  This
`largely due to the extensive investment the Applicant and its predecessors-in-interest made and have made in promoting and
`advertising the mark as an indicator of source. In support thereof, Applicant’s Affidavit of its Chief Marketing Officer in 2007
`attests to the following marketing expenditures in 2006-2007:
`
`   
`
`FY 06 (2005)
`
`FY 07 (2006) (estimate)
`
`Search Marketing
`Partner Marketing
`Marketing Materials
`Marketing Programs
`Marketing Public Relations
`Marketing Trade Shows
`Marketing Travel
`
`$0
`$226,600.00
`$2,005.00
`$86,338.04
`$192,050.55
`$33,579.33
`$2,256.31
` $    542,829.23
`
`$240,000
`$240,000
`$150,000
`$300,000
`$246,000
`$100,000
`$10,000
` $    1,286,000.00
`
`In addition to its substantial financial investments in marketing, promotion and advertising, the Applicant devoted
`substantial personnel resources. From January 2005 to August 2007 alone, company executives had participated in at least 150
`interviews.
`
`The mark has become “familiar or known to a particular segment of the purchasing public as a result of sales or
`constant exposure through advertising and promotion.”   Aloe Crème Laboratories, Inc. v. Aloo 99, Inc.,  188 U.S.P.Q.
`316.  Accordingly, the SALARY.COM mark has acquired secondary meaning.
`
`1.
`
`The SALARY.COM Mark Has Acquired Secondary Meaning Because of the Extensive Sales of the SALARY.COM
`Service and the Size of the Applicant
`
`existence
`the
`The size of a company and its sales figures are relevant evidence from which to infer
`the sales,
`the
`secondary meaning. The logical
`inference is this: The larger a company and the greater
`of
`greater
`the number of people who have been exposed to the symbol used as a trademark, and the
`greater
`the number of people who may associate the symbol with the company or
`source with which they
`should
`
` 
` 
` 
` 
` 
` 
` 
` 
` 
`

`

`inference that
`is a logical
`it
`be familiarized. Therefore,
`company with which they are familiar.  McCarthy  § 15:49 at 15-78.
`
`these buyers
`
`should associate the symbol with
`
`the
`
`The Applicant’s 2007 Affidavit provides evidence of the size and sales of the Applicant in 2007. The Applicant
`had approximately 250 employees. The revenue realized by Applicant in 2005-2006 (as a result in large part of
`Company’s marketing, advertising and public relations expenditures) is as follows:
`
`then
`the
`
`Fiscal Year End Total Revenues Gross Profits
`March 31, 2006
`$15,299,370.00 $12,191,481.00
`March 31, 2005
`$9,975,578.00
`$8,144,706.00
`Total
`$25,274,948.00 $20,336,187.00
`
`      
`
`As previously mentioned, the Applicant in 2007 had a significant number of customers and subscribers:
`
`In 2005, more than 35 million people used a SALARY.COM product.
`In 2007, Applicant had more than 30,000 paying subscribers for its combined services.
`In 2007, over 1,400 enterprise customers depended on SALARY.COM software products, with roughly 20% of
`ranked in the Fortune 1000.
`In 2007, Applicant’s small and medium sized business offerings had over 2,000 paying subscribers and 50,000 registered
`customers.
`In 2007, Applicant had approximately 560,000 subscribers to its various SALARY.COM-branded newsletters.
`
`those
`
`As is evidenced by the above information, the size and sales of the Applicant have been substantial.  Accordingly,
`appropriate to infer that the SALARY.COM mark has acquired secondary meaning.
`
`it
`
`is
`
`1.
`
`The SALARY.COM Mark Has Acquired Secondary Meaning Due to the Extensive Favorable Acceptance
`SALARY.COM Services Have Received
`
`the
`
`thus
`Favorable acceptance has been held to increase the likelihood of public familiarity and association and
`secondary meaning.   Id.  § 15:44 at
`15-67. As of 2007,
`the SALARY.COM service had been nominated for and had
`received numerous highly-coveted industry awards.   See, e.g., Exhibit H. Thus, due to the public familiarity with the mark as a
`result of such awards, the mark has acquired secondary meaning.
`
`1.
`
`The SALARY.COM Mark Has Acquired Secondary Meaning Due to its Continuous Use Over a Period Exceeding Six
`and One-half Years
`
`Section 2(f) of the Lanham Act provides that proof of continuous use of a mark for five years may be accepted as 
`prima facie evidence of secondary meaning. Applicant’s 2007 Affidavit provides evidence of continued use of
`the
`SALARY.COM mark in connection with the described services for a period at that time of over six and one-half years,
`well in excess of the Act’s 5-year presumption period. The SALARY.COM mark has acquired secondary meaning by
`virtue of Applicant’s ongoing use and extensive promotion of the mark over a period of years such that prospective
`purchasers view SALARY.COM as identifying the Applicant.  Section 2(f) of the Act. Accordingly, it is appropriate
`to
`presume the SALARY.COM mark has acquired secondary meaning.
`
` 
` 
` 
` 
`  
` 
` 
` 
` 
`

`

`1.
`
`To the Extent the Examiner Has Any Doubt on the Question of Descriptiveness, He Must Resolve Such Doubt in the
`Applicant’s Favor
`
`To the extent that there remains in the mind of the examining attorney any doubt whatsoever as to whether the mark is
`merely descriptive or suggestive of Applicant’s services, in accordance with the policy of the Trademark Office such doubt
`must be resolved in favor of the applicant:
`
`secondary
`A “merely descriptive” term requires the Board to take cognizance of appellant's evidence of
`meaning.  “[E]very mark sought to be registered by taking advantage of §2(f) involves descriptiveness to some
`degree.”   In re Ideal
`Inc., 508 F.2d 1336, 1339, 184 USPQ 487, 489 (CCPA 1975).  It
`is
`Industries,
`incumbent on the Board to balance the evidence of public understanding of the mark against the degree of
`descriptiveness encumbering the mark, and to resolve reasonable doubt
`in favor of
`the applicant,
`in
`accordance with practice and precedent.    See  In re Aid Laboratories, Inc., 221 USPQ 1215, 1216 (TTAB
`1983) (in deciding whether PEST PRUF for animal shampoo with insecticide is suggestive or merely
`descriptive, doubt is resolved in favor of applicant in holding the term merely suggestive of a possible end
`result of the use of applicant's goods);   In re Gourmet Bakers, Inc., 173 USPQ 565 (TTAB 1972) (any doubt
`in
`determining the registrability of THE LONG ONE for bread is resolved in favor of applicant “on the theory
`that any person who believes that he would be damaged by the registration will have an opportunity ...
`to
`oppose the registration of the mark and to present evidence, usually not present in the ex parte application,
`to
`that effect.”).  
`In re Merrill Lynch, Pierce, Fenner, and Smith, Inc.,  828 F.2d 1567, 1571, 4 U.S.P.Q.2d 1141
`(C.A.Fed.,1987).
`
`Accord, In re Distribution Codes (“Our decision is assisted by the fact that we have no information that anyone will be
`damaged by the registration of the mark but that anyone who would be injured will have an opportunity to file a notice of
`opposition and to develop a factual record upon which any question of descriptiveness could be adjudicated with more
`confidence than it can be on the basis of a priori assumptions.”);  In Re Waverly (deciding that MEDICINE for
`“medical
`journals” is not generic:  “For
`those reasons, applicant contends, a doubt is raised about the registrability of MEDICINE, and
`that doubt must be resolved in favor of applicant and publication of
`the mark sought
`to be registered.”) ;  In
`re
`Women’s Publishing (“Finally,
`and in accordance with precedent, we must resolve any reasonable doubt in favor of
`applicant in these kinds of cases.” (citing  In re Merrill Lynch, Pierce, Fenner, and Smith Inc.).
`Applicant has always contended that the SALARY.COM mark is not merely descriptive of online non-downloadable
`software, but to the extent that there remains doubt in the mind of the examiner, such doubt must be resolved in favor of
`the
`Applicant.
`
`1.
`
`The SALARY.COM Mark Has Acquired Secondary Meaning, Therefore It Is Registrable
`
`a
`By virtue of the fact that (a) prospective and actual purchasers in the relevant market recognize SALARY.COM as
`trademark; (b) the SALARY.COM mark has received extensive publicity; (c) the applicant has extensively invested in
`promoting and advertising the mark as an indicator of source; (d) the sales of the SALARY.COM service and the size of
`the
`applicant are large; (e) the SALARY.COM services have received extensive favorable acceptance; (f) the mark has been in
`continuous use over a period exceeding six and one-half years; and (g) to the extent the examiner has any doubt on the
`question of descriptiveness, he must resolve such doubt in the Applicant’s favor, Applicant’s predecessor-in-interest argued
`successfully in 2007 that the SALARY.COM mark had acquired secondary meaning. That status has only strengthened in the
`last ten years as indicated by the evidence discussed below.
`
`NEW, UPDATED EVIDENCE AND ARGUMENTS
`
` 
` 
` 
` 
` 
` 
` 
`

`

`the
`In addition to relying upon the arguments and evidence that were deemed sufficient in 2007 to allow registration of
`mark SALARY.COM on the Principal Register under Section 2(f), Applicant hereby supplements those submissions with
`additional and current evidence demonstrating that secondary meaning in the mark SALARY.COM has only strengthened with
`time.
`
`1.
`
`The SALARY.COM Mark Has Significantly Strengthened Its Secondary Meaning Due to the Extensive Increased
`Investment Applicant Has Made in Promoting and Advertising the Mark as an Indicator of Source
`
`Evidence of the amount of money spent in promoting and advertising a mark is highly relevant to the issue of secondary
`meaning. A comparison of Exhibit B, filed in 2007, and Exhibit I, the Declaration of the current Chief Marketing Officer of
`Applicant, demonstrates the significant increase in advertising and marketing expenditures for the brand over the last several
`years. The estimated marketing and advertising revenues from 2006 of $1, 286,000 has increased in 2018 to $9,832,922.
`
`Fiscal Year
`2016
`2017
`2018
`
`$     
`$     
`$     
`
`Budget
`7,752,084.00
`8,193,697.06
`9,832,922.00
`
`This dedication of such significant resources to brand advertising and promotion is indicative of the significant value
`goodwill associated with the SALARY.COM brand and that it has significant secondary meaning.
`
`and
`
`1.
`
`The SALARY.COM Mark Has Significantly Strengthened Its Secondary Meaning Due to the Significant Increase in
`Sales of the Various SALARY.COM Services
`
`the
`A company’s size and its sales figures are relevant evidence from which to infer secondary meaning. The more
`public is exposed to the mark, the higher the sales due to the increased recognition of the brand by third parties. The notoriety
`generated by all these efforts has created a strong, source identifying brand in SALARY.COM. Again, a comparison of
`the
`revenue and profit figures in Exhibit B with those in Exhibit I show a more than threefold increase in revenues and profits over
`the last several years.
`
`Fiscal Year
`
`Total Revenue
`
`Gross Profits
`
`2017
`
`2016
`
`  $      
`31,594,531.54
`  $      
`33,359,347.88
`
`  $       
`
`  $       
`
`27,219,449.91
`
`28,470,965.37
`
`the
`These numbers are significant and clearly indicative of the growing strength and widespread recognition of
`SALARY.COM brand and the services provided thereunder. There is no doubt that the secondary meaning previously
`recognized in the mark has significantly grown over time.
`
`1.
`
`The SALARY.COM Mark Has Significantly Strengthened Its Secondary Meaning Due to Recognition by the Public of
`SALARY.COM as a Brand Identifier
`
`a
`The entire concept of secondary meaning revolves around the recognition by the relevant purchasing public of
`“symbol” as a source identifying brand. The SALARY.COM trademark has functioned in this capacity for more than a
`decade. The level of market recognition that was documented in 2007 in Exhibit B has been exceeded by leaps and bounds
`in
`recent years. As the current Chief Marketing Officer attests in Exhibit I:
`
` 
`          
` 
` 
` 
`          
` 
` 
` 
`          
`

`

`Applicant's consumer-facing SALARY.COM-branded site generates over 3.5 million unique visitors per month. Such
`sites are linked to by over 750 third party websites including nytimes.com, cnn.com, washingtonpost.com,
`latimes.com,
`forbes.com, time.com, usatoday.com, cbsnews.com, and businessinsider.com as well as hundreds of other third party
`sites.
`Applicant syndicates its SALARY.COM content to over 150 partners resulting in over 2.1 million additional page views
`and over 250,000 unique visitors annually.
`Applicant has more than 5,000 paying customers for its combined services with nearly 2,700 enterprise customers and
`2,500 SMB customers.
`Applicant serviced more than 33.5 million users of its free consumer product(s) on its SALARY.COM branded sites
`2017.
`Nearly 2,700 enterprise companies utilize and depend on SALARY.COM software products, with approximately 17% of
`Fortune 1000 companies depending on SALARY.COM software products.
`
`in
`
`These statistics undeniably demonstrate that the SALARY.COM mark continues to function as a well-recognized and highly
`respected brand in the relevant market, and has developed and continues to possess very strong secondary meaning.
`
`1.
`
`The SALARY .COM Mark Has Been Used as a Trademark on Applicant’s Web Site Since, at Least, 1998.
`
`The domain name registration for “salary.com” was first created in 1995. As Exhibit J indicates, it is currently owned
`by Applicant following its acquisition of the business several years ago. Information and data obtained from the Wayback
`Machine web site shows that the SALARY.COM website has been in operation since 1998, and screenshots from the Wayback
`Machine site show use of the SALARY.COM mark in word and logo format on the site since, at least, 2001 and continuing
`uninterrupted to the present. See Exhibit J. This uninterrupted use of the mark on the website which, as indicated in Exhibit I ,
`attracts 3.5 million visitors a month has undoubtedly established the source identifying function and brand recognition and
`identity necessary for secondary meaning to exist.
`
`1.
`
`Google News and Google Trends Further Demonstrate a Very High Level of Public Recognition of SALARY.COM as a
`Source Identifying Brand
`
`that
`Further evidence that secondary meaning has been firmly established in the SALARY .COM mark are in the results
`appear in searches on Google under “salary.com.” Exhibit K shows the first page of Google News searches of “salary.com”
`from 2007-2017. These results demonstrate consistent notoriety, relevance, and third-party recognition of the SALARY.COM
`brand.
`
`the
`Similarly, the screenshots from searches on Google Trends for each year from 2007 to 2017 in Exhibit L indicate
`interest that has been shown in the search term “salary.com” over this decade. The numbers represent relative
`interest
`compared to the highest point/greatest interest during a given period. A value of 100 is the peak popularity for “salary
`.com”
`in the given time, and the value of 50 means that “salary.com” is half as popular versus the popular area peak time during the
`given. As these statistics show, the interest level has always been extremely high and has remained high consistently over time.
`This, too, is a strong indicator of existing and continuous brand recognition and established secondary meaning.
`
`1.
`
`The SALARY.COM Mark Has Continuously Been the Subject of Extensive Third Party Press
`
`The SALARY.COM mark has continued over the years to generate significant third-party recognition, press, and coverage
`in a variety of media. A sampling of the numerous different types of press recognition that SALARY.COM has received over
`the past 10 years is included in Exhibit M. These include articles and publications by industry analysts, daily newspapers,
`online news sources, and other forms of media. This third-party coverage of Applicant at national and international levels and
`within specific industry markets is strong evidence of the continuing strength and secondary meaning that exists in the
`SALARY.COM mark.
`
`1.
`
`The SALARY.COM Mark Has Acquired Secondary Meaning Due to its Continuous Use over a Period Exceeding 17
`Years
`
` 
` 
` 
`          
` 
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` 
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` 
`

`

`Section 2(f) of the Lanham Act states that proof of continuous use of a mark for five years may be accepted as prima
`facie evidence that the mark has acquired secondary meaning. Applicant has not only used its mark for at least five years, but,
`in fact, has itself and through its predecessors-in-interest used the mark continuously and exclusively for over 17 years.
`Its
`ongoing and extensive use and promotion of the mark for approaching two decades has created a very strong and valuable
`brand with a high level of public recognition and significant goodwill. This fact combined with the significant amount of
`evidence Applicant has provided more than adequately demonstrates that the SALARY.COM mark has achieved and
`maintained over many years the secondary meaning required for registration on the Principal Register.
`
`1.
`
`Applicant Has Demonstrated Its Mark SALARY.COM Has Acquired Secondary Meaning, and Any Doubt on the Issue
`of Descriptiveness Must Be Resolved in Applicant’s Favor
`
`of
`As has been stated previously, it is the policy of the US Trademark Office to resolve any doubt on the issue
`its
`descriptiveness in favor of an applicant. Applicant believes it has provided adequate evidence to demonstrate that
`SALARY.COM mark acquired secondary meaning many years ago and that this acquired distinctiveness has only grown
`stronger and more valuable over time. Accordingly, Applicant respectfully requests that the refusal of Registration under
`Section 2(e)(1) be withdrawn and that Applicant’s mark be registered on the Principal Register under Section 2(f).
`
`EVIDENCE SECTION
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`        EVIDENCE FILE NAME(S)
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`       ORIGINAL PDF FILE
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`       CONVERTED PDF FILE(S)
`       (15 pages)
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`  
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`76076376v.1
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`       ORIGINAL PDF FILE
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`       CONVERTED PDF FILE(S)
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`evi_381422258-20180309113258414879_._Argument.pdf
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`evi_381422258-20180309113258414879_._Exhibit_A.PDF
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