Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA435452
`ESTTA Tracking number:
`10/13/2011
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`91178303
`Defendant
`ConsumerInfo.Com, Inc.
`REBECCA STRODER
`SNR DENTON US LLP
`233 SOUTH WACKER DRIVE, SUITE 7800
`CHICAGO, IL 60606-6404
`UNITED STATES
`rstroder@snrdenton.com, trademarks@snrdenton.com, cbeen@snrdenton.com
`Brief on Merits for Defendant
`Carol Anne Been
`carolanne.been@snrdenton.com, trademarks@snrdenton.com,
`katherine.staba@snrdenton.com
`/CAB13122/
`10/13/2011
`Redacted Brief.pdf ( 75 pages )(3969967 bytes )
`
`Proceeding
`Party
`
`Correspondence
`Address
`
`Submission
`Filer's Name
`Filer's e-mail
`
`Signature
`Date
`Attachments
`
`

`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`FAIR ISAAC CORPORATION,
`
`Opposer,
`
`V.
`
`CONSUMERINFO.COM, INC.,
`
`Applicant.
`
`«
`
`Opposition No. 91 178303
`Serial No. 78/955,572
`Mark: KNOW YOUR SCORE
`
`APPLICANT’S TRIAL BRIEF
`
`Applicant ConsumerInfo.com, Inc. (“CIC” or “Applicant”) submits this Trial Brief in
`
`support of its application for registration of its mark KNOW YOUR SCORE.
`
`REDACTED FOR PUBLIC RECORD
`
`

`
`TABLE OF CONTENTS
`
`SUMMARY OF ARGUMENT .......................... .; ......................................................................... ..1
`
`DESCRIPTION OF THE RECORD ............................................................................................. ..1
`
`STATEMENT OF THE ISSUES .................................................................................................. ..2
`
`INTRODUCTION ......................................................................................................................... ..2
`
`I.
`
`II.
`
`The Parties ......................................................................................................................... ..2
`
`History of Applicant’s KNOW YOUR SCORE Mark ...........
`
`........................................ ..3
`
`ARGUMENT................................................................................................................................. ..4
`
`I;
`
`II.
`
`Relationship of the Parties ................................................................................................. ..4
`
`Opposer Fails to Meet its Burden to Show that Applicant’s KNOW YOUR
`SCORE Mark is Merely Descriptive. ..................................................................................4
`
`A.
`
`The Nature of Applicant’s KNOW‘ YOUR SCORE Mark Is Not Merely
`Descriptive. ................................ ... ......................................................................... ..4
`
`B.
`
`Opposer’s Evidence Simply Fails to Show Descriptiveness. ................................ .. 5
`
`1.
`
`2.
`
`3.
`
`Opposer’s “Derivatives” are Not Evidence of Mere
`Descriptiveness. ......................................................................................... .. 5
`
`Opposer Has Not Shown Descriptive Use by Applicant of Its
`KNOW YOUR SCORE Mark. .................................................................. ..7
`
`Alleged Third-Party Use Similarly Fails to Show Descriptive Use. ......... .. 9
`
`C.
`
`D.
`
`E.
`
`Registration of Applicant’s Mark Will Not Foreclose Competitors From
`Descriptive Uses or Use of a Necessary Phrase. ......................... ... ..................... .. 13
`
`Opposer’s Asserted Dictionary Definitions Do Not Dictate a Finding of
`Descriptiveness. ................................................................................................... .. 15
`
`Opposer’s Evidence Fails to Meet its Burden To Show the Mark is Merely
`Descriptive. ............................................................ ..‘. ........................................... .. 17
`
`III.
`
`Applicant’s KNOW YOUR SCORE Mark Is Inherently Distinctive and
`Appropriate for Registration............................................................................................ .. 18
`
`A.
`
`Applicant’s Sports-Themed Promotional Campaign Conveys the
`Suggestiveness of Applicant’s KNOW YOUR SCORE Mark. .......................... .. 18
`
`i
`
`

`
`B.
`
`C.
`
`Lack of Particularity Also Shows the Distinctiveness of Applicant’s
`KNOW YOUR SCORE Mark............................................................................. ..2O
`
`Examiners Have Correctly Determined that the Mark is Inherently
`Distinctive............................................ ..‘ .............................................................. ..22
`
`IV.
`
`In the Alternative, Applicant’s Mark Has Acquired Distinctiveness As Shown By
`App1icant’s Evidence of Secondary Meaning. ................................................................ ..24
`
`A.
`
`B.
`
`C.
`
`D.
`
`E.
`
`Length of Use ...................................................................................................... ..25
`
`Extent of Promotion............................................................................................. ..26
`
`Advertising Expenditures and Revenues ............................................................. .. 30
`
`Consumer Exposure ............................................................................................. .. 31
`
`The Prior Registration Supports a Finding of Acquired Distinctiveness. ........... .. 34
`
`CONCLUSION ...................................................
`
`...................................................................... ..37
`
`

`
`TABLE OF AUTHORITIES
`
`$22.3; & Lomb Inc., v. Leupold & Stevens, Inc., 6 U.S.P.Q.2d 1475 (TTAB 1988) ....................34
`
`Black & Decker Corp. v. Emerson Electric Co., 84 U.S.P.Q.2d 1482 (TTAB 2007) ................. ..23
`
`Borinquen Biscuit Corp. v. M V. Tradingl Corp., 78 U.S.P.Q.2d 1454 (1st Cir. 2006).................22
`
`1
`Chicago Bears Football Club V. 12th Man/Tennessee LLC,
`83 U.S.P.Q.2d 1073 (TTAB 2007) ............................................................................................33
`
`Colonial Arms Corp. v. Trulock Firearms Inc., 5 U.S.P.Q.2d 1678 (TTAB 1987) .................... ..24
`
`Consumerlnfo. com, Inc. v. One Techs. LP, No 09-3783 (C.D. Cal. Jan. 12, 2011) .................... ..26
`
`Fair Isaac Corp. v. Experian, 630 F.3d 1139 (8th Cir. 2011) ....................................................... ..4
`
`V
`General Foods Corp. v. MGD Partners, 508 F.2d 804,
`224 U.S.P.Q. 479, 486 (TTAB 1984) ................................................................................ ..26, 32
`
`In re Dune Medical Devices Ltd., 2011 WL 1495445 (TTAB Mar. 31, 2011) ............................. ..6
`
`In re J.J. Yeley, 85 U.S.P.Q.2d 1150 (TTAB 2007) .................................................................... ..29
`
`In re Jack Binion, 93 U.S:P.Q.2d 1531 (TTAB 2009) ........................................................... .......36
`
`In re Jim Crocket Promotions, Inc., 5 U.S.P.Q.2d 1455 (TTAB 1987) ........................................20
`
`In re Kopy Kat, 498 F.2d 1379 (CCPA 1974) .......................................................... .. ................. ..20
`
`In re Loew ’s Theatres, Inc., 769 F.2d 764, 226 U.S.P.Q. 865 (Fed. Cir. 1985) .......................... ..34
`
`In re Log Cabin Homes, Ltd, 52 U.S.P.Q.2d 1206 (TTAB 1999) .............................................. .. 10
`
`In re Merrill Lynch, Pierce, Fenner & Smith, Inc.,
`828 F.2d 1567, 4 U.S.P.Q.2d 1141 (Fed. Cir. 1987) ............................................................... ..34
`
`In re Mine Safety Appliances Co., 66 U.S.P.Q.2d 1694 (TTAB 2002) ....................................... ..24
`
`In re Murad, 2010 WL 667931 (TTAB Feb. 4, 2010) ................................................................ ..11
`In re Nett Designs, Inc., 236 F.3d\1339, 57 U.S.P.Q.2d 1564 (Fed. Cir. 2001)..............................4
`In re Owens-Illinois Glass Co., 143 I1.S.P.Q. 431 (TTAB 1964) .................................................36
`
`In re Pennwalt Corp., 173 U.S.P.Q. 317 (TTAB 1972) .............................................................. .. 15
`Jln re Reynolds Metals Co., 480 F.2d 902 (CCPA 1973) .......................................................7, 8, 21
`
`i
`
`
`
`

`
`In re Sottile, 156 U.S.P.Q. 655 (TTAB 1968) ............................................................................. .. 17
`
`In re Steelbuilding.com, Inc., 2008 WL 5256395 (TTAB Dec. 11, 2008) .....
`
`.............................27
`
`In re Superior Access Insurance Serv., Inc., 2009 WL 1692512 (TTAB May 13, 2009) ........... ..11
`
`In re Tea and Sympathy, 88 U.S.P.Q.2d 1062 (TTAB 2008) ...................................................... ..12
`
`In re Tennis in the Round, Inc., 199 U.S.P.Q. 496 (TTAB 1978) .......................
`
`...................... .. 19
`
`In re Thomas Nelson, Inc., 97 U.S.P.Q.2d 1712 (TTAB 2011) .................................................. ..34
`
`In re Thomas, 79 U.S.P.Q.2d 1021 (TTAB 2006) ................................................................ ... .... ..12
`
`In re TMS Corp., 200 U.S.P.Q. 57 (TTAB 1978) ....................................................................... ..20
`
`In re Wilderness Group, Inc., 189 U.S.P.Q. 44 (TTAB 1975) .................................................... ..17
`
`Kellogg Co. v. General Mills, Inc., 82 U.S.P.Q.2d 1766 (TTAB 2007) ..................................... ..34
`
`Learning Annex Holdings, LLC v. True Power Int ’l, Ltd.,
`2009 WL 4079133 (TTAB July 27, 2009) ..........................................................................
`
`16
`
`McDonald ’s Corp. v. McKinley,’ 13 U.S.P.Q.2d 1895 (TTAB 1989) ......................................... ..33
`
`I
`Oreck Holdings, LLC v. BISSELL Homecare, Inc.,
`2010 WL 985352 (TTAB Feb. 16, 2010) ................................................................ ..9, 15, 18, 21
`
`President & Trustees ofColby College v. Colby College--New Hampshire,
`508 F.2d 804 (1st Cir. 1975) ................................................................................................... ..32
`Rosetta Stone Ltd. v. Google, Inc., 730 F. Supp. 2d 531 (E.D. Va.
`0) ....................................31
`
`’ Safer v. OMS Investments, 94 U.S.P.Q.2d 1031 (TTAB 2010)..................................................... 13
`
`Servs., Inc. v. Freebies Publ ‘g, 364 F.3d 535 (4th Cir. 2004) ..................................................... ..23
`
`Six Continents Hotels, Inc. v. Marriott Int ’I, Inc.,
`v
`2004 WL 2075110(TTAB Aug. 31, 2004) .............................................................................. ..11
`
`US. West Inc. v. Bellsouth Corp., 18 U.S.P.Q.2d 1307 (TTAB 1990) ....................................... ..29
`
`Yamaha Int ’l Corp. v. Hoshino Gakki Co., 231 U.S.P.Q. 926 (TTAB 1986) ............................. ..25
`
`Statutes and Procedural Rules
`
`15 U.S.C. § 1052(f) ....................................................................................................................... ..1
`
`15 U.S.C. § 1057(b) ..................................................................................................................... ..23
`
`

`
`15 U.S.C. § 1065 ............................................................................................................... .§ ........ ..23
`
`TBMP § 801.01 ........................................................................................................................... ..25
`
`TMEP § 704.03(b)(1)(A)........;......................................................................................................23
`
`iii
`
`

`
`SUMMARY OF ARGUMENT
`
`Opposer Fair Isaac Corporation (“FICO” or “Opposer”) has failed to meet its burden in
`
`this Opposition to prove that Applicant’s mark is merely descriptive. Consequently, this
`
`opposition should be dismissed and the application at issue, Application Serial No. 78/955,572
`
`(the ‘‘Application’’) of ConsumerInfo.com, Inc. (“CIC” or “App1icant”), may proceed to
`
`registration. Applicant’s KNOW YOUR SCORE mark is not merely descriptive of the services
`
`recited in the Application, but rather is inherently distinctive as evident from the nature of the
`
`mark itself and as found by the United States Patent and Trademark Office (“PTO”). In the
`
`alternative, without prejudice to the foregoing, Applicant’s KNOW YOUR SCORE mark has
`
`achieved secondary meaning based on Applicant’s substantially exclusive and continuous use of
`
`the mark in extensive advertising and promotion to the public for more than five years. Thus, the
`
`Application may proceed to registration under Section 2(1) of the Lanham Act, 15 U.S.C. §
`
`1 052(i).
`
`DESCRIPTION OF THE RECORD
`
`The evidence of record includes:
`
`1. Stipulation of the parties regarding discovery documents,
`testimony (CIC Ex. 1);
`
`interrogatory responses and
`
`2. Opposer’s Responses to Applicant’s First Set of Interrogatories (CIC Ex. 2);
`
`3. Applicant’s Responses to Opposer’s First Set of Interrogatories and Supplemental Responses
`to Opposer’s First Set of Interrogatories (CIC Ex. 3);
`
`4. Portions of the discovery deposition of Michael Balducci, Applicant’s Rule 30(b)(6)
`deposition designee (CIC Ex. 4; FICO Ex_. E);
`
`5. Portions of the discovery depositions of Opposer’s witnesses, Shon Dellinger and Darcy
`Sullivan, employees of FICO (CIC Exs. 5-6);
`
`6. Documents produced by both parties during the discovery period (CIC Exs. 7-19; FICO Exs.
`H-P);
`
`

`
`7. Printed publications from Applicant’s website (CIC Ex. 20);
`
`8. Printed publications from third parties between 2001-2010 relating to consumer credit
`information and credit scores without using the phrase and mark KNOW YOUR SCORE
`(CIC Ex. 21);
`
`9. Printed publications relied upon by FICO (FICO Exs. S, T, W); and
`
`10. U.S. Trademark Registration No. 3,339,410 (CIC Ex. 22).
`
`STATEMENT OF THE ISSUES
`
`1. Has Opposer failed to meet its burden of proof to show mere descriptiveness of Applicant’s
`mark by a preponderance of the evidence?
`'
`
`2. Does the nature of Applicant’s mark together with Applicant’s incontestable Registration No.
`2,422,711 for the identical mark for closely related services support a finding that
`Applicant’s mark is inherently distinctive?
`
`3.
`
`In the alternative, does Applicant’s substantially exclusive and continuous use and extensive
`promotion of its mark for more than five years warrant a finding that the mark has acquired
`distinctiveness?
`
`I.
`
`The Parties
`
`INTRODUCTION
`
`Applicant, ConsumerInfo.com, Inc., an Experian company, is the leading provider of
`
`online consumer credit reports, credit scores, credit monitoring, and other credit-related
`
`information. To date, Applicant has provided more than 3.1 million members with over 20
`
`million online credit reports. Applicant operates several consumer credit report information
`
`websites including the famous website known as FreeCreditReport.com®, which was founded in
`
`1995 to provide quick, easy, and inexpensive consumer access to credit histories.
`
`Opposer, also in the credit report information industry, sells credit reports and scores
`
`based on its popular FICO® credit score.
`
`

`
`II.
`
`History of Applicant’s KNOW YOUR SCORE Mark
`
`Since September 1998, Applicant and its predecessors-in-interest have used the mark
`
`KNOW YOUR SCORE in connection with credit-related services. (CIC Ex. 4, 172:16—173:13;
`
`CIC Ex. 17, CICOOOI33, CIC000154, CIC000170, CIC000174-76.) Applicant acquired rights to
`
`the mark through a Trademark Assignment Agreement executed between Applicant and First
`
`Ohio Mortgage Company in August 2006. (CIC Exs. 16-17.) This Trademark Assignment
`
`Agreement assigned all rights and associated good will to the registered mark KNOW YOUR
`
`SCORE, including Registration No. 2,422,711, for “providing credit report information to
`
`perspective first mortgagers” (the “Prior Registration”). (CIC Ex. 16.)
`
`After acquiring the mark, registration and related good will, Applicant filed the instant
`
`Application on August 18, 2006 for “credit reporting services; credit information provided by
`electronic means; providing information in the financial and credit fields.” The identification of
`
`services in the Application served to standardize the identification in the Prior Registration and
`
`correct typographical errors.
`
`Applicant continued its predecessors’ use of the KNOW YOUR SCORE mark.
`
`Applicant used the mark as a slogan for its famous FreeCreditReport.com® brand, placing the
`
`mark in a very prominent location on its high-traffic website at FreeCreditReport.com. (CIC Ex.
`
`4, 63:3—l2 (filed under seal).) Applicant advertised its KNOW YOUR SCORE mark in
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`connection with its credit reporting services in radio advertisements, television commercials and
`
`onlirie barmer ads, particularly in advertising and promotions based on a sports theme, as a play
`
`on the multiple meanings ofthe word score in the mark. (ClC Ex. 11; CIC Ex. 15, CIC0018l-
`
`84; CIC Ex. 4, 130:l7-13 1 :7 (filed under seal).) Applicant spent millions of dollars promoting
`
`the mark and exposing it to millions of consumers for more than five years, and engaging in
`
`policing of third party uses of its mark.
`
`

`
`1.
`
`Relationship of the Parties
`
`ARGUMENT
`
`This Opposition is but one proceeding brought by Opposer to curtail activities that
`
`impinge on Opposer’s singular goal: market exclusivity in the field of credit scores. Opposer
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`recently lost in trademark-related litigation with Applicant’s affiliates over credit scores.’
`
`Opposer’s true purpose in pursuing this Opposition to trial appears to be revealed in one of the
`
`final lines of Opposer’s trial brief, where Opposer states, “Consumers may also be falsely led to
`
`believe that the only way for them to know their credit score is by using Applicant’s goods and
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`services.” (FICO Br. at 34.) Opposer’s dogged quest for market exclusivity in the field of credit
`
`scores is evident in its persistence in pursuing a descriptiveness contention against Applicant’s
`
`mark despite the lack of supporting evidence in this Opposition.
`
`II.
`
`Opposer Fails to Meet its Burden to Show that Applicant’s KNOW YOUR SCORE
`Mark is Merely Descriptive.
`
`A.
`
`The Nature of Applicant’s KNOW YOUR SCORE Mark Is Not Merely
`Descriptive.
`'
`
`i
`
`As an initial and decisive matter, Applicant’s KNOW YOUR SCORE mark does not
`
`describe an ingredient, quality, characteristic, function, feature, purpose, or use of Applicant’s
`
`credit reporting information services. See In re Nett Designs, Inc., 236 F.3d 1339, 57 U.S.P.Q.2d
`
`1564 (Fed. Cir. 2001). Nothing in the phrase KNOW YOUR SCORE describes, for example,
`
`these obvious qualities or characteristics: (1) exactly to what “score” or even type of credit score
`
`1 The Eighth Circuit ruled against Opposer in Fair Isaac Corp. v. Experian, 650 F.3d 1139 (8th Cir.
`2011), affirming the district court’s grant of summary judgment for Applicant’s affiliate on Opposer’s
`antitrust and false advertising claims based on Applicant’s affiliates’ use of numeric credit scores. The
`Eighth Circuit also ruled that Opposer’s registered mark 300-850 was merely descriptive and was
`procured by fraud on the PTO.
`
`

`
`the services pertaingz (2) whom do Applicant’s services intend to inform about an undefined
`
`score; (3) whether the mark identifies services related to changing or improving a credit score;
`
`(4) whether Applicant calculates or merely delivers credit scores; or (5) whether the purpose of
`
`Applicant’s services is to respond to errors or miscalculations in credit scores. Absent merely
`
`describing such qualities or characteristics, Applicant’s mark cannot be merely descriptive. In
`
`fact, Applicant’s mark is suggestive and distinctive, as more fully discussed infra. The
`
`suggestive and distinctive nature inherent in Applicant’s mark is undiminished by anything in
`
`Opposer’s arguments or evidence.
`
`B.
`
`Opposer’s Evidence Simply Fails to Show Descriptiveness.
`
`Opposer spins an illogical tale in arguing that its “overwhelming” evidence3 indicates that
`
`Applicant’s mark KNOW YOUR SCORE is merely descriptive. Seeking to meet its burden to
`
`show that Applicant’s mark is descriptive by a preponderance of the evidence, Opposer asserts a
`
`series of grasping arguments attempting to cast Applicant’s KNOW YOUR SCORE mark in a
`
`descriptive light. At the core of Opposer’s arguments is the erroneous assumption that use of
`
`one or more of the discrete words in Applicant’s mark—know, your or score—in any variation,
`
`permutation, or manner, may be conflated into the equivalent of Applicant’s mark to indicate the
`
`descriptiveness of Applicant’s mark. This assumption is illogical and legally unsupportable.
`
`1.
`
`Opposer’s “Derivatives” are Not Evidence of Mere Descriptiveness.
`
`Opposer posits a variety of phrases which it labels as “derivatives” (FICO Br. at 9),
`
`contending that these “derivatives” are somehow equivalent to Applicant’s KNOW YOUR
`
`2 Applicant does not concede that the term “score” in Applicant’s mark necessarily means or is
`interchangeable with “credit score.” For the purposes of this brief, however, Applicant explores the
`various suggestive connotations implicit in its mark even if one considers the mark to refer to “credit
`scores” generally.
`\
`
`3 To bolster the appearance of its evidence, Opposer repeats the list of alleged third party uses several
`times in its trial brief (FICO Br. at 9, 12-13, 22-24.)
`
`

`
`SCORE mark for the descriptiveness analysis. Opposer offers no support for treating these
`
`“derivatives” as equivalent to Applicant’s KNOW YOUR SCORE mark. Opposer’s
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`“derivatives” evidence constitutes nothing more than a request for the Board to impose an
`
`impermissibly broad conception of descriptive use of a mark, namely, that third party use of any
`
`ofthe words comprising a mark evidences descriptive use ofthe mark itself.4 (FICO Br. at 9,
`
`12.) The probative value of such iterations to a descriptiveness analysis was recently rejected by
`
`the Board. See In re Dune Med. Devices Ltd, 2011 WL 1495445, at *6 (TTAB Mar. 31, 2011)
`
`(“We acknowledge that ‘positive margin detector,’ ‘cancer detector,’ ‘tumor probe’ or even
`
`‘margin assessment probe’ would be merely descriptive of applicant’s goods, but that does not
`
`make MARGINPROBE merely descriptive”). Indeed, if Opposer’s “derivatives” assertion were
`
`to be accorded any consideration in a descriptiveness analysis by the Board or the PTO, there
`
`would be few, if any, registrations ever issued.
`
`Opposer’s reliance on remote uses of the discrete words in Applicant’s mark warrants a
`
`finding that such evidence cannot show descriptiveness. The “derivatives” simply fail to show
`
`anything more than the non-trademark use of discrete words in combinations for which
`
`Applicant does not seek registration. As further detailed infia, when these irrelevant examples
`
`are removed from Opposer’s sweeping contentions, the remaining evidence and arguments
`
`carmot meet Opposer’s burden.
`
`4 Opposer’s statements ofthe purported relevance of such examples in Opposer’s Notice of Reliance
`highlight its reliance on use of discrete terms, rather than Applicant’s actual applied-for mark. For
`example, Opposer identifies the relevance of CIC0027 as “Applicant’s descriptive use of ‘score’ and
`‘credit score.”’ (FICO Notice of Reliance at 4.) Applicant has not applied to register “score” alone or
`“credit score” at all.
`
`

`
`2.
`
`Opposer Has Not Shown Descriptive Use by Applicant of Its KNOW
`YOUR SCORE Mark.
`
`Despite Opposer’s statement that App1icant’s advertising is “replete with descriptive
`
`uses” (FICO Br. at 17), Opposer provides no descriptive use by Applicant of its KNOW YOUR
`
`SCORE mark. The purported evidence of Applicant’s descriptive use of its mark is entirely
`
`based on the so-called “derivatives” discussed above and a single unauthorized Facebook
`
`advertisement, the origin and placement of which the parties were not able to confirm.
`
`Opposer’s evidence is not sufficient to meet its burden.
`
`Opposer’s examples allegedly evidencing Applicant’s descriptive use of the KNOW
`
`YOUR SCORE mark are, in fact, not use of Applicant’s mark at all. Instead, these are uses of
`
`various other phrases and statements that use one or more ofthe words in Applicantis KNOW
`
`YOUR SCORE mark. Applicant has wrongly conflated these so-called “derivatives? with use of
`
`the mark itself. For example, Opposer rnisfires by claiming that the following phrases are
`
`descriptive use of the mark, when these phrases do not use the mark at all:
`
`'—
`
`0
`
`0
`
`0
`
`0
`
`(FICO Ex. H, CIC000188 (filed under seal).);
`
`“Get your free score and report.” (FICO Ex. K);
`
`“Knowing your Credit Score may save you money on a home loan, refi, car loan, or credit
`card.” (FICO Ex. H, CIC00022, CIC00029) (FICO Br. at 9);
`
`“Did you know that three little numbers (your credit score) .
`9); and
`
`. .” (CIC Ex. 20) (FICO Br. at
`
`“Negotiate better interest rates by knowing your credit score.” (FICO Ex. H, CICO0015)
`(FICO Br. at 9).
`
`Indeed, a descriptiveness argument based on the applicant’s use of different phrases in
`
`advertising has been rejected under long-established precedent. In In re Reynolds Metals Co.,
`
`480 F.2d 902 (CCPA 1973), the CCPA found the mark BROWN-IN—BAG for plastic bags to be
`
`7
`
`

`
`suggestive and registrable, despite the applicant’s advertisements stating, for example, “New
`Reynolds Brown-in-Bag bastes meat brown and juicy,” and “Because the Brown-in-Bag is made
`
`of transparent Reynolon, meat browns right in the bag.” Id at 904 (emphasis added).
`
`Acknowledging these advertisements, the CCPA noted:
`
`That appellant appears to find it necessary to advertise, inter alia, that
`meat may be browned in its bags may indicate its unwillingness to rely
`on the mark alone even to suggest that function. However that may
`be, it is the mark appellant seeks to register, not its advertisements.
`
`Id. (emphasis added).
`FICO’s citations5 in fact support rather
`
`negate the inherent distinctiveness of
`
`Applicant’s KNOW YOUR SCORE mark. While Applicant’s webpages and extensive
`
`advertisements may include the discrete words know, your or score on their own, the KNOW
`
`YOUR SCORE mark, in the applied-for format, also is prominently displayed. For example, on
`
`the FreeCreditReport.com website, Applicant’s mark appears as a slogan, with the TM or SM
`
`symbol, just below the FreeCreditReport.com® mark. (See, e.g., FICO Ex. H, CIC000l5,
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`CIC00022, CIC00026—29.) Applicant’s radio and television commercials close with the KNOW
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`YOUR SCORE mark, emphatically stated by theiarmouncer and set apart from the rest ofthe
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`commercial. (FICO Ex. K, CIC 000181-84.) In addition, Applicant’s television commercials
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`close with a visual shot that clearly displays the hood of a race car with Applicant’s KNOW
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`YOUR SCORE mark accompanied by the SM symbol. (CIC Ex. 15, CIC 00182-8,4.)
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`The unauthorized Facebook page asserted by Opposer is inadmissible for lack of
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`foundation and irrelevant for lack of context. (FICO Ex. H, FIC000l 58.) Neither Opposer nor
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`Applicant has any idea who placed the advertisement, and Applicant could not replicate this
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`5 FICO extracts partial phrases from its evidence without identifying the specific location within its
`exhibits. Applicant endeavored to identify the original iteration of each alleged phrase in responding to
`Opposer’s argument.
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`

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`advertisement on Facebook when Opposer first disclosed it. Opposer has no information on how
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`long (or short) the advertisement was posted, or vvhether it may have been displayed specifically
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`to Opposer’s counsel due to their repeated Google searches for “Know Your Score.”
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`Finally, Opposer’s citation of App1icant’s “Creative Brief’ concerning proposed
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`television advertising also fails to support its descriptiveness contention. (FICO Br. at 9-10;
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`FICO Ex. H (filed under seal).) This internal document, as it is described in Opposer’s Notice of
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`Reliance, isinot probative of descriptive use by Applicant because it was not publicly distributed
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`and no consumers would have encountered it. Sluch evidence carmot support a claim of
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`descriptiveness. See, e.g., Oreck Holdings, LLC v. BISSELL Homecare, Inc., 2010 WL 985352
`(TTAB/Feb. 16, 2010) (internal documents withllower case use ofword healthy home were not
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`probative descriptive uses of mark HEALTHY HOME VACUUM for vacuum cleaner).
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`3.
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`Alleged Third-Party Use fiimilarly Fails to Show Descriptive Use.
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`While the majority of Opposer’s alleged third-party descriptive uses are “derivatives”
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`that show third-party uses of one or more of the discrete words in the mark, the remaining
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`balance of Opposer’s purported evidence of third-party descriptive use of “Know Your Score”
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`fails to show the “overwhelming” descriptive use contended by Opposer.
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`a.
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`Misquoting and References to Applicant
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`First, Opposer misquotes at least one alleged third-party, descriptive use. Opposer recites
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`excerpts from www.unionplus.com.webpage as stating “We want to know your score.” (FICO
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`Br. at 11.) The screenshot actually states “We want to you to know the score.” (FICO Ex. M,
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`CIC00082 (emphasis added).)
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`Further, at least two examples of Opposer’s alleged descriptiveness evidence in fact refer
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`to Applicant and its KNOW YOUR SCORE mark. (FICO Ex. T, www.realestateno11;htexas.com
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`touting Applicant’s FreeCreditReport.com; FICO Ex. T, www.randomstock.com, opening
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`9
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`sentence acknowledging consumer exposure to commercials for FreeCreditReport.com). In fact,
`at least two ofOpposer’s alleged examples ofdescriptive use include one ofthe phrases KNOW
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`YOUR SCORE or “know your credit score?” used as hyperlinks to either creditreport.com or
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`freecreditscorecom, which are both websites owned by Applicant and connected to its services
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`under its KNOW YOUR SCORE mark. (FICO Ex. W, http://ezinearticles.com/?Know-Your-
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`Score---A-Tip-To-Help—You-Get-a-Better-Deal&id=5585144; FICO Ex. W,
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`www.articles.moneycentral.msn.com.) Moreover, another example cited by Opposer fails to
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`include the mark KNOW YOUR SCORE within the content of the website. (FICO Ex. T,
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`wvvw.creditfairy.org (referenced in browser header only).)6
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`Opposer asserts other third party evidenoe uses KNOW YOUR SCORE as a phrase,
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`claiming that these uses are by competitors. (FICO Br. at 21.) But most of these third parties are
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`not competitors. These examples use the phrase precisely once, in the headline or introduction
`of a news or informational article, presumably as a way of suggesting the subject ofthe
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`commentary. Thus, the appearance of the phrase is limited to headlines or snappy opening
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`questions used on informational articles, in a non-trademark manner, and not to describe, identify
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`or refer to any party’s services.7 However, even if, as Opposer contends, Applicant’s mark were
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`commonly used by others, this fact alone would not establish that the slogan or phrase is merely
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`descriptive. See Six Continents Hotels, Inc. v. Marriott Int ’I, Inc., 2004 WL 2075110, at *4
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`6 Opposer’s Notice of Reliance includes other examples subject to attack on the same basis as those cited
`in Opposer’s brief. (See, e.g., FICO Ex. W, www.creditsesame.com, titled “9 Ways to Improve Your
`Credit Score,” and FICO Ex. W, www.getcurrency.com, titled “What’s In a Credit Score.” Neither of
`these documents mention App1icant’s applied-for mark or even any of Opposer’s alleged “derivatives.”)
`Applicant has primarily focused on the examples cited in Opposer’s brief.
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`7 The cases cited by Opposer also fail to support its position on this point. For example, In re Log Cabin
`Homes, Ltd., 52 U.S.P.Q.2d 1206 (TTAB 1999), involved hundreds of magazine stories demonstrating
`generic use in conjunction with the applicant’s concession that its mark was generic. Here, by contrast,
`the evidence is sparse and largely irrelevant, Applicant vigorously asserts the distinctiveness of its mark,
`and the inherent distinctiveness of the mark was recogiized by the PTO.
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`10
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`(TTAB Aug. 31, 2004) (finding slogan HOW LONG WILL YOU BE STAYING? for hotel
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`services suggestive and rejecting opposer’s evidence of intemet search results showing website
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`for lodgings and other entities using the phrase HOW LONG WILL YOU BE STAYING? in a
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`non-trademark manner).
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`Fatally for its evidence, Opposer provides no context whatsoever concerning any ofthese
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`webpages which constitute the sole evidence of alleged third party use put forward by Opposer.
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`To the extent that these third party uses even incorporate, Applicant’s KNOW YOUR SOORE
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`mark, they have limited, if any, probative value.8 See, e.g., In re Superior Access Insurance
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`Serv., Inc., 2009 WL 1692512, at *5 (TTAB May 13, 2009) (“the probative value of this
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`[webpage] evidence is limited because applicant presented no evidence concerning the extent to
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`which the third-party phases are used in commerce. For example, it is not known how frequently
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`these websites are viewed or how broad the consumer base [was].”); In re Murad, 2010 WL
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`667931, at *3 (TTAB Feb. 4, 2010) (“Without any supporting e