Designlab Learning, Inc.

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Mailed: March 13, 2026
UNITED STATES PATENT AND TRADEMARK OFFICE
_____
Trademark Trial and Appeal Board
_____
In re Designlab Learning, Inc.
_____
Serial No. 98192682
_____
Bradley P. Hartman of Hartman Titus PLC,
for Designlab Learning, Inc.
Drew Sander, Trademark Examining Attorney, Law Office 131,
Nicholas A. Coleman, Managing Attorney.
_____
Before Larkin, Elgin, and Casagrande, Administrative Trademark Judges.
Opinion by Elgin, Administrative Trademark Judge:
Applicant Designlab Learning, Inc. seeks registration on the Principal Register of
the proposed standard character mark UX ACADEMY (ACADEMY disclaimed) for
“Education services, namely, providing live and on-line classes, seminars, workshops
in the field of user interface and user experience design,” in International Class 41.1
1 Ser. No. 98192682 was filed on Sept. 22, 2023 under Trademark Act Section 1(a), 15 U.S.C.
§ 1051(a), alleging June 2015 as the date of first use anywhere and August 2015 as the date
of first use in commerce.

Serial No. 98192682
- 2 -
I. Background
The Examining Attorney originally refused registration of Applicant’s proposed
mark under Section 2(e)(1) of the Trademark Act, 15 U.S.C. § 1052(e)(1), on the
ground that UX ACADEMY is merely descriptive of Applicant’s services. In addition,
the Examining Attorney advised that the mark “appears to be generic” and the
Attorney “cannot recommend that applicant amend the application to proceed under
Trademark Act Section 2(f) [15 U.S.C. § 1052(f)] or on the Supplemental Register as
possible response options to this refusal.”2
In response to the refusal, Applicant disclaimed the term ACADEMY but asserted
that the mark as a whole has acquired distinctiveness under Section 2(f) based on a
declaration of five years of use.3 The Examining Attorney then refused registration
under Trademark Act Sections 1, 2, 3, and 45, 15 U.S.C. §§ 1051, 1052, 1053, and
1127, on the ground that UX ACADEMY is generic and as such incapable of
identifying Applicant’s services. The Examining Attorney also rejected the Section
2(f) claim.4
When the refusals were made final, Applicant requested reconsideration and
appealed.5 The Examining Attorney denied the request for reconsideration6 and the
2 May 20, 2024 Office Action at TSDR 3. Citations to the prosecution record refer to the USPTO
Trademark Status and Document Retrieval system (TSDR) in the downloadable .pdf format by
page number. References to the briefs on appeal refer to the Board’s TTABVUE docket system.
3 May 22, 2024 Response to Office Action.
4 June 18, 2024 Office Action.
5 Oct. 4, 2024 Final Office Action; Apr. 3, 2025 Request for Reconsideration.
6 May 14, 2025 Denial of Request for Reconsideration.

Serial No. 98192682
- 3 -
appeal proceeded. Applicant argues first that the mark is merely descriptive, not
generic; and second, that it has acquired distinctiveness. Both Applicant and the
Examining Attorney have filed briefs.
For the reasons set forth below, we affirm the refusal to register.
II. Is UX ACADEMY Generic?
A. Applicable Law
“Generic terms are common names that the relevant purchasing public
understands primarily as describing the genus of goods or services being sold.” In re
Dial-A-Mattress Operating Corp., 240 F.3d 1341, 1344 (Fed. Cir. 2001) (citations
omitted). Generic terms “are by definition incapable of indicating a particular source
of the goods or services, and cannot be registered as trademarks” on either the
Principal Register or Supplemental Register. Id.; see also USPTO v. Booking.com
B.V., 591 U.S. 549, 551 (2020) (“Booking.com”) (“A generic name – the name of a class
of products or services – is ineligible for federal trademark registration.”).
Importantly, to find a term generic, the evidence need not show that the term
refers to a whole category of services, i.e., the entire genus; rather, genericness may
be found if the evidence shows that the relevant public understands the term to refer
to a subcategory of the claimed genus of services or a key aspect of them. See In re
Cordua Rests., Inc., 823 F.3d 594, 605 (Fed. Cir. 2016) (“[T]he term ‘pizzeria’ would
be generic for restaurant services, even though the public understands the term to
refer to a particular sub-group or type of restaurant rather than to all restaurants.”);
In re 1800Mattress.com IP, LLC, 586 F.3d 1359, 1361, 1364 (Fed. Cir. 2009) (affirming

Serial No. 98192682
- 4 -
that “mattress” is generic for online retail store services featuring mattresses and
related goods); In re Twenty-Two Desserts, LLC, No. 86586833, 2019 TTAB LEXIS
269, at *4 (“Any term that the relevant public uses or understands to refer to the
genus of goods, or a key aspect or subcategory of the genus, is generic.”).
Whether a particular term or phrase is generic is a question of fact. Cordua Rests.,
823 F.3d at 599. Resolution of that question depends on the primary significance of
the term to the relevant public. Booking.com, 591 U.S. at 556. More specifically, the
genericness inquiry follows a two-part test:
(1) What is the genus of services at issue?
(2) Does the relevant public understand the designation primarily to
refer to that genus of services?
Bullshine Distillery LLC v. Sazerac Brands, LLC, 130 F.4th 1025, 1030 (Fed. Cir.
2025) (quoting Princeton Vanguard, LLC v. Frito-Lay North Am., Inc., 786 F.3d 960,
966 (Fed. Cir. 2015)); see also H. Marvin Ginn Corp. v. Int’l Ass’n of Fire Chiefs, Inc.,
782 F.2d 987, 990 (Fed. Cir. 1986) (setting forth two-part test).
B. What is the Genus of the Services?
Because the identification of services in an application defines the scope of rights
conferred by Section 7(b) of the Trademark Act, 15 U.S.C. § 1057(b), the genericness
inquiry ordinarily “focuses on the description of services set forth in the [application].”
Cordua Rests., 823 F.3d at 602 (quoting Magic Wand Inc. v. RDB Inc., 940 F.2d 638,
640 (Fed. Cir. 1991)). In most cases, the application’s identification of services
adequately defines the genus. In re Nordic Naturals, Inc., 755 F.3d 1340, 1343 (Fed.
Cir. 2014) (the relevant genus of goods was adequately defined by the identification

Serial No. 98192682
- 5 -
“nutritional supplements containing DHA”); In re ActiveVideo Networks, Inc., No.
77967395, 2014 TTAB LEXIS 283, at *55 n.77 (where an identification of goods “is
simple and clear enough . . . it may be used verbatim as the ‘genus.’”).
Here, the application identifies the services as: “Education services, namely,
providing live and on-line classes, seminars, workshops in the field of user interface
and user experience design.” We find that this adequately defines the genus at issue.
C. Does the Relevant Public Understand UX ACADEMY to
Primarily Refer to a Class or Category of Live and On-Line
Classes, Seminars, Workshops in the Field of User Interface
and User Experience Design?
Having determined that the genus is “live and on-line classes, seminars,
workshops in the field of user interface and user experience design,” we must
consider, under the second part of the inquiry, whether the relevant public
understands UX ACADEMY to primarily refer to a class or category of those services.
Loglan Inst. Inc. v. Logical Language Grp., 962 F.2d 1038, 1041 (Fed. Cir.
1992) (quoting Magic Wand, 940 F.2d at 641).
Whether a term is generic “turns on whether that term, taken as a whole, signifies
to consumers the class of ... services.” Booking.com, 591 U.S. at 557; see also In re
Steelbuilding.com, 415 F.3d 1293, 1297 (Fed. Cir. 2005) (“An inquiry into the public’s
understanding of a mark requires consideration of the mark as a whole.”). We may
presume that the relevant public consists of all potential purchasers of these services,
given that the identification of services contains no limitations as to channels of trade
or classes of consumers. In re Team Jesus LLC, No. 88105154, 2020 TTAB LEXIS
503, at *6.

Serial No. 98192682
- 6 -
To determine the relevant public’s understanding of a term, we may consider
evidence such as “consumer surveys, but also dictionaries, usage by consumers and
competitors, and any other source of evidence bearing on how consumers perceive a
term’s meaning.” Booking.com, 591 U.S. at 561 n.6; see also In re Merrill Lynch,
Pierce, Fenner & Smith Inc., 828 F.2d 1567, 1570 (Fed. Cir. 1987) (Board may
consider any evidence “obtained from any competent source, such as purchaser
testimony, consumer surveys, listings in dictionaries, trade journals, newspapers,
and other publications”); In re Uman Diagnostics AB, No. 88960633, 2023 TTAB
LEXIS 77, at *11-12.
Because the proposed mark consists of two recognizable terms, UX and
ACADEMY, we first consider the evidence and the significance of each term as a step
on the way to an ultimate determination of whether the proposed mark, as a whole,
is generic. Booking.com, 591 U.S. at 567 (it is proper to consider each term separately
and then together to determine if the compound is generic); 1800Mattress.com, 586
F.3d at 1363 (explaining that the Board appropriately considered the separate
meanings of “mattress” and “.com” when determining that the combination
“mattress.com” was generic).
1. Is UX Generic for Live and On-Line Classes, Seminars,
Workshops in the Field of User Interface and User
Experience Design?
As a general rule, “an abbreviation, acronym or initialism is generic if the wording
it stands for is generic of the goods or services, and the abbreviation, acronym or
initialism is understood by relevant purchasers to be substantially synonymous with
the generic wording it represents.” Uman Diagnostics, 2023 TTAB LEXIS 77, at

Serial No. 98192682
- 7 -
*4-5 (citing Baroness Small Estates, Inc. v. Am. Wine Trade, Inc., No. 92051369, 2011
TTAB LEXIS 63, at *3 n.2 (“The question to be answered is whether the initials for
generic or merely descriptive terms, or a combination thereof, are also generally
recognized and used as an accepted abbreviation for the term itself.”)). See, e.g., Cap.
Project Mgmt. Inc. v. IMDISI Inc., No. 121819, 2003 TTAB LEXIS 355, at *36 (finding
“TIA” substantially synonymous with generic term “time impact analysis”); In re Gen.
Aniline & Film Corp., 1962 TTAB LEXIS 173, at *1-2 (finding “PVP” substantially
synonymous with generic term “polyvinylpyrrolidone”).
Here, the Examining Attorney argues that evidence in the record shows that the
acronym UX is widely recognized as substantially synonymous with the term “user
experience.” The evidence of record includes definitions of UX in “Acronym Finder”;7
MERRIAM-WEBSTER DICTIONARY;8 and Yourdictionary.com (from AM. HERITAGE
DICTIONARY)9 as “User Experience.” In addition, the Examining Attorney points to
other materials of record that confirm that UX means “user experience,” including:
• Mockplus: “10 Best Schools for UX Design in the World and Get a UX
Degree ... User Experience design has become a crucial element in
the development of digital products. As the demand for UX designers
continues to grow....”;10
• Coursera: “Starting a career as a user experience designer (UX
designer) lets you leverage your problem solving and creativity to
design products people love to use”;11 and
7 May 20, 2024 Office Action at TSDR 5.
8 Oct. 4, 2024 Final Office Action at TSDR 8.
9 Id. at TSDR 12.
10 May 20, 2024 Office Action at TSDR 8-29.
11 June 18, 2024 Office Action at TSDR 24.

Serial No. 98192682
- 8 -
• Western Governors University: “A UX designer, or user experience
designer, is someone who optimizes the interaction between users
and products through user-friendly design.”12
We find, based on the evidence, that UX has a well-recognized meaning and is
substantially synonymous with “user experience.”
A term that names the “central focus” or “key aspect” of goods and/or services is
generic for the goods/service themselves. See, e.g., Real Foods Pty Ltd. v. Frito-Lay N.
Am., Inc., 906 F.3d 965, 980-81 (Fed. Cir. 2018) (“A term can be generic for a genus
of goods . . . if the relevant public understands the term to refer to a key aspect of that
genus.”) (citation omitted); Cordua Rests., 823 F.3d at 604 (finding CHURRASCOS
generic because it identifies a key aspect of a class of restaurants); ActiveVideo
Networks, 2014 TTAB LEXIS 283, at *60 (“a term that names the ‘central focus’ or
‘key aspect’ of goods and/or services is generic for the goods/service themselves”).
Thus, terms which name the content or subject matter of a particular delivery system,
including educational services, are generic for goods or services containing or
providing that content. See, e.g., In re Emergency Alert Sols. Grp., No. 86890565, 2017
TTAB LEXIS 99, at *16 (finding LOCKDOWN ALARM generic because relevant
customers would readily understand it to refer to a type of safety, security, and crisis
preparedness training services which was “quite literally the focus of the training. In
this case, relevant customers would readily understand LOCKDOWN ALARM to
12 Id. at TSDR 44-49. There are many more examples in the record indicating that UX is an
acronym for “user experience,” but we need not include them here, particularly because
Applicant does not dispute this fact. See 8 TTABVUE 6 (“the evidence showed the term UX
means “user experience….”).

Serial No. 98192682
- 9 -
refer to the type of training identified in the application”); In re Harcourt Brace
Jovanovich, Inc., 73280154, 1984 TTAB LEXIS 139, at *6 (finding LAW &
BUSINESS generic for arranging and conducting business law seminars, being no
more than a designation of the subject matter of these seminars).
As explained below, the record unequivocally shows that UX – meaning user
experience — will immediately convey to consumers one of the subject matters of
Applicant’s “live and on-line classes, seminars, workshops,” namely, “user experience
design.” There also no question that Applicant offers courses in UX (user experience)
design, as shown in its specimen of use advertising that students “Learn UX/UI
Design”:13
13 Sept. 22, 2023 Specimen at TSDR 1. “UI” refers to “user interface,” which is “software that
is designed to allow a computer user to interact with the operating system of a machine or
system (such as by selecting presented options or entering text commands).” MERRIAM-
WEBSTER DICTIONARY (www.merriam-webster.com/dictionary/user%20interface, accessed
Mar. 12, 2026).
The Board may take judicial notice of dictionary definitions, including online dictionaries
that exist in printed format, and we do so here. In re Cordua Rests. L.P., No. 85214191, 2014
TTAB LEXIS 94, at *6 n.4 (TTAB 2014), aff’d, 823 F.3d 594 (Fed. Cir. 2016); see also B.V.D.
Licensing Corp. v. Body Action Design Inc., 846 F.2d 727, 728 (Fed. Cir. 1988) (“Courts may
take judicial notice of facts of universal notoriety, which need not be proved, and of whatever
is generally known within their jurisdictions. To that end, dictionaries and encyclopedias
may be consulted”) (citations omitted).

Serial No. 98192682
- 10 -
Applicant advertises that its students will receive “over 490 hours of UX design
lessons and projects.”14 See, e.g., In re Reed Elsevier Properties, Inc., 482 F.3d 1376,
1379 (Fed. Cir. 2007) (Board appropriately looked at the applicant’s website “to
inform its understanding of the term” at issue); In re Gould Paper Corp., 834 F.2d
1017, 1019 (Fed. Cir. 1987) (assessing use of the term at issue on the applicant’s
specimen).
Other third-party evidence of record indicates that competitors use the term UX
in the context of explaining the subject matter of their educational offerings in the
field of user experience design. We have selected a few illustrative examples from the
record. Cornell University offers a certificate program in User Experience Design,
explaining:
This certificate program approaches UX and other forms of product
design through human-centered design, the practice of placing users
and their needs as the focus of the work. This includes everything
from creating effective and enjoyable user experiences to ethical and
safe interactions between the user research team and the product
The courses begin with the foundational concepts of good design
human-computer interaction. usability. user experience and user
research.15
Arizona State University offers an online degree in “Graphic Information
Technology – User Experience,” explaining that “User experience design, also known
as UX design, is the art and science of designing easy-to-use applications, websites
and other digital products …. A product enhanced by user experience design creates
relevant experiences for consumers, so they find value and satisfaction from
14 Sept. 22, 2023 Specimen at TSDR 3.
15 June 18, 2024 Office Action at TSDR 7.

Serial No. 98192682
- 11 -
interacting with the product.”16 The school offers “UX courses.”17 Purdue University
offers a “UX Design Major” offering “User Experience Design” courses.18 Academy of
Art University offers a “Online Interaction & UI/UX Design Degree.”19
These examples indicate that consumers of educational services for user
experience design would immediately understand UX as referring to the subject
matter of the courses. See, e.g., BellSouth Corp. v. DataNational Corp., 60 F.3d 1565,
1570 (Fed. Cir. 1995) (“The cases have recognized that competitor use is evidence of
genericness.”) (citation omitted); Royal Crown Co. v. Coca-Cola Co., 892 F.3d 1358,
1370 (Fed. Cir. 2018) (“evidence of competitive use” held to be relevant to issue of
genericness). In this context, UX is generic.
2. Is ACADEMY Generic for Live and On-Line Classes,
Seminars, Workshops in the Field of User Interface and
User Experience Design?
As noted above, Applicant disclaimed ACADEMY, apart from the mark as a whole,
as merely descriptive or generic. Trademark Act Section 6(a), 15 U.S.C.
§ 1056(a) (“The Director may require the applicant to disclaim an unregistrable
component of a mark otherwise registrable.”); In re Creative Goldsmiths of Wash.,
Inc., No. 398596, 1986 TTAB LEXIS 123, at *4 (“[B]oth the statute and Patent Office
policy require that unregistrable matter be disclaimed; and since the common
16 Id. at TSDR 15, 16-17.
17 Id. at TSDR 17.
18 Id. at TSDR 50, 52.
19 Id. at TSDR 59.

Serial No. 98192682
- 12 -
descriptive name of an article is unregisterable, it must be disclaimed”) (quoting Ex
parte Doane Ag. Serv., Inc., 1957 Commr. Pat. LEXIS 224, at *3).
The Examining Attorney made of record several dictionary definitions of
“academy,” including:
• THE AM. HERITAGE DICTIONARY: “A school for special instruction”;20
and
• CAMBRIDGE DICTIONARY: “[A] school that teaches a particular subject
or trains people for a particular job.”21
Applicant made of record dictionary definitions of “academy” in MERRIAM-WEBSTER
DICTIONARY as including “an institution for training in special subjects or skills.”22
Third-party evidence made of record confirms that “academy” has a well-
recognized meaning as a type of educational school or service, including online
20 Oct. 4, 2024 Final Office Action at TSDR 83.
21 Id. at TSDR 91.
22 Apr. 3, 2025 Request for Reconsideration at TSDR 30.

Serial No. 98192682
- 13 -
educational services in user experience (UX) design,23 and Applicant appears to
concede that the term ACADEMY, alone, is generic.24
We conclude that ACADEMY is generic as applied to Applicant’s services.
3. Is UX ACADEMY More Than the Sum of Its Generic
Parts?
Having determined that each term in the mark is generic as applied to Applicant’s
services, we look at the compound term UX ACADEMY in its entirety to determine
how relevant consumers of Applicant’s educational services will perceive the
combined term. More specifically, we consider whether the combination of the generic
terms UX and ACADEMY results in a term which is more than the sum of its generic
parts. See Booking.com, 591 U.S. at 560 (“A compound of generic elements is generic
if the combination yields no additional meaning to consumers capable of
distinguishing the goods or services.”) (emphasis omitted).
23 See 10 TTABVUE 6 (discussing examples of materials using ACADEMY for various
computer design educational services attached to Oct. 4, 2024 and June 18, 2024 Office
Actions). Applicant criticizes some of these materials as coming from foreign websites,
including some that have been translated to English. 11 TTABVUE 3-4. We have not
considered the apparently translated sources. To the extent that websites appear to be from
English-language foreign sources, they may be relevant to determine if a mark is merely
descriptive or generic. In re Bayer AG, 488 F.3d 960, 969 (Fed. Cir. 2007) (“Information
originating on foreign websites or in foreign news publications that are accessible to the
United States public may be relevant to discern United States consumer impression of a
proposed mark.”) (citations omitted); In re Well Living Lab Inc., No. 86440401, 2017 TTAB
LEXIS 156, at *12 n.10 (discussing considerations including whether websites are in English
and nature of the goods), aff’d mem. 749 Fed. Appx. 987 (Fed. Cir. 2018). Nonetheless, these
sources only confirm what we already know – that ACADEMY is generic for an online or in-
person educational service.
24 See 8 TTABVUE 10 (“Even if the word ACADEMY is generic, the word UX is not.”); id. at
11 (“[T]he examining attorney contends that combining a generic word like ‘ACADEMY’ with
a descriptive word like ‘UX’ makes the resulting trademark generic for educational
services.”).

Serial No. 98192682
- 14 -
Applicant devotes most of its energy to this stage of the inquiry, arguing that
Applicant is the only user of the name UX ACADEMY to identify any services.25
Applicant argues that “[a] competitor’s use of a term is evidence of the genericness of
that term.”26
Evidence that others use the precise term proposed as a trademark in a generic
way is evidence of genericness, but it is well settled that such evidence is not required
where (as here) other evidence shows that consumers will understand the term to
refer to the genus of Applicant’s educational services regarding user experience
design. See, e.g., Nordic Naturals, 755 F.3d at 1345 (“[W]hile Nordic may have been
the first to use the phrase ‘children’s DHA’ in this market, the question remains …
what does ‘children’s DHA’ primarily mean to the relevant public? The evidence …
constitutes sufficiently clear evidence that the relevant public uses ‘children’s DHA’
primarily to refer to the category of DHA products for children.”); Gould Paper, 834
F.2d at 1018-19 (affirming the Board’s finding that SCREENWIPE was generic for
“pre-moistened, antistatic cloth for cleaning computer and television screens” based
on dictionary definitions of the words, third-party registrations, and the applicant’s
own generic use of the claimed mark on its specimen, even though there was no
evidence of third-party use of the proposed mark); In re Empire Tech. LLC, No.
85876688, 2017 TTAB LEXIS 232, at *60 (rejecting the applicant’s argument that the
fact that none of its competitors use the term COFFEE FLOUR raised “doubt as to
25 8 TTABVUE 6, 7.
26 Id. at 6 (citing Remington Prods., Inc. v. N. Am. Philips Corp., 892 F.2d 1576 (Fed. Cir.
1990) and BellSouth, 60 F.3d at 1565).

Serial No. 98192682
- 15 -
whether the term actually primarily refers to a genus of goods or services and
whether competitors can effectively identify their goods or services without using that
particular phrase,” in view of the “well-settled principle that being the first and only
user of a generic term even if the public associates it with the first user does not make
an otherwise generic term non-generic”).
In any event, the record belies the factual premise of Applicant’s argument that
no one else uses UX ACADEMY in connection with similar services. The Examining
Attorney points to evidence of third-party use of UX and ACADEMY together to refer
to services that are effectively identical to Applicant’s, namely, educational services
in the field of user experience design, such as:27
• “Dark UX Academy”;28
• “UX Academy” (by My UX Academy);29
• “UX Writing Academy Course 2.0”;30
• “UX 365 Academy”;31 and
• “Conflux User Experience Academy” and “UX Academy.”32
Applicant concedes that this evidence shows “others using UX ACADEMY as part
of their own trademarks,” but argues it is not evidence of generic usage of UX
27 See 10 TTABVUE 7-8.
28 May 14, 2025 Denial of Request for Reconsideration at TSDR 7-10.
29 Id. at TSDR 11-17.
30 Id. at TSDR 18-23.
31 Id. at TSDR 24-42.
32 Id. at TSDR 43-48.

Serial No. 98192682
- 16 -
ACADEMY per se.33 While this is true, most of these third party uses have an
additional arguably distinctive element, such as “dark,” “my,” and “365” to
distinguish them from other uses of the common elements UX and ACADEMY.
Applicant’s proposed mark does not have any additional element.
Applicant also points out that some of these uses appear to come from outside of
the United States.34 Although this argument is mainly supported only by attorney
argument and not the evidence of record, as we stated above, foreign English
language uses may be relevant to show consumer perception in the United States.35
Moreover, students may attend online courses from anywhere in the world. Indeed,
Applicant’s own materials advertise its “global community,” and mentors “from
around the world” such as Buenos Aires, Amsterdam, and Dubai.36
Applicant also does not propose an alternative meaning for UX ACADEMY
together as opposed to UX and ACADEMY separately. Cf. In re Colonial Stores Inc.,
394 F.2d 549 (CCPA 1968) (finding SUGAR & SPICE suggestive for “bakery
products”); In re Shutts, 1983 TTAB LEXIS 150, at *7 (finding SNO-RAKE suggestive
for “a snow removal hand tool having a handle with a snow-removing head at one
end, the head being of solid uninterrupted construction without prongs”). And we do
33 11 TTABVUE 4.
34 8 TTABVUE 21-23 (pointing out the website for My UX Academy lists a London phone
number; there is no evidence of use of Dark UX Academy in the United States; and Conflux
is “an Italian company with offices in Spain, Germany, Canada and New York. It is unknown
where the company provides its services.”).
35 See supra note 23.
36 Sept. 22, 2023 Specimen at 1.

Serial No. 98192682
- 17 -
not find one. In fact, Applicant advertises its courses as a way to “Learn UX Design
With UX Academy” as shown below, reinforcing the ordinary meaning of the terms
in the proposed mark:37
Instead, Applicant argues that UX “suggests or describes the training services
offered by Applicant,” which when combined with ACADEMY creates a non-generic
term. For support, Applicant relies on a number of third-party Principal Register
registrations for ___ ACADEMY-formative marks (such as ALARM ACADEMY and
GRILL ACADEMY) which have disclaimers of “academy” and a claim of acquired
distinctiveness pursuant to Trademark Act Section 2(f).38 But, as the Examining
37 Apr. 3, 2025 Request for Reconsideration at TSDR 125.
38 Id. at TSDR 75-96 (TSDR records of registrations). Applicant asserts these marks “were
allowed for registration on the Principal Register based solely on a claim of at least five years
of substantially exclusive and continuous use in commerce.” 8 TTABVUE 10. We can see from
the face of the records that the registrations issued under Section 2(f) with a disclaimer of
ACADEMY, but we cannot determine the evidence upon which the Section 2(f) claim was
accepted. Attorney argument is not evidence, Cai v. Diamond Hong, Inc., 901 F.3d 1367, 1371
(Fed. Cir. 2018), and thus we disregard this argument.

Serial No. 98192682
- 18 -
Attorney points out,39 the fact that third-party registrations exist for marks allegedly
similar to Applicant’s proposed mark “is not conclusive on the issue of descriptiveness
or genericness … Marks that are merely descriptive or generic do not become
registrable simply because other seemingly similar marks appear on the register.” In
re Consumer Prot. Firm PLLC, No. 87445801, 2021 TTAB LEXIS 67, at *28-29 (citing
In re Scholastic Testing Serv., Inc., 1977 TTAB LEXIS 97, at *4-5).40
These other ACADEMY-formative marks that have been allowed to register do
not persuade us that Applicant’s proposed mark UX ACADEMY is not generic. As
Applicant acknowledges, the Board is not bound by prior decisions made in connection
with different marks, and each case must be decided on the proceeding record before
us and on its own merits.41 See, e.g., In re Shinnecock Smoke Shop, 571 F.3d 1171,
1174 (Fed. Cir. 2009) (“Applicant’s allegations regarding similar marks are irrelevant
because each application must be considered on its own merits.”).
We find the meaning of the compound term UX ACADEMY to be no more than
the sum of its individual generic parts, and thus it is generic and not registrable as a
whole.
39 See 10 TTABVUE 9.
40 The same is true for the third-party application to register the mark UXD ACADEMY that
was allowed, and that Applicant opposed. See Sept. 18, 2024 Response to Office Action at
TSDR 41.
41 See 8 TTABVUE 11 (“Applicant recognizes that each application must be decided on its
own facts and the USPTO is not bound by prior decisions involving different records”).

Serial No. 98192682
- 19 -
III. Acquired Distinctiveness
Applicant argues that its proposed mark UX ACADEMY, with “academy
disclaimed,” has acquired distinctiveness and, therefore, it may be registered under
Section 2(f) of the Trademark Act. We have found that UX ACADEMY is a generic
term, and therefore it can never acquire distinctiveness.
However, for the sake of completeness, we will consider Applicant’s claim and
evidence of acquired distinctiveness, assuming for this purpose only that UX
ACADEMY is not generic but instead is highly descriptive in that it “immediately
conveys knowledge of a … feature … or characteristic of the … services with which it
is used,” In re Chamber of Com. of the U.S., 675 F.3d 1297, 1300 (Fed. Cir. 2012)
(quoting Bayer, 488 F.3d at 963).
“To show that a mark has acquired distinctiveness, an applicant must
demonstrate that the relevant public understands the primary significance of the
mark as identifying the source of a product or service rather than the product or
service itself.” Steelbuilding.com, 415 F.3d at 1297 (citing Qualitex Co. v. Jacobson
Prods. Inc., 514 U.S. 159, 163 (1995)). Applicants may show acquired distinctiveness
by direct or circumstantial evidence. Schlafly v. St. Louis Brewery, LLC, 909 F.3d
420, 424 (Fed. Cir. 2018) (“The Board and courts have recognized that both direct and
circumstantial evidence may show secondary meaning.”). Direct evidence includes
testimony, and declarations or surveys of consumers as to their state of mind. In re
Ennco Display Sys., No. 74439206, 2000 TTAB LEXIS 235, at *11. Circumstantial
evidence, on the other hand, is evidence from which we may infer a consumer

Serial No. 98192682
- 20 -
association, such as years of use, prior registrations, extensive sales and advertising,
unsolicited media coverage, and any similar evidence showing wide exposure of the
mark to consumers. Id.; see also Tone Bros. v. Sysco Corp., 28 F.3d 1192, 1202 (Fed.
Cir. 1994) (listing, as examples of circumstantial evidence, advertising, sales figures,
and intentional copying by competitors).
In particular, the Federal Circuit set out factors to consider in assessing whether
a mark has acquired distinctiveness, stating as follows:
[T]he considerations to be assessed in determining whether a mark
has acquired secondary meaning can be described by the following
six factors: (1) association of the trade[mark] with a particular source
by actual purchasers (typically measured by customer surveys);
(2) length, degree, and exclusivity of use; (3) amount and manner of
advertising; (4) amount of sales and number of customers; (5)
intentional copying; and (6) unsolicited media coverage of the
product embodying the mark.
Converse, Inc. v. Int’l Trade Comm’n, 909 F.3d 1110, 1120 (Fed. Cir. 2018) (the
“Converse factors”); see also In re SnoWizard, Inc., No. 87134847, 2018 TTAB LEXIS
435, at *15-16. On this list, no single factor is determinative and “[a]ll six factors are
to be weighed together in determining the existence of secondary meaning.” In re
Guaranteed Rate, Inc., No. 87054820, 2020 TTAB LEXIS 265, at *8 (quoting
Converse, 909 F.3d at 1120); In re Tires, Tires, Tires Inc., No. 77091459, 2009 TTAB
LEXIS 654, at *15). We need consider only those factors for which evidence is in the
record. Shenzhen IVPS Tech. Co. v. Fancy Pants Prods., LLC, No. 91263919, 2022
TTAB LEXIS 383, at *46-47 (considering the Converse factors of length of use and
amount and manner of advertising, which were the only factors addressed by witness
testimony and evidence);

Serial No. 98192682
- 21 -
Typically, more evidence is required where a mark is so highly descriptive that
purchasers seeing the matter in relation to the named goods or services would be
unlikely to believe that it indicates source in any one entity. Id.; see also Heritage All.
v. Am. Pol’y Roundtable, 133 F.4th 1063, 1068 (Fed. Cir. 2025) (“The degree of
descriptiveness of a term, including whether the term is ‘highly descriptive,’ is
relevant to whether the term has ‘acquired distinctiveness,’ because acquired
distinctiveness is more difficult to establish for a highly descriptive term.”) (citations
omitted). Because we find here, as a threshold matter, that the proposed mark as a
whole is (at best) highly descriptive, Applicant’s burden of establishing acquired
distinctiveness under Section 2(f) is “commensurately high.” In re Virtual Indep.
Paralegals, LLC, No. 86947786, 2019 TTAB LEXIS 74, at *35.
In support of its claim of acquired distinctiveness, Applicant relies on the
declaration of its CEO, Harish Venkatesan. Mr. Venkatesan provided testimony and
evidence including: testimony that “thousands” of students from “all 50 states” have
enrolled in UX ACADEMY courses; Applicant has had over a decade of substantially
exclusive use; Applicant has spent “millions of dollars” in marketing and advertising
expenses in the United States since 2015, in the “hundreds of thousands” of dollars
each year; Applicant has earned “millions of dollars each year” in revenue; Applicant
brought an opposition against a similar mark, UXD ACADEMY for education services
(Opp. No. 91289339) resulting in withdrawal of the application; as well as copies of
sample advertisements by Applicant for its services; and examples of unsolicited

Serial No. 98192682
- 22 -
media coverage from FORTUNE magazine and Medium.com; and social media and blog
posts.42
The Examining Attorney, while maintaining that the proposed mark is generic,
found that the evidence was insufficient to show acquired distinctiveness in light of
the highly descriptive nature of the proposed mark. We agree that the evidence is
insufficient here. Despite Applicant’s arguably substantial gross sales and length of
use, there is no evidence of the extent to which the public perceives the term UX
ACADEMY as indicating source in Applicant. Applicant did not provide precise
evidence of sales or advertising expenditures; rather, it submitted very round
numbers over a decade of use.43 We are unable to determine from such data whether
Applicant’s use has grown or lessened significantly over time, or how such use stacks
42 Apr. 3, 2025 Request for Reconsideration at TSDR 98-213. A video was submitted
separately on the same date. Applicant conceded during prosecution that it is not aware that
there has been any intentional copying of its proposed mark, including UXD ACADEMY. Id.
at TSDR 20. Rather, Applicant asserts the withdrawal of the application and
acknowledgement of Applicant’s superior rights, see Sept. 18, 2024 Response to Office Action
at TSDR 41, is proof that Applicant’s proposed mark is a “strong and enforceable mark.”
8 TTABVUE 8. There is no proof on the face of the exhibit that the applicant acknowledged
Applicant’s rights, only that it voluntarily withdrew the application. There are many reasons
that a party may choose to do so, including simply avoiding the costs and distractions of
litigation. E.g., In re Wella Corp., 565 F.2d 143, 144 n.2 (CCPA 1977) (“Appellant argues that
various letters (of record) from competitors indicating their discontinuance of use of its mark
upon threat of legal action are evidence of its distinctiveness, but we agree with the TTAB
that such evidence shows a desire of competitors to avoid litigation rather than
distinctiveness of the mark.”); Milwaukee Elec. Tool Corp. v. Freud Am., Inc., No. 92059634,
2019 TTAB LEXIS 384, at *60 (“[W]e find that competitors likely acquiesced to Freud’s
assertion of its exclusive right to use the color red on saw blades to avoid litigation.”), vacated-
in-part, affirmed-in-part by consent judgment, No. 1:20-cv-00902-RGA (D. Del. Apr. 12, 2022).
43 Applicant commented that, as a private company, it was unwilling to submit confidential
financial and sales information into the official public record. 8 TTABVUE 12-13 n.1. While
this position is understandable, we cannot base a decision on that which we do not know and
evidence that we do not have.

Serial No. 98192682
- 23 -
up in the market vis-à-vis Applicant’s competitors. See, e.g., In re Boston Beer Co.,
198 F.3d 1370 (Fed. Cir. 1999) (claim based on annual sales under the mark of
approximately $85 million, and annual advertising expenditures in excess of $10
million, not sufficient to establish acquired distinctiveness in view of highly
descriptive nature of mark); In re Noon Hour Food Prods., Inc., No. 78618762, 2008
TTAB LEXIS 23 (despite almost one hundred years of use and cancelled seventy-year
old registration for BOND-OST for cheese, evidence insufficient to establish acquired
distinctiveness of highly descriptive mark); Target Brands, Inc. v. Hughes, No.
91163556, 2007 TTAB LEXIS 94 (sales alone without context not sufficient to
establish acquired distinctiveness); In re Candy Bouquet Int’l, Inc., No. 78058216,
2004 TTAB LEXIS 544 (sales and length of use not sufficient to establish acquired
distinctiveness for highly descriptive term).
We have considered the articles that purport to “rank” UX courses, along with the
other third-party uses submitted to show recognition of Applicant’s proposed mark.
We agree with the Examining Attorney’s argument that these third-party materials
consistently use Applicant’s name Designlab alongside UX ACADEMY:44
• “Best UX/UI bootcamps of 2025,” Fortune Magazine (using
“Designlab” and “Designlab UX Academy”; ranking Applicant’s
course: “Best for hands-on learning: Designlab”));45
• “Top 12 UI/UX Design Courses to Launch Your Career,” Medium.com
(“Designlab is a platform that offers a variety of design-centric
courses, from basic 4-week courses covering fundamentals to a full-
or part-time UX Academy path that covers everything you need to
prepare for a career in UX/UI. In addition to live instruction and
44 10 TTABVUE 12.
45 Apr. 3, 2025 Request for Reconsideration at TSDR 127-28, 132-133.

Serial No. 98192682
- 24 -
mentorship, DesignLab provides career support via a personal coach
who helps new designers land their first job”);46
• “Comparing UX Courses & Why I chose Designlab,” Medium.com
(listing “Designlab – UX Academy” and discussing “Designlab”
offerings, and in one place its “UX Academy course”);47
• “Designlab’s UX Academy – Week 1,” Medium.com (uses “UX
Academy,” “Design lab’s [sic] UX Academy Boot Camp,” ‘Designlab’s
UX Academy,” and (most frequently) “DesignLab” alone);48
• “Any CareerFoundry or Designlab UX Academy students/ graduates
here? I'm trying to compare the two,” Reddit.com post (uses
“Designlab UX Academy” in title and “DesignLab” alone in body of
post; responses use “DesignLab”);49
• “Switching careers and can’t decide between Career foundry vs.
Designlab UX Academy. (Part time),” Reddit.com post (uses
“Designlab UX Academy” in title; responses use “Designlab” and
“DesignLab”);50
• “In Depth Review: Designlab’s UX Academy,” UXbeginner.com (“If
you are considering Designlab’s flagship program, UX Academy….”;
article uses UX Academy and “Designlab’s UX Academy”; a response
uses “DesignLab” alone);51
• “UX DESIGN: Has Anyone Done UX Academy with Designlab?,”
Reddit.com post (responses to post use “DesignLab” and “Academy”
alone);52 and
46 Id. at TSDR 153.
47 Id. at TSDR 170-74. A user comment on this article reads, “Thanks so much for this great
breakdown, Joyce! I’ve pretty much narrowed down my options to Designlab and self-
teaching.” Id. at TSDR 175.
48 Id. at TSDR 179-90.
49 Id. at TSDR 192-95.
50 Id. at TSDR 197-200.
51 Id. at TSDR 202-07.
52 Id. at TSDR 210-11.

Serial No. 98192682
- 25 -
• “What do you wish you knew before starting UX academy?,” YouTube
video (subtitle is “Here are 6 things I wish I knew before enrolling at
Designlab’s UX Academy”).53
None of these materials include the proposed mark UX ACADEMY apart from its
identified source, Designlab. Even Applicant’s own materials use UX ACADEMY
with its name Designlab, such as:54
Thus, the evidence does not support the proposition that relevant consumers
recognize the proposed mark, standing alone, as a designation of source. In re
Franklin Cnty. Hist. Soc’y, No. 77699113, 2012 TTAB LEXIS 326, at *22 (the
applicant is not known by the proposed mark CENTER OF SCIENCE AND
53 Id. at TSDR 213 (the video was submitted separately).
54 Apr. 3, 2025 Request for Reconsideration at TSDR 103, 119, 120, and 122.

Serial No. 98192682
- 26 -
INDUSTRY but rather by the shortened acronym COSI; if any term has gained a
degree of renown, it is the acronym; none of the examples shows use of the proposed
mark without the acronym, and there is no indication that any goodwill associated
with COSI has somehow been transferred to CENTER OF SCIENCE AND
INDUSTRY); cf. ProMark Brands Inc. v. GFA Brands, Inc., No. 91194974, 2015 TTAB
LEXIS 67, at *43 (“It is well-settled that, where, as here, a party’s advertising and
sales data is based on materials and packaging in which the mark at issue is almost
always displayed with another mark, such data does not prove that the mark at issue
possesses the requisite degree of consumer recognition.”) (citing In re Bongrain Int’l
(Am.) Corp., 894 F.2d 1316, 1318 (Fed. Cir. 1990)); In re Mogen David Wine Corp.,
372 F.2d 539, 541 (CCPA 1967) (where advertising depicting the bottle design sought
to be registered always featured the word mark MOGEN DAVID, such evidence failed
to prove acquired distinctiveness in the design itself).
There also is evidence in the record of third parties using names highly similar to
or including UX ACADEMY for related services, such as those discussed above.55 This
evidence undercuts the idea that Applicant has made “substantially exclusive use” of
the term UX ACADEMY. See Galperti, Inc. v. Galperti S.r.L., 17 F.4th 1144,
1149 (Fed. Cir. 2021) (any third-party use may undercut a claim of substantially
exclusive use).
In sum, the circumstantial evidence of record falls well short of establishing
acquired distinctiveness in this case where the proposed mark is highly descriptive
55 See supra text accompanying notes 28, 29, 30, 31, and 32.

Serial No. 98192682
- 27 -
(if not generic). This evidence, much of which is vague, is outweighed by other
evidence showing that the phrase UX ACADEMY is – at best – highly descriptive,
coupled with the absence of any direct evidence from relevant consumers showing
recognition of the wording by consumers as a source indicator for Applicant’s services.
See Candy Bouquet, 2004 TTAB LEXIS 544, at *26-27 (finding absent direct evidence,
highly descriptive term had not acquired distinctiveness).
Accordingly, even if the designation UX ACADEMY was found to be merely
descriptive rather than generic, given the highly descriptive nature of the term, much
more evidence (especially in the form of direct evidence from customers) than what
Applicant has submitted would be necessary to show that the designation has become
distinctive as an identifier of the source of Applicant’s services.
IV. Conclusion
We conclude that the proposed mark UX ACADEMY is generic for the identified
educational services. If it is not, the evidence of record is insufficient to establish
acquired distinctiveness in such a highly descriptive mark.
Decision
The refusal to register application Ser. No. 98192682 is affirmed.