How to Overcome the Genericness Hurdle at the U.S. Trademark Trial and Appeal Board

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The Following Article is reprinted, with permission, from INTA Bulletin, Vol. 74, No.8

From 2013 through 2017, the U.S. Trademark Trial and Appeal Board (TTAB) issued 10 opinions in which it ruled on claims whose marks were generic for their goods or services. Of these opinions, nine resulted in a finding that the mark was unregistrable. A closer look at those opinions reveals what owners and practitioners should know when faced with the chance to argue genericness before the TTAB.

Under U.S. trademark law, a mark is generic if its primary significance to the relevant public is the goods or services it covers. 15 U.S.C. § 1064(3); In re Am. Fertility Soc’y, 188 F.3d 1341, 51 USPQ2d 1832 (Fed. Cir. 1999). In resolving this question, the TTAB used a two-part factual inquiry: first, what is the genus, or category, of goods or services at issue? Second, is the term that is sought to be registered understood by the relevant public primarily to refer to that genus of goods or services? When determining the genus of the goods or services, the inquiry should focus on the description set forth in the application for registration. If a mark is generic for a particular category of goods, then it would also be found to be generic of services that are directed to or focused on that class of goods. In re Hotels.com LP, 573 F.3d 1300, 91 USPQ2d 1532, 1535 (Fed. Cir. 2009). A generic term will not be permitted to be registered as a trademark, even by the person who first starts using the term. In re Merrill Lynch, Pierce, Fenner, & Smith, Inc., 828 F.2d 1567, 4 USPQ2d 1141, 1142 (Fed. Cir. 1987); In re Pennington Seed Inc., 466 F.3d 1053, 80 USPQ2d 1758, 1762 (Fed. Cir. 2006).

Competent evidence to show how the relevant public understands a term includes purchaser testimony, consumer surveys, dictionary definitions, trade journals, newspapers, and other publications. Magic Wand, 19 USPQ2d at 1553. When the U.S. Patent and Trademark Office (USPTO) refuses registration on the basis of genericness, it bears the burden of establishing that the mark is generic with clear evidence. In re Gould Paper Corp., 834 F.2d 1017, 5 USPQ2d 1110, 1111 (Fed. Cir. 1987); In re Merrill Lynch, Pierce, Fenner & Smith, Inc., 828 F.2d 157, 4 USPQ2d 1141, 1143 (Fed. Cir. 1987).

TTAB Doesn’t Twist on PRETZEL CRISPS Mark

The TTAB issued three opinions touching on claims that marks for new products were generic for those products between 2013 and 2017. In each opinion, the TTAB concluded that the mark was, in fact, generic for the product. Two of the opinions concerned the PRETZEL CRISPS mark, which was initially registered by Princeton Vanguard on the Supplemental Register for “Pretzel Crackers” in International Class 30. Frito-Lay food company opposed the attempt to register the mark on the Principal Register and sought to cancel the original registration based on a claim that the mark was generic for the goods. See Frito-Lay N. Am., Inc. v. Princeton Vanguard, LLC, 109 USPQ2d 1949 (TTAB 2014) [precedential]. Princeton Vanguard argued that the mark could not be generic because there were no dictionary or encyclopedia entries for the full term, “Pretzel Crisps,” and that “crisp” was not merely synonymous with “cracker,” based on prior registrations in which the term “crisp” was not disclaimed. The TTAB rejected these arguments and attributed little weight to the prior registrations in which all but one of the cited registrations involved non-cracker snacks. The TTAB also noted that Princeton Vanguard had used “crisps” generically in the nutrition facts on its product’s packaging. The TTAB canceled the original registration and rejected registration on the Principal Register.

Princeton Vanguard appealed to the Federal Circuit, which held that the TTAB had improperly applied the relevant standards and that it did not adequately consider the survey evidence that was submitted by the parties. Princeton Vanguard, LLC v. Frito-Lay N. Am., Inc., 786 F.3d 960 (Fed. Cir. 2015). On remand, the TTAB sustained the opposition and canceled the Supplemental Register registration. Frito-Lay N. Am., Inc. v. Princeton Vanguard, LLC, 124 USPQ2d 1184 (TTAB 2017) [precedential]. The TTAB began its analysis by considering the constituent parts of the mark. In accordance with the direction from the Federal Circuit, the TTAB considered the value of the surveys conducted by the parties and looked to case law from other circuits to assign the proper value. Both parties submitted Teflon surveys, which the TTAB found to be of limited value when offered in a matter in which one party claims rights in a term which it did not coin, rather than when a mark has become generic through misuse. The TTAB ultimately found the survey evidence irrelevant.

COFFEE FLOUR Mark Loses Appeal

The remaining opinion regarding new products concerned the COFFEE FLOUR mark for “flour made by processing and blending together coffee cherry skins, pulp, and pectin for use, alone or in combination with other plant and milk-based products, as a dry ingredient in food and beverage products for consumer use,” in International Class 30. In re Empire Tech. Dev. LLC, 123 USPQ2d 1544 (TTAB 2017) [precedential]. Here the examining attorney refused registration on the grounds that the mark was merely descriptive of the goods. After Empire Technology Development provided evidence to counter this finding, the examining attorney amended the refusal to be that the mark was generic for the goods. On appeal to the TTAB, Empire Technology Development attempted to combine the two steps of the genericness inquiry into a single question: is the mark the genus of goods, rather than arguing whether the public perceives the mark as primarily referring to the genus. The TTAB rejected this standard and found that the mark was generic for the goods.

In the opinions on both of these marks, the TTAB noted that although Empire Technology Development created the product at issue, it failed to create both a generic name for the goods and a mark capable of identifying the applicant as the source of the goods. This was shown by the applicants’ own evidence that reflected use of “Coffee Flour” to refer to the product in answering questions concerning how it was made, and use of “Crisps” in defining the serving size of the PRETZEL CRISP brand crackers. Additionally, the TTAB, in Frito-Lay II, noted the limited usefulness of Teflon surveys when determining whether a party has rights in a term which it did not coin and did not exclusively control. Rather, these surveys are more useful to determine whether a term that once functioned as a mark has become generic through misuse.

Registered Marks Found to Be Generic

In a second set of decisions, the TTAB found that prior determinations that the mark, or components of the mark, were not generic did not preclude later findings of genericness. The TTAB found the stylized CHURRASCOS mark to be generic for “bar and restaurant services; catering.” In re Cordua Rest. LP, 120 USPQ2d 1227 (TTAB 2014) [precedential]. In reaching that conclusion, the TTAB considered the dictionary definition of the word “churrasco,” finding that it is defined as a type of steak cooked over an open fire. The TTAB further noted that several pieces of evidence indicated that the public also understood “churrasco” to refer to a type of restaurant, even though the word for the restaurant in Spanish would be churrascaria. Cordua relied heavily on the fact that it already owned a registration for the CHURRASCO mark in standard character format for the same services in arguing that it could not be found generic. The TTAB, and subsequently the Federal Circuit on appeal, rejected this argument, finding that the TTAB was not bound by the prior examining attorney who permitted the registration.

The TTAB also rejected registration of “CloudTV” in standard character form for providing services relating to broadcast and streaming video as well as associated networks and software in International Classes 9, 38, 41, and 42. In re ActiveVideo Networks, Inc., 111 USPQ2d 1581 (TTAB 2014) [precedential]. It found that through changes in technology, “TV” is understood to mean streaming images to some form of electronic device having a screen. The TTAB also considered definitions of the term “cloud” related to computing and found that the fact that it may have a different meaning in the meteorological context was not controlling.

In denying registration of “Churrascos” and “CloudTV,” the TTAB noted that trademark rights are fluid. That a term could once be understood as referring to a purveyor of goods or services does not mean that it cannot later be found to be generic for those goods or services. This is consistent with the line of cases finding registered marks to have suffered from genericide and also serves as a reminder that examining attorneys and the TTAB are not bound to follow any prior examining attorney decisions concerning other marks, whether or not they are owned by the current applicant.

In a similar vein to the “CloudTV” matter, the TTAB reaffirmed that adding “.com” to a generic term does not make the mark non-generic. In re Meridian Rack & Pinion, 114 USPQ2d 1462 (TTAB 2015) [precedential]. Meridian Rack & Pinion argued that “BuyAutoparts.com” was not generic for online retail store services featuring auto parts in International Class 35 on the dual bases that it sells, not buys, auto parts on its website and that the addition of “.com” vitiates any genericness of “BuyAutoparts” standing alone. Relying on binding precedent from the Federal Circuit, the TTAB held that the addition of “.com” to an otherwise generic term does not render the mark non-generic. See In re Hotels.com LP, 91 USPQ2d 1532, 1532. It added that buying and selling are merely two sides of the same coin.

The Descriptiveness Hurdle

In two cancellation actions, the TTAB found that the mark at issue was not generic for the goods, but sustained cancellation of the mark on the ground that it was merely descriptive and there was no evidence of secondary meaning. The TTAB found that the ANNAPOLIS TOURS mark was not generic for “conducting guided tours of historic districts and other areas of cities.” Alcatraz Media Inc. v. Chesapeake Marine Tours Inc., 107 USPQ2d 1750 (TTAB 2013). In reaching the conclusion, the TTAB noted that the purported generic, third-party usage of the ANNAPOLIS TOURS mark was merely part of longer tour titles in Annapolis, Maryland, such as the “Ghosts of Annapolis Tour” and “Discover Annapolis Tours.” It found the cancellation petitioner’s evidence was insufficient to overcome its burden to show the mark to be generic. The TTAB, however, did hold that the evidence demonstrated the mark was descriptive and that there was insufficient evidence of acquired distinctiveness, and canceled the mark on those grounds.

The TTAB also canceled the PERKS mark for volume-based discount buying services in Class 35 based on descriptiveness. Couch/Brausdorf Affinity, Inc. v. 12 Interactive LLC, 110 USPQ2d 1458 (TTAB 2014). After considering the cancellation petitioner’s and owner’s respective uses of the term “perks” as well as third-party use, the TTAB found that the public did not understand the PERKS mark to indicate volume buying services. The TTAB did, however, find that the PERKS mark conveyed information concerning a characteristic of its services, since the owner administered the discount volume buying services as perks programs and marketed them to employers as a perk to be passed on to employees.

Prevailing on the genericness issue for the mark owners in these two cases was a pyrrhic victory, as they ultimately lost their rights on the basis that the marks were merely descriptive. These decisions counsel that a holistic view of the entirety of a case should be undertaken before deciding how to respond to a cancellation or opposition petition.

The TTAB also found that a mark would not be saved from being generic even if the owner has invested heavily in having the term associated with its house brands. The TTAB held “Footlong” to be generic for “sandwiches excluding hot dogs” in Class 30 despite abundant evidence of the applicant’s use in advertising bearing its SUBWAY house brand. Sheetz of Delaware, Inc. v. Doctor’s Assoc. Inc., 108 USPQ2d 1341 (TTAB 2013) [precedential]. It found that the applicant’s, as well as third-party’s, usage of the terms “footlong” or “foot long” were generic based on the size of the sandwich and that is how the public has come to perceive the term.

Tequila Win Shows Way Forward

Finally, in a glimmer of hope for mark owners, the TTAB permitted registration of the TEQUILA certification mark for “distilled spirits, namely, spirits distilled from the blue tequilana weber variety of agave plant,” where the spirits are distilled in Mexico from Mexican-grown agave plants. Luxco, Inc. v. Consejo Regulador del Tequila, A.C., 121 USPQ2d 1477 (TTAB 2017). The opposition petitioner, a spirits maker based in the United States, argued that “Tequila” was generic for any liquor distilled from the agave plant. After considering an abundance of evidence consisting of retail signs, consumer surveys, recipes, news articles, bottle labels, federal regulations, the dictionary definition, and encyclopedia references, the TTAB found that the petitioner did not meet its burden to show that the public considers the mark to refer to the genus of goods. In fact, the TTAB noted that much of the evidence the petitioner submitted actually showed that the public believes that the mark indicates geographic origin, which is permitted for a certification mark.

Although the party challenging registration of a mark on the basis of genericness bears the burden of proof of showing the mark to be generic, the TTAB has sustained these challenges unless there is good evidence that the mark is not understood by consumers to refer primarily to the genus of goods and services. When faced with such a challenge, owners and practitioners should be prepared to gather and provide evidence that consumers, in fact, view the mark as an indication of source. Likewise, they should also be prepared to counter the reserve argument that the mark is merely descriptive with evidence of acquired distinctiveness.

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