As stated in section 1209.01(c) Generic Terms of the Trademark Manual of Examination Procedure:

Generic terms are terms that the relevant purchasing public understands primarily as the common or class name for the goods or services. In re Dial-A-Mattress Operating Corp., 240 F.3d 1341, 57 USPQ2d 1807, 1811 (Fed. Cir. 2001); In re American Fertility Society, 188 F.3d 1341, 1346, 51 USPQ2d 1832, 1836 (Fed. Cir. 1999). These terms are incapable of functioning as registrable trademarks denoting source, and are not registrable on the Principal Register under §2(f) or on the Supplemental Register.

When a mark is comprised entirely of generic wording and some or all of the wording in the mark is the phonetic equivalent of the generic wording, the entire mark may not be disclaimed, even in the proper spelling, and approved for registration on the Supplemental Register. The disclaimer does not render an otherwise unregistrable generic mark registrable. See TMEP §§1213.06 and 1213.08(c).

As stated in section 1209.01(c)(i) Test of the Trademark Manual of Examination Procedure:

There is a two-part test used to determine whether a designation is generic: (1) What is the class of goods or services at issue" and (2) Does the relevant public understand the designation primarily to refer to that class of goods or services" H. Marvin Ginn Corp. v. International Ass'n of Fire Chiefs, Inc., 782 F.2d 987, 990, 228 USPQ 528, 530 (Fed. Cir. 1986). The test turns upon the primary significance that the term would have to the relevant public.

The examining attorney has the burden of proving that a term is generic by clear evidence. In re Merrill Lynch, Pierce, Fenner & Smith Inc., 828 F.2d 1567, 4 USPQ2d 1141 (Fed. Cir. 1987). Evidence of the public's understanding of a term can be obtained from any competent source, including dictionary definitions, research databases, newspapers, and other publications. See In re Northland Aluminum Products, Inc., 777 F.2d 1556, 227 USPQ 961 (Fed. Cir. 1985) (BUNDT, a term that designates a type of cake, held generic for ring cake mix); In re Analog Devices Inc., 6 USPQ2d 1808 (TTAB 1988), aff'd, 871 F.2d 1097, 10 USPQ2d 1879 (Fed. Cir. 1989) (ANALOG DEVICES held generic for devices having analog capabilities). Applicant's website and the websites of others are also proper sources of evidence as to the meaning of the proposed mark and the manner in which it is used in relation to the goods/services. In re Reed Elsevier Properties Inc., 482 F.3d 1376, 82 USPQ2d 1378 (Fed. Cir. 2007) (In holding LAWYERS.COM generic for "providing an online interactive database featuring information exchange in the fields of law, legal news and legal services," the Board properly considered applicant's website and eight other websites containing "lawyer.com" or "lawyers.com to determine the meaning of applicant's "information exchange about legal services.")

It is not necessary to show that the relevant public uses the term to refer to the genus. The correct inquiry is whether the relevant public would understand the term to be generic. In re 1800MATTRESS.COM IP LLC, 586 F.3d 1359, 92 USPQ2d 1682, 1685 (Fed. Cir. 2009).

There can be more than one generic term for a particular genus of goods or services. Any term that the relevant public understands to refer to the genus is generic. 1800Mattress.com, 586 F.3d at 1364, 92 USPQ2d at 1685.

When a term is a compound word, the examining attorney may establish that a term is generic by producing evidence that each of the constituent words is generic, and that the separate words retain their generic significance when joined to form a compound that has "a meaning identical to the meaning common usage would ascribe to those words as a compound." In re Gould Paper Corp., 834 F.2d 1017, 1018, 5 USPQ2d 1110, 1111-1112 (Fed. Cir. 1987) (SCREENWIPE held generic as applied to premoistened antistatic cloths for cleaning computer and television screens) In re Wm. B. Coleman Co., Inc., 93 USPQ2d 2019 (TTAB 2010) (Board held that ELECTRIC CANDLE COMPANY is the combination of two generic terms joined to create a compound).

However, the Court of Appeals for the Federal Circuit has expressly limited the holding in Gould to "compound terms formed by the union of words" where the public understands the individual terms to be generic for a genus of goods or services, and the joining of the individual terms into one compound word lends "no additional meaning to the term." In re Dial-A-Mattress Operating Corp., 240 F.3d 1341, 57 USPQ2d 1807, 1810 (Fed. Cir. 2001) (citing In re American Fertility Society, 188 F.3d 1341, 51 USPQ2d 1832, 1837 (Fed. Cir. 1999)). Where the mark is a phrase, the examining attorney cannot simply cite definitions and generic uses of the individual components of the mark, but must provide evidence of the meaning of the composite mark as a whole. In Coleman, however, the Board stated that American Fertility Society cannot be read to suggest that an applicant can create a trademark by adding a clearly generic term to a non-source-identifying word, even in the absence of proof that others have used the composite. 93 USPQ 2d 2019 at 2025.

In American Fertility Society, the court held that evidence that the components "Society" and "Reproductive Medicine" were generic was not enough to establish that the composite phrase SOCIETY FOR REPRODUCTIVE MEDICINE was generic for association services in the field of reproductive medicine. The court held that the examining attorney must show: (1) the genus of services that the applicant provides; and (2) that the relevant public understands the proposed composite mark to primarily refer to that genus of services. 51 USPQ2d at 1836-37.

In Dial-A-Mattress, the court held that an alphanumeric telephone number "bears closer conceptual resemblance to a phrase than a compound word." 57 USPQ2d at 1811. The court found that 1-888-M-A-T-R-E-S-S was not generic as applied to "telephone shop-at-home retail services in the field of mattresses," because there was no evidence of record that the public understood the term to refer to shop-at-home telephone mattress retailers. Therefore, to establish that a mnemonic telephone number is generic, the examining attorney must show that the relevant public would understand the mark as a whole to have generic significance.

With respect to Internet domain names, even if the evidence shows that the individual components that make up the proposed mark are generic, one must determine whether joining the individual terms creates a composite that is itself generic. In very rare instances, the addition of a top-level domain indicator ("TLD") to an otherwise generic term may operate to create a distinctive mark. In In re Steelbuilding.com, 415 F.3d 1293, 1299, 75 USPQ2d 1420, 1423 (Fed. Cir. 2005), the Federal Circuit reversed the Board's determination that STEELBUILDING.COM is generic for "computerized on-line retail services in the field of pre-engineered metal buildings and roofing systems." The Court criticized the Board for considering STEELBUILDING and .COM separately, stating that "[i]n this unusual case, the addition of the TLD indicator expanded the meaning of the mark to include goods and services beyond the mere sale of steel buildings. Specifically, the TLD expanded the mark to include internet services that include 'building' or designing steel structures on the website and then calculating an appropriate price before ordering the unique structure."

The Court also criticized the Board for relying only on evidence that the separate terms "steel building" or "steel buildings" are generic, where the terms were joined together in the subject mark:

The record does not contain any examination of dictionary definitions or other sources that might have indicated that joining the separate words "steel" and "building" would create a word that, in context, would be generic. The Board merely cited evidence that showed that when customers or competitors talked about a steel building, they used the phrase "steel building." That evidence shows that "steel building" is generic, but does not address directly the composite term STEELBUILDING.

415 F.3d at 1298-1299, 75 USPQ2d at 1423.

Thus, to establish that a proposed mark comprising an Internet domain name is generic, the examining attorney must show that the relevant public would understand the mark as a whole to have generic significance. See 1800Mattress.com, 586 F.3d at 1363, 92 USPQ2d at 1684 (affirming Board's conclusion that MATTRESS.COM was generic for "online retail store services in the field of mattresses, beds, and bedding," where the Board considered each of the constituent words, "mattress" and ".com" and determined that they were both generic, then considered the mark as a whole and determined that the combination added no new meaning, relying on the prevalence of the term "mattress.com" in the website addresses of several online mattress retailers who provide the same services as the applicant); In re Hotels.com, L.P., 573 F.3d 1300, 91 USPQ2d 1532 (Fed. Cir. 2009) (HOTELS.COM is generic for "providing information for others about temporary lodging; [and] travel agency services, namely, making reservations and bookings for temporary lodging for others by means of telephone and the global computer network," based on various definitions of "hotel," printouts from hotel reservation search websites showing 'hotels" as the equivalent of or included within "temporary lodging," as well as evidence from applicant's website); In re DNI Holdings Ltd., 77 USPQ2d 1435 (TTAB 2005) (SPORTSBETTING.COM held generic for "provision of casino games on and through a global computer network wherein there are no actual monetary wagers; provision of contests and sweepstakes on and through a global computer network; providing a website on and through a global computer network featuring information in the fields of gaming, athletic competition and entertainment...," where the record included multiple examples of use of the terms "sports betting" as well as the jointed terms "sportsbetting" by both applicant and its competitors to refer to both sports wagering and providing information about sports wagering, and there was no indication of a realistic alternative connotation of the compound term. See also TMEP §§1209.03(m) and 1215.05 regarding domain names comprising generic matter.)

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  • Definition: Generic Term.
    • In re The Council on Certification of Nurse Anesthetists, Serial No. 75722091, (TTAB 2007).
      • "A generic term is the common descriptive name of a class of goods or services . . ." H. Marvin Ginn Corp. v. International Association of Fire Chiefs, Inc., 782 F.2d 987, 228 USPQ 528, 530 (Fed. Cir. 1986).
    • In re Lens.com, Inc., Serial No. 78076812, (TTAB 2007)
      • A term is generic and not a mark if it refers to the class, genus or category of goods and/or services on or in connection with which it is used. See In re Dial-A-Mattress Operating Corp., 240 F.3d 1341, 57 USPQ2d 1807 (Fed. Cir. 2001), citing H. Marvin Ginn Corp. v. International Association of Fire Chiefs, Inc., 782 F.2d 987, 228 USPQ 528 (Fed. Cir. 1986).
    • In re Candy Bouquet International, Inc., Serial No. 78058216, (TTAB 2004).
      • A mark is a generic name if it refers to the class or category of goods and/or services on or in connection with which it is used. In re Dial-A-Mattress Operating Corp., 240 F.3d 1341, 57 USPQ2d 1807 (Fed. Cir. 2001), citing H. Marvin Ginn Corp. v. International Association of Fire Chiefs, Inc., 782 F.2d 987, 228 USPQ 528 (Fed. Cir. 1986).
    • Capital Project Management, Inc. v. IMDISI, Inc., Opposition No. 121,819, (TTAB 2003).
      • A mark is a generic name if it refers to the class or category of goods and/or services on or in connection with which it is used. In re Dial-A-Mattress Operating Corp., 240 F.3d 1341, 57 USPQ2d 1807 (Fed. Cir. 2001), citing H. Marvin Ginn Corp. v. International Association of Fire Chiefs, Inc., 782 F.2d 987, 228 USPQ 528 (Fed. Cir. 1986).
    • In re The Outdoor Recreation Group, Serial No. 76570321, (TTAB 2006).
      • A mark is a generic name if it refers to the class, genus or category of goods and/or services on or in connection with which it is used. See In re Dial-AMattress Operating Corp., 240 F.3d 1341, 57 USPQ2d 1807 (Fed. Cir. 2001), citing H. Marvin Ginn Corp. v. International Association of Fire Chiefs, Inc., 782 F.2d 987, 228 USPQ 528 (Fed. Cir. 1986).
  • A generic term, by definition, identifies a type of product, not the source of the product.
    • Tea Board of India v. The Republic of Tea, Inc., Opposition No. 91118587, (TTAB 2006).
      • "A generic term, by definition, identifies a type of product, not the source of the product." In re Steelbuilding.com, 415 F.3d 1293, 75 USPQ2d 1420, 1421 (Fed. Cir. 2005) citing In re Gould Paper Corp., 834 F.2d 1017, 5 USPQ2d 1110 (Fed. Cir. 1987).
  • Overview of genericness.
    • In re A La Vieille Russie, Inc., Serial No. 75/609,153, (TTAB 2001).
      • We shall address the genericness issue first. "A generic term is the common descriptive name of a class of goods or services." H. Marvin Ginn Corp. v. International Association of Fire Chiefs, Inc., 782 F.2d 987, 228 USPQ 528, 530 (Fed. Cir. 1986). "The critical issue in genericness cases is whether members of the relevant public primarily use or understand the term sought to be protected to refer to the genus of goods or services in question. Determining whether a mark is generic therefore involves a two-step inquiry: First, what is the genus of goods or services at issue" Second, is the term sought to be registered or retained on the register understood by the relevant public primarily to refer to that genus of goods or services"" Id. (Citations omitted.)
    • In re Active Ankle Systems, Inc., Serial No. 78349181, (TTAB 2007)
      • As stated in American Fertility, 51 USPQ2d at 1837, "[t]he correct legal test" for genericness "is set forth in Marvin Ginn" and "is to be applied to a mark . as a whole, for the whole may be greater than the sum of its parts." The burden of proving genericness falls on the trademark examining attorney, who must present "clear evidence of generic use." See In re Merrill Lynch, Pierce, Fenner, and Smith, Inc., 828 F.2d 1567, 1571, 4 USPQ2d 1141, 1143 (Fed. Cir. 1987).
  • The generic name of a thing is in fact the ultimate in descriptiveness.
    • In re Lens.com, Inc., Serial No. 78076812, (TTAB 2007)
      • "The generic name of a thing is in fact the ultimate in descriptiveness." H. Marvin Ginn Corp., supra, at 530.
  • A generic term can never be registered as a trademark because such a term is 'merely descriptive' within the meaning of §2(e)(1) and is incapable of acquiring de jure distinctiveness under §2(f)") and cases cited therein.
    • In re The American Academy of Facial Plastic and Reconstructive Surgery, Serial No. 75/215,519, (TTAB 2002).
      • Such terms are incapable of functioning as trademarks denoting origin or any specific source, and are not registrable on the Principal Register under Section 2(f), or on the Supplemental Register. See, for example, H. Marvin Ginn Corp. v. International Association of Fire Chiefs, 782 F.2d 987, 228 USPQ 528, 530 (Fed. Cir. 1986)("A generic term . can never be registered as a trademark because such a term is 'merely descriptive' within the meaning of §2(e)(1) and is incapable of acquiring de jure distinctiveness under §2(f)") and cases cited therein.
  • Even if incontestability could limit an examining attorney's ability to refuse registration, it would not preclude a genericness refusal, which is always available as a ground for cancellation of an incontestable registration.
    • In re The Outdoor Recreation Group, Serial No. 76570321, (TTAB 2006).
      • We note initially that even if incontestability could limit an examining attorney's ability to refuse registration, it would not preclude a genericness refusal, which is always available as a ground for cancellation of an incontestable registration. Section 14(3) of the Act specifically permits a challenge to such a mark based on genericness. See 15 U.S.C. §1064(3).
  • Even if applicant was the first and/or sole user of a generic term or phrase, that does not entitle applicant to register such a term or phrase as a mark.
    • In re Active Ankle Systems, Inc., Serial No. 78349181, (TTAB 2007)
      • Even if applicant was the first and/or sole user of a generic term or phrase, as it claims, that does not entitle applicant to register such a term or phrase as a mark. See In re National Shooting Sports Foundation, Inc., 219 USPQ 1019 (TTAB 1983).
  • Even long and successful use of a term does not automatically convert a generic term into a non-generic term.
    • In re Candy Bouquet International, Inc., Serial No. 78058216, (TTAB 2004).
      • Even long and successful use of a term does not automatically convert a generic term into a non-generic term. In re Helena Rubinstein, Inc., 410 F.2d 438, 161 USPQ 606, 609 (CCPA 1969).
  • Generic terms are terms that the relevant public understands primarily to refer to the class (or genus) of applicant's goods or services.
    • In re The American Academy of Facial Plastic and Reconstructive Surgery, Serial No. 75/215,519, (TTAB 2002).
      • As the attorneys have noted, generic terms are terms that the relevant public understands primarily to refer to the class (or genus) of applicant's goods or services. In re Dial-A-Mattress Operating Corp., 240 F.3d 1341, 57 USPQ2d 1807, 1811 (Fed. Cir. 2001); and In re American Fertility Society, 188 F.3d 1341, 51 USPQ2d 1832, 1836 (Fed. Cir. 1999).
  • All of the generic names for a product belong in the public domain.
    • In re Active Ankle Systems, Inc., Serial No. 78349181, (TTAB 2007)
      • Moreover, while other terms such as "Night Splint," "Plantar Fasciitis Night Splint," "Night Passive Splint," and "Night Foot Splint" may be used to identify applicant's type of product, it is well settled that there can be more than one term to name a product. Roselux Chemical Co., Inc. v. Parsons Ammonia Co., Inc., 299 F.2d 855, 132 USPQ 627, 632 (CCPA 1962). See also: In re Sun Oil Co., 426 F.2d 401, 165 USPQ 718, 719 (CCPA 1970)(Rich, J., concurring)["All of the generic names for a product belong in the public domain."](emphasis in original).
  • There is nothing unusual about a product or a service having more than one generic name.
    • In re Candy Bouquet International, Inc., Serial No. 78058216, (TTAB 2004).
      • The evidence of record, discussed above, clearly shows that "candy bouquet" is a generic name for a certain type of gift package of candy which is sold by applicant and by other merchants.5

        FOOTNOTE 5 "There is nothing unusual about a product or a service having more than one generic name. Roselux Chemical Co. v. Parsons Ammonia Co., 299 F.2d 855, 132 USPQ 627, 632 (CCPA 1962) ["Consider, however, that the product commonly known as tooth paste is also commonly known as dentifrice and dental cream. A gravestone is also commonly known as a headstone, a tombstone and a monument."]. See also: In re Sun Oil Co., 426 F.2d 401, 165 USPQ 718, 719 (CCPA 1970) (Rich, J., concurring) ["All of the generic names for a product belong in the public domain."]. (emphasis in original)."

  • Each case must be decided on its own merits.
    • In re Lens.com, Inc., Serial No. 78076812, (TTAB 2007)
      • As is often stated, each case must be decided on its own merits. See, e.g., In re Best Software Inc., 58 USPQ2d 1314 (TTAB 2001).
  • The TTAB must assess each mark on the record of public perception submitted with the application.
    • In re Reed Elsevier Properties Inc., Serial No. 75530795, (TTAB 2005).
      • Another argument advanced by applicant is that its LAWYERS.COM name is no less distinctive than many "arguably generic terms" that the USPTO has approved for registration on the Principal or Supplemental Registers. In support of this argument, applicant relies on TARR printouts of information on various registrations, many of which are ".com" marks. There can be no doubt, however, that "the Board . must assess each mark on the record of public perception submitted with the application." In re Nett Designs Inc., 236 F.3d 1339, 57 USPQ2d 1564, 1566 (Fed. Cir. 2001). Accordingly, there is "little persuasive value in the registrations" applicant has submitted. Id. See also, In re First Draft, Inc., 76 USPQ2d 1183 (TTAB 2005) (even when the applicant submitted copies of entire files from other registrations, the Board did not find the evidence persuasive).
  • Neither the current examining attorney nor the Board is bound by the prior action of the examining attorney who examined the earlier-filed application, now registration.
    • In re Lens.com, Inc., Serial No. 78076812, (TTAB 2007)
      • Neither the current examining attorney nor the Board is bound by the prior action of the examining attorney who examined the earlier-filed application, now registration. See In re Nett Designs Inc., 236 F.3d 1339, 57 USPQ2d 1564, 1566 (Fed. Cir. 2001) ["Even if some prior registrations had some characteristics similar to [applicant's] application, the PTO's allowance of such prior registrations does not bind the Board or this court."].
    • In re Rodale Inc., Serial No. 78369245, (TTAB 2006).
      • Although consistency in examination is a goal of the Office, the decisions of previous Trademark Examining Attorneys are not binding on us, and we must decide each case based on the evidence presented in the record before us. In re Nett Designs Inc., 236 F.3d 1339, 57 USPQ2d 1564 (Fed. Cir. 2001).
  • So long as the mark is generic for one of the recited services, it must be refused registration. It need not be shown to be generic for each of the recited services.
    • In re Eddie Z's Blinds and Drapery, Inc., Serial No. 76112441, (TTAB 2005).
      • Our final observation relates to a distinction in applicant's recitation of services. The amended recitation of services can be read to state that applicant's wholesale distributorship services and its retail store outlet services are not conducted via the Internet, whereas its retail store services are conducted via the Internet. So long as BLINDSANDDRAPERY.COM is generic for one of the recited services, it must be refused registration. It need not be shown to be generic for each of the recited services. See CyberFinancial, at 65 USPQ2d at 1791.
  • Two step inquiry to determine whether a mark is generic.
    • In re The Council on Certification of Nurse Anesthetists, Serial No. 75722091, (TTAB 2007).
      • Our primary reviewing court has set forth a two step inquiry to determine whether a mark is generic: First, what is the genus (category or class) of goods or services at issue" Second, is the term sought to be registered understood by the relevant public primarily to refer to that genus (category or class) of goods or services" 228 USPQ at 530. The burden of proving genericness falls on the trademark examining attorney, who must present "clear evidence of generic use." See In re Merrill Lynch, Pierce, Fenner, and Smith, Inc., 828 F.2d 1567, 4 USPQ2d 1141, 1143 (Fed. Cir. 1987).
    • In re America Online, Inc., Serial No. 75460305, (TTAB 2006).
      • Marvin Ginn goes on to explain that: "Determining whether a mark is generic therefore involves a two-step inquiry: First, what is the genus of goods or services at issue" Second, is the term sought to be registered or retained on the register understood by the relevant public primarily to refer to that genus of goods or services"" Id.
    • In re American Institute of Certified Public Accountants, Serial No. 75/626,097, (TTAB 2002).
      • The determination whether a term is generic "involves a two-step inquiry: First, what is the genus of goods or services at issue" Second, is the term sought to be registered . understood by the relevant public primarily to refer to that genus of goods or services"" Marvin Ginn, supra, 228 USPQ at 530.
    • Nobelle.com, LLC v. Qwest Communications International, Inc., Cancellation No. 92030454, (TTAB 2003).
      • We turn now to petitioner's first ground for cancellation, i.e., that respondent's registration should be cancelled on the ground of genericness. Our primary reviewing court has stated: "The critical issue in genericness cases is whether members of the relevant public primarily use or understand the term sought to be protected to refer to the genus of goods or services in question. Determining whether a mark is generic therefore involves a two-step inquiry: First, what is the genus of goods or services at issue" Second, is the term sought to be registered or retained on the register understood by the relevant public primarily to refer to that genus of goods or services"" H. Marvin Ginn Corp. v. International Association of Fire Chiefs, Inc., 782 F.2d 987, 228 USPQ 528, 530 (Fed. Cir. 1986)(citations omitted).
    • In re DNI Holdings Ltd., Serial No. 76331011, (TTAB 2005).
      • It has been repeatedly stated that "[d]etermining whether a mark is generic . involves a two-step inquiry: First, what is the genus of goods or services at issue" Second, is the term sought to be registered or retained on the register understood by the relevant public primarily to refer to that genus of goods or services"" H. Marvin Ginn v. International Association of Fire Chiefs, Inc. 782 F.2d 987, 228 USPQ 528, 530 (Fed. Cir. 1986). In a proceeding such as this, the genus of the services at issue is determined by focusing on the recital of services in the application itself. Magic Wand Inc. v. RDB Inc., 940 F.2d 638, 19 USPQ2d 1551, 1552 (Fed. Cir. 1991) ["Thus, a proper genericness inquiry focuses on the description of services set forth in [the application or] certificate of registration."].
    • In re Reed Elsevier Properties Inc., Serial No. 75530795, (TTAB 2005).
      • Making this determination "involves a two-step inquiry: First, what is the genus of goods or services at issue" Second, is the term sought to be registered ... understood by the relevant public primarily to refer to that genus of goods or services"" Ginn, supra, 228 USPQ at 530.
    • In re CyberFinancial.Net, Inc., Serial No. 75/482,561, (TTAB 2002).
      • The determination of whether a term is generic involves a two-part inquiry: First, what is the category or class of the goods or services at issue" Second, is the term sought to be registered understood by the relevant public primarily to refer to that category of goods or services" H. Marvin Ginn Corp. v. International Association of Fire Chiefs, Inc., 782 F.2d 987, 228 USPQ 528, 530 (Fed. Cir. 1986).
    • Jacob Zimmerman v. National Association of Realtors, Cancellation No. 92032360, (TTAB 2003).
      • The statutory basis for canceling the registration of a generic term is found in §14(3) of the Lanham Act, 15 USC § 1064(3). As our principal reviewing court has stated: ".[D]etermining whether a mark is generic . involves a two-step inquiry: First, what is the genus of goods or services at issue" Second, is the term sought to be registered . understood by the relevant public primarily to refer to that genus of goods or services"" H. Marvin Ginn Corporation v. International Association of Fire Chiefs, Inc., 782 F.2d 987, 990, 228 USPQ 528, 530 (Fed. Cir. 1986).
    • In re Lens.com, Inc., Serial No. 78076812, (TTAB 2007)
      • The determination of whether a term is generic involves a two-part inquiry: First, what is the category or class of the goods or services at issue" Second, is the term sought to be registered understood by the relevant public primarily to refer to that category of goods or services" See H. Marvin Ginn Corp., supra.
    • In re Active Ankle Systems, Inc., Serial No. 78349181, (TTAB 2007)
      • Our primary reviewing court has set forth a two-step inquiry to determine whether a mark is generic: First, what is the genus (category or class) of goods or services at issue" Second, is the term sought to be registered understood by the relevant public primarily to refer to that genus (category or class) of goods or services" H. Marvin Ginn Corp. v. International Association of Fire Chiefs, Inc., 782 F. 2d 987, 989, 228 USPQ 528, 530 (Fed. Cir. 1986).
    • In re Rodale Inc., Serial No. 78369245, (TTAB 2006).
      • Our primary reviewing court has stated: "The determination of whether a mark is generic is made according to a two-part inquiry: "First, what is the genus of the goods or services at issue" Second, is the term sought to be registered ... understood by the relevant purchasing public primarily to refer to that genus of goods or services""" In re Dial-A-Mattress Operating Corp., supra, 57 USPQ2d at 1810, quoting from H. Marvin Ginn Corp. v. Int'l Ass'n of Fire Chiefs, Inc., 782 F.2d 987, 989-90, 228 USPQ 528, 530 (Fed. Cir. 1986).
    • In re Dial A Mattress Operating Corporation, Serial No. 75/131,355, (TTAB 1999).
      • The Court of Appeals for the Federal Circuit has stated that: "[d]etermining whether a mark is generic . . . involves a two-step inquiry: First, what is the genus of goods or services at issue" Second, is the term sought to be registered . . . understood by the relevant public primarily to refer to that genus of goods or services"" H. Marvin Ginn Corp. v. International Ass'n of Fire Chiefs, Inc., 782 F.2d 987, 990, 228 USPQ 528, 530 (Fed. Cir. 1986).
    • In re The American Academy of Facial Plastic and Reconstructive Surgery, Serial No. 75/215,519, (TTAB 2002).
      • The two-part test used to determine whether a designation is generic asks: (1) What is the class of goods or services, and (2) Does the relevant public understand the designation primarily to refer to that class of goods or services" See Ginn, supra.
    • In re International Business Machines Corporation, Serial No. 75581859, (TTAB 2006).
      • Ginn explains that: "Determining whether a mark is generic . involves a two-step inquiry: First, what is the genus of goods or services at issue" Second, is the term sought to be registered or retained on the register understood by the relevant public primarily to refer to that genus of goods or services"" Id.
    • In re Eddie Z's Blinds and Drapery, Inc., Serial No. 76112441, (TTAB 2005).
      • Making this determination "involves a two-step inquiry: First, what is the genus of goods or services at issue" Second, is the term sought to be registered . understood by the relevant public primarily to refer to that genus of goods or services"" Ginn, supra, 228 USPQ at 530.
  • The first element of the test for genericness is to determine, based on the evidence of record, what is the genus of services in which the specific services rendered by applicant are properly classified.
    • In re A La Vieille Russie, Inc., Serial No. 75/609,153, (TTAB 2001).
      • Thus, our first task under Marvin Ginn is to determine, based on the evidence of record, what is the genus of services in which the specific services rendered by applicant are properly classified.
    • In re Rodale Inc., Serial No. 78369245, (TTAB 2006).
      • Our analysis begins with a determination of the genus of the services at issue. See H. Marvin Ginn, supra. We find in this case that the genus of services is commensurate with applicant's recitation of services in the application, i.e., "providing information in the field of health and diet via a web site on the Internet."
  • The identification of goods and services is a required element of an application precisely because it is expected to identify the goods or services in connection with which an applicant uses its mark and for which it therefore seeks registration of the mark.
    • In re Reed Elsevier Properties Inc., Serial No. 75530795, (TTAB 2005).
      • In accordance with this analytical framework, while we consider applicant's identification as largely defining the genus of services involved in this case, we do so on the premise that the identification is a required element of an application precisely because it is expected to identify the goods or services in connection with which an applicant uses its mark and for which it therefore seeks registration of the mark.
  • A proper genericness inquiry focuses on the description of services set forth in the application or certificate of registration.
    • In re Reed Elsevier Properties Inc., Serial No. 75530795, (TTAB 2005).
      • In the Magic Wand case, the Federal Circuit stated, "a proper genericness inquiry focuses on the description of services set forth in the [application or] certificate of registration." Magic Wand Inc. v. RDB Inc., 940 F.2d 638, 19 USPQ2d 1551, 1552 (Fed. Cir. 1991).
  • Trademark cases must be decided on the basis of the identification of goods as set forth in the application.
    • In re Reed Elsevier Properties Inc., Serial No. 75530795, (TTAB 2005).
      • Applicant also reminds us of the Allen Electric case, in which the Court of Customs and Patent Appeals stated that "trademark cases must be decided on the basis of the identification of goods as set forth in the application." In re Allen Electric and Equipment Co., 458 F.2d 1404, 173 USPQ 689, 690 (CCPA 1972).
    • In re Reed Elsevier Properties Inc., Serial No. 75530795, (TTAB 2005).
      • Finally, applicant also reminds us of two Board cases that focus on the significance of written identifications: In re Vehicle Information Network Inc., 32 USPQ2d 1542, 1544 (TTAB 1994) ("the question of registrability must be determined . on the basis of the goods or services as set forth in the application") and In re Datatime Corporation, 203 USPQ 878, 879 (TTAB 1979) ("it is the goods as set forth in the application papers that are determinative of the issue").
  • In some cases, the description of the involved class or genus is subject to dispute.
    • In re Eddie Z's Blinds and Drapery, Inc., Serial No. 76112441, (TTAB 2005).
      • While in some cases, the description of the involved class or genus is subject to dispute, see, e.g., In re American Institute of Certified Public Accountants, 65 USPQ2d 1972, 1981-82 (TTAB 2003), applicant has not disputed the examining attorney's view of the class in this case. Moreover, we find the examining attorney's description appropriate.
  • Expanding or contracting the definition of the genus can substantially affect the final determination of whether a term is generic.
    • In re American Institute of Certified Public Accountants, Serial No. 75/626,097, (TTAB 2002).
      • As Professor McCarthy has observed in regard to the first part of the inquiry, expanding or contracting the definition of the genus can substantially affect the final determination of whether a term is generic. 2 J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition § 12:23 (4th ed. 2001).
  • The second element of the test for genericness is to determine whether the term sought to be registered is understood by the relevant public primarily to refer to that genus of services.
    • In re A La Vieille Russie, Inc., Serial No. 75/609,153, (TTAB 2001).
      • Having identified the genus of services involved herein as "art dealership services in the field of Russian art," we next must determine whether the term applicant seeks to register, i.e., RUSSIANART, is understood by the relevant public primarily to refer to that genus of services. Marvin Ginn, supra. In making that determination in this case, two principles apply.
    • In re DNI Holdings Ltd., Serial No. 76331011, (TTAB 2005).
      • We turn then to the second part of the Ginn inquiry, namely, whether the term sought to be registered is understood by the relevant public primarily to refer to that genus of services.
    • In re Rodale Inc., Serial No. 78369245, (TTAB 2006).
      • We next must determine whether the purchasing public understands NUTRITION BULLETIN to refer to the genus of services at issue. See H. Marvin Ginn, supra.
    • In re Reed Elsevier Properties Inc., Serial No. 75530795, (TTAB 2005).
      • The critical issue to determine is whether the record shows that members of the relevant public primarily use or understand the term sought to be registered to refer to the genus of goods or services in question. H. Marvin Ginn Corp. v. International Ass'n of Fire Chiefs, Inc., 782 F.2d 987, 228 USPQ 528, 530 (Fed. Cir. 1986); In re Women's Publishing Co. Inc., 23 USPQ2d 1876, 1877 (TTAB 1992).
  • The critical issue in genericness cases such as this one is whether members of the relevant public primarily use or understand the term sought to be registered to refer to the genus of goods or services in question.
    • In re The Council on Certification of Nurse Anesthetists, Serial No. 75722091, (TTAB 2007).
      • The critical issue in genericness cases such as this one is whether members of the relevant public primarily use or understand the term sought to be registered to refer to the genus of goods or services in question.
    • In re International Business Machines Corporation, Serial No. 75581859, (TTAB 2006).
      • The Court of Appeals for the Federal Circuit, our primary reviewing court, has held that "[t]he critical issue in genericness cases is whether members of the relevant public primarily use or understand the term sought to be protected to refer to the genus of goods or services in question." H. Marvin Ginn Corp. v. Int'l Association of Fire Chiefs, Inc., 782 F.2d 987, 228 USPQ 528, 530 (Fed. Cir. 1986).
    • In re International Business Machines Corporation, Serial No. 75581859, (TTAB 2006).
      • "The critical issue in genericness cases is whether members of the relevant public primarily use or understand the term sought to be protected to refer to the genus of goods or services in question." Ginn, 228 USPQ at 530.
    • Jacob Zimmerman v. National Association of Realtors, Cancellation No. 92032360, (TTAB 2003).
      • The critical issue (both before and after the 1984 Trademark Clarification Act) in genericness cases is whether members of the relevant public primarily use or understand the term sought to be registered to refer to the genus or category of goods in question. In re Montrachet S.A., 878 F.2d 375, 376, 11 USPQ2d 1393, 1394 (Fed. Cir. 1989): In re Merrill Lynch, Pierce, Fenner, & Smith, Inc., 828 F.2d 1567, 1570, 4 USPQ2d 1141, 1143 (Fed. Cir. 1987); Dan Robbins & Assocs., Inc. v. Questor Corp., 599 F.2d 1009, 1014, 202 USPQ 100, 105 (CCPA 1979); and In re Recorded Books, Inc., 42 USPQ2d 1275 (TTAB 1997).
    • In re America Online, Inc., Serial No. 75460305, (TTAB 2006).
      • The Court of Appeals for the Federal Circuit has held that: "The critical issue in genericness cases is whether members of the relevant public primarily use or understand the term sought to be protected to refer to the genus of goods or services in question." H. Marvin Ginn Corp. v. Int'l Association of Fire Chiefs, Inc., 782 F.2d 987, 228 USPQ 528, 530 (Fed. Cir. 1986).
    • In re Eddie Z's Blinds and Drapery, Inc., Serial No. 76112441, (TTAB 2005).
      • The critical issue is to determine whether the record shows that members of the relevant public primarily use or understand the term sought to be registered to refer to the category or class of goods or services in question. H. Marvin Ginn Corp. v. International Ass'n of Fire Chiefs, Inc., 782 F.2d 987, 228 USPQ 528, 530 (Fed. Cir. 1986); In re Women's Publishing Co. Inc., 23 USPQ2d 1876, 1877 (TTAB 1992).
  • In determining whether a word or phrase is generic, we are required to determine whether the word or phrase is generic to the purchasing public.
    • In re Cell Therapeutics, Inc., Serial No. 75/313,795, (TTAB 2003).
      • In this regard, it must always be remembered that in determining whether a word or phrase is generic, we are required to determine whether the word or phrase is generic to the purchasing public. Magic Wand Inc. v. RDD Inc., 940 F.2d 638, 19 USPQ2d 1551, 1552-53 (Fed. Cir. 1991) ("This court has stated that whether a term is entitled to trademark status turns on how the mark is understood by the purchasing public.") (emphasis added); In re Montrachet S.A., 878 F.2d 375, 11 USPQ 1393, 1394 (Fed. Cir. 1989) ("Whether a term is entitled to trademark status turns on how the mark is understood by the purchasing public.") (emphasis added).
  • When dealing with ordinary consumer goods or services, the test for genericness is the term's meaning to consumers, not necessarily the professionals in the trade
    • Jacob Zimmerman v. National Association of Realtors, Cancellation No. 92032360, (TTAB 2003).
      • As Judge Learned Hand observed in Bayer Co. v. United Drug Co., 272 F 505, 509 (SDNY 1921), "the question is whether the buyers merely understood that the word 'Aspirin' meant this kind of drug, or whether it meant that and more than that: i.e., that it came from the single, though, if one please anonymous, source from which they had got it before."
  • Clearly, when dealing with ordinary consumer goods or services, the test for genericness is the term's meaning to consumers, not necessarily the professionals in the trade.8
    • Jacob Zimmerman v. National Association of Realtors, Cancellation No. 92032360, (TTAB 2003).
      • FOOTNOTE 8 "Our principal reviewing Court held that under the 1984 amendment to the Lanham Act, the test of whether "touchless" is a trademark for auto washing services or is the generic name of a type of auto wash service is its meaning to consumers who use the services, not solely to operators and manufacturers of auto wash equipment. Magic Wand, Inc. v. RDB, Inc., 940 F.2d 638, 19 USPQ2d 1551 (Fed. Cir. 1991). See also In re Northland Aluminum Products, Inc., 777 F.2d 1556, 227 USPQ 961 (Fed. Cir. 1985) (when the issue is genericness to the consuming public, evidence that professionals view the term as a trademark is not probative)."
  • The TTAB claims that the analysis and rationale set forth in Dranoff-Perlstein and 800 Spirits, supra, would serve as an appropriate complement to the Federal Circuit's Ginn two-part test in cases requiring a determination of the genericness of alphanumeric telephone number marks.
    • In re Dial A Mattress Operating Corporation, Serial No. 75/131,355, (TTAB 1999).
      • We are persuaded that the analysis and rationale set forth in Dranoff-Perlstein and 800 Spirits, supra, would serve as an appropriate complement to the Federal Circuit's Ginn two-part test in cases requiring a determination of the genericness of alphanumeric telephone number marks.
  • Whether a term is entitled to trademark status turns on how the mark is understood by the purchasing public.
    • In re The American Academy of Facial Plastic and Reconstructive Surgery, Serial No. 75/215,519, (TTAB 2002).
      • For example, this court has stated that whether a term is entitled to trademark status turns on how the mark is understood by the purchasing public.")(emphasis added); In re Montrachet S.A., 878 F.2d 375, 11 USPQ2d 1393, 1394 (Fed. Cir. 1989) ("Whether a term is entitled to trademark status turns on how the mark is understood by the purchasing public.") (emphasis added); In re Northland Aluminum Products, Inc., 777 F.2d 1556, 227 USPQ 961, 963 (Fed. Cir. 1985) ("The descriptiveness of the term is determined from the viewpoint of the relevant purchasing public.") (emphasis added).
  • The test for determining whether a mark is generic is its primary significance to the relevant public.
    • Tea Board of India v. The Republic of Tea, Inc., Opposition No. 91118587, (TTAB 2006).
      • The test for determining whether a mark is generic is its primary significance to the relevant public. Magic Wand, Inc. v. RDB, Inc., 940 F.2d 638, 19 USPQ2d 1551 (Fed. Cir. 1991).
    • In re Lens.com, Inc., Serial No. 78076812, (TTAB 2007)
      • The test for determining whether a mark is generic is its primary significance to the relevant public. See Section 14(3) of the Act. See also In re American Fertility Society, 188 F.3d 1341, 51 USPQ2d 1832 (Fed. Cir. 1999); Magic Wand Inc. v. RDB Inc., 940 F.2d 638, 19 USPQ2d 1551 (Fed. Cir. 1991); and H. Marvin Ginn Corp., supra.
    • Capital Project Management, Inc. v. IMDISI, Inc., Opposition No. 121,819, (TTAB 2003).
      • The test for determining whether a mark is generic is its primary significance to the relevant public. Section 14(3) of the Act; In re American Fertility Society, 188 F.3d 1341, 51 USPQ2d 1832 (Fed. Cir. 1999); Magic Wand Inc. v. RDB Inc., 940 F.2d 638, 19 USPQ2d 1551 (Fed. Cir. 1991); and H. Marvin Ginn Corp. v. International Association of Fire Chiefs, Inc., supra.
    • In re The American Academy of Facial Plastic and Reconstructive Surgery, Serial No. 75/215,519, (TTAB 2002).
      • The test turns upon the primary significance that the term would have to the relevant public.
    • In re Candy Bouquet International, Inc., Serial No. 78058216, (TTAB 2004).
      • The test for determining whether a mark is generic is its primary significance to the relevant public. Section 14(3) of the Trademak Act; In re American Fertility Society, 188 F.3d 1341, 51 USPQ2d 1832 (Fed. Cir. 1999); Magic Wand Inc. v. RDB Inc., 940 F.2d 638, 19 USPQ2d 1551 (Fed. Cir. 1991); and H. Marvin Ginn Corp. v. International Association of Fire Chiefs, Inc., supra.
    • In re The Outdoor Recreation Group, Serial No. 76570321, (TTAB 2006).
      • The test for determining whether a mark is generic is its primary significance to the relevant public. See Section 14(3) of the Act. See also In re American Fertility Society, 188 F.3d 1341, 51 USPQ2d 1832 (Fed. Cir. 1999); Magic Wand Inc. v. RDB Inc., 940 F.2d 638, 19 USPQ2d 1551 (Fed. Cir. 1991); and H. Marvin Ginn Corp. v. International Association of Fire Chiefs, Inc., supra.
  • That there may be other generic terms that are functionally equivalent to the disputed term does not make that term any less generic
    • In re Eddie Z's Blinds and Drapery, Inc., Serial No. 76112441, (TTAB 2005).
      • However, that there may be other generic terms that are functionally equivalent to "blinds and drapery" does not make that term any less generic. See In re Sun Oil Co., 426 F.2d 401, 165 USPQ 718, 719 (Rich, J., concurring)(CCPA 1970)(all generic names for a product belong in the public domain); see also Continental Airlines Inc. v. United Air Lines Inc., 53 USPQ2d 1385, 1394 (TTAB 1999).
  • Aptness is insufficient to prove genericness.
    • In re DNI Holdings Ltd., Serial No. 76331011, (TTAB 2005).
      • The Office must be able to satisfy both elements of the test as set forth in the controlling precedent of Marvin Ginn, bearing in mind that "[a]ptness is insufficient to prove genericness." See In re American Fertility Society, 188 F.3d 1341, 51 USPQ2d 1832, 1836 (Fed. Cir. 1999).
  • It is incumbent upon the Trademark Examining Attorney to make a substantial showing that the matter is in fact generic. Indeed, this substantial showing "must be based on clear evidence of generic use.
    • In re DNI Holdings Ltd., Serial No. 76331011, (TTAB 2005).
      • It is incumbent upon the Trademark Examining Attorney to make a "substantial showing . that the matter is in fact generic." Indeed, this substantial showing "must be based on clear evidence of generic use." Merrill Lynch, 4 USPQ2d at 1143.
  • A strong showing is required when the Office seeks to establish that a term is generic.
    • In re DNI Holdings Ltd., Serial No. 76331011, (TTAB 2005).
      • Thus, it is beyond dispute that "a strong showing is required when the Office seeks to establish that a term is generic." In re K-T Zoe Furniture Inc., 16 F.3d 390, 29 USPQ2d 1787, 1788 (Fed. Cir. 1994).
  • Burden of Proof: The Examining Attorney/USPTO has the burden of establishing by clear evidence that a mark is generic and thus unregistrable.
    • In re Lens.com, Inc., Serial No. 78076812, (TTAB 2007)
      • The examining attorney has the burden of establishing by clear evidence that a mark is generic and thus unregistrable. See In re Merrill Lynch, Pierce, Fenner and Smith, Inc., 828 F.2d 1567, 4 USPQ2d 1141 (Fed. Cir. 1987).
    • In re The American Academy of Facial Plastic and Reconstructive Surgery, Serial No. 75/215,519, (TTAB 2002).
      • The Examining Attorney has the burden of proving that a term is generic by clear evidence. In re American Fertility Society, supra, 51 USPQ2d at 1835; and In re Merrill Lynch, Pierce, Fenner & Smith Inc., 828 F.2d 1567, 4 USPQ2d 1141 (Fed. Cir. 1987).
    • In re Reed Elsevier Properties Inc., Serial No. 75530795, (TTAB 2005).
      • When a proposed mark is refused registration as generic, the examining attorney has the burden of proving genericness by "clear evidence" thereof. See In re Merrill Lynch, Pierce, Fenner & Smith, Inc., 828 F.2d 1567, 4 USPQ2d 1141, 1143 (Fed. Cir. 1987); see also In re Gould Paper Corp., 834 F.2d 1017, 5 USPQ2d 1110, 1111 (Fed. Cir. 1987).
    • In re The Outdoor Recreation Group, Serial No. 76570321, (TTAB 2006).
      • The examining attorney has the burden of establishing by clear evidence that a mark is generic and thus unregistrable. See In re Merrill Lynch, Pierce, Fenner and Smith, Inc., 828 F.2d 1567, 4 USPQ2d 1141 (Fed. Cir. 1987).
    • In re International Business Machines Corporation, Serial No. 75581859, (TTAB 2006).
      • The Office bears the burden of establishing genericness based on clear evidence of generic use. In re American Fertility Society, 188 F.3d 1341, 51 USPQ2d 1832, 1835 (Fed. Cir. 1999).
    • In re Eddie Z's Blinds and Drapery, Inc., Serial No. 76112441, (TTAB 2005).
      • Turning to the substantive issue before us, when a proposed mark is refused registration as generic, the examining attorney has the burden of proving genericness by "clear evidence" thereof. See In re Merrill Lynch, Pierce, Fenner & Smith, Inc., 828 F.2d 1567, 4 USPQ2d 1141, 1143 (Fed. Cir. 1987); see also In re Gould Paper Corp., 834 F.2d 1017, 5 USPQ2d 1110, 1111 (Fed. Cir. 1987).
  • Burden of Proof: It is incumbent upon the Examining Attorney to make a substantial showing that the matter is in fact generic.
    • In re The American Academy of Facial Plastic and Reconstructive Surgery, Serial No. 75/215,519, (TTAB 2002).
      • Moreover, it is incumbent upon the Examining Attorney to make a "substantial showing . that the matter is in fact generic." Merrill Lynch, 4 USPQ2d at 1143.
    • In re The American Academy of Facial Plastic and Reconstructive Surgery, Serial No. 75/215,519, (TTAB 2002).
      • Thus, "a strong showing is required when the Office seeks to establish that a [mark] is generic." In re K-T Zoe Furniture Inc., 16 F.3d 390, 29 USPQ2d 1787, 1788 (Fed. Cir. 1994).
  • Definition: Substantial showing.
    • In re The American Academy of Facial Plastic and Reconstructive Surgery, Serial No. 75/215,519, (TTAB 2002).
      • Indeed, this substantial showing "must be based on clear evidence of generic use." Merrill Lynch, 4 USPQ2d at 1143.
  • Burden of Proof: Once the USPTO sets forth a prima facie case, the burden shifts to the applicant to come forward with evidence to rebut the prima facie case with competent evidence.
    • In re International Business Machines Corporation, Serial No. 75581859, (TTAB 2006).
      • We now consider whether applicant has rebutted the examining attorney's prima facie case. Once the USPTO sets forth a prima facie case, the burden shifts to the applicant to come forward with evidence to rebut the prima facie case with "competent evidence." See In re Gyulay, 820 F.2d 1216, 3 USPQ2d 1009, 1010 (Fed. Cir. 1987); In re R. M. Smith, Inc., 734 F.2d 1482, 222 USPQ 1, 3 (Fed. Cir. 1984); In re Teledyne Indus., Inc., 696 F.2d 986, 217 USPQ 9, 11 (Fed. Cir. 1982).
  • Burden of Proof: In inter partes proceedings, it is petitioner's burden to prove the genericness of terms by a preponderance of the evidence.
    • Jacob Zimmerman v. National Association of Realtors, Cancellation No. 92032360, (TTAB 2003).
      • Finally, we note that in the context of these inter partes proceedings, it is petitioner's burden to prove the genericness of these terms by a preponderance of the evidence. Magic Wand Inc. v. RDB Inc., supra.
  • Burden of Proof: The party making the charge of genericness must establish its claim by a preponderance of the evidence.
    • Capital Project Management, Inc. v. IMDISI, Inc., Opposition No. 121,819, (TTAB 2003).
      • We find that opposer, as the party making the charge of genericness, has proved its claim by a preponderance of the evidence. Martahus v. Video Duplication Services Inc., 3 F.3d 417, 27 USPQ2d 1846, 1850 (Fed. Cir. 1993).
  • Burden of Proof: It is applicant's burden to demonstrate by a preponderance of the evidence that the term is generic, or that the mark has become generic as a result of opposer's failure to exercise control over use of the mark.
    • Tea Board of India v. The Republic of Tea, Inc., Opposition No. 91118587, (TTAB 2006).
      • It is applicant's burden to demonstrate by a preponderance of the evidence that DARJEELING is generic, or that the mark has become generic as a result of opposer's failure to exercise control over use of the mark. Magic Wand Inc. v. RDB Inc., supra; and Stocker v. General Conference Corp. of Seventh-day Adventists, 39 USPQ2d 1385 (TTAB 1996). See also Midwest, supra at 1362 ("Midwest has the burden to demonstrate by a preponderance of the evidence that UL failed to exercise control over use of its marks.").
  • Burden of Proof: A higher and different standard of proof is required for a generic term in a nondistinctive display.
    • In re The American Academy of Facial Plastic and Reconstructive Surgery, Serial No. 75/215,519, (TTAB 2002).
      • In this regard, one should also remember that the association by the relevant public of a generic term in a nondistinctive display "sets a much higher and different standard of proof and persuasion than is required for descriptive terms." McCarthy, supra, §12:40.
  • Any doubt on the issue of genericness is resolved in favor of the applicant.
    • In re DNI Holdings Ltd., Serial No. 76331011, (TTAB 2005).
      • Furthermore, doubt on the issue of genericness is resolved in favor of the applicant. In re Waverly Inc., 27 USPQ2d 1620, 1624 (TTAB 1993).
    • In re The American Academy of Facial Plastic and Reconstructive Surgery, Serial No. 75/215,519, (TTAB 2002).
      • Moreover, any doubt whatsoever on the issue of genericness must be resolved in favor of the applicant. In re Waverly Inc., 27 USPQ2d 1620, 1624 (TTAB 1993).
    • In re The American Academy of Facial Plastic and Reconstructive Surgery, Serial No. 75/215,519, (TTAB 2002).
      • It is beyond dispute that "the burden of showing that a proposed trademark [or service mark] is generic remains with the Patent and Trademark Office." In re Merrill Lynch, 828 F.2d 1567, 4 USPQ2d 1141, 1143 (Fed. Cir. 1987).
    • In re Rodale Inc., Serial No. 78369245, (TTAB 2006).
      • The Office bears the burden of establishing genericness based on clear evidence of generic use. In re American Fertility Society, 188 F.3d 1341, 51 USPQ2d 1832 (Fed. Cir. 1999).
    • In re CyberFinancial.Net, Inc., Serial No. 75/482,561, (TTAB 2002).
      • The Office bears the burden of proving that a term is generic. In re The American Fertility Society, 188 F.3d 1341, 51 USPQ2d 1832, 1834 (Fed. Cir. 1999).
    • In re DNI Holdings Ltd., Serial No. 76331011, (TTAB 2005).
      • Moreover, the burden rests with the Trademark Examining Attorney to establish that the mark sought to be registered is generic for the services. In re Merrill Lynch, Pierce, Fenner & Smith, Inc., 828 F.2d 1567, 4 USPQ2d 1141, 1143 (Fed. Cir. 1997).
    • In re Candy Bouquet International, Inc., Serial No. 78058216, (TTAB 2004).
      • The United States Patent and Trademark Office has the burden of establishing by clear evidence that a mark is generic and thus unregistrable. In re Merrill Lynch, Pierce, Fenner and Smith, Inc., 828 F.2d 1567, 4 USPQ2d 1141 (Fed. Cir. 1987).
  • Generic terms are common names that the relevant purchasing public understands primarily as describing the class of goods or services being sold.
    • In re Rodale Inc., Serial No. 78369245, (TTAB 2006).
      • "Generic terms are common names that the relevant purchasing public understands primarily as describing the genus of goods or services being sold. They are by definition incapable of indicating a particular source of the goods or services." In re Dial-A-Mattress Operating Corp., 240 F.3d 1341, 57 USPQ2d 1807, 1810 (Fed. Cir. 2001)(citations omitted).
    • In re CyberFinancial.Net, Inc., Serial No. 75/482,561, (TTAB 2002).
      • Generic terms are common names that the relevant purchasing public understands primarily as describing the class of goods or services being sold. In re Merrill Lynch, Pierce, Fenner & Smith, Inc., 828 F.2d 1567, 4 USPQ2d 1141, 1142 (Fed. Cir. 1987).
    • In re Active Ankle Systems, Inc., Serial No. 78349181, (TTAB 2007)
      • "Generic terms are common names that the relevant purchasing public understands primarily as describing the genus of goods or services being sold. They are by definition incapable of indicating a particular source of the goods or services." In re Dial-A-Mattress Operating Corp., 240 F.3d 1341, 57 USPQ2d 1807, 1810 (Fed. Cir. 2001)(citations omitted).
  • Generic terms are incapable of indicating a particular source of the goods or services, and cannot be registered as trademarks
    • In re CyberFinancial.Net, Inc., Serial No. 75/482,561, (TTAB 2002).
      • They are by definition incapable of indicating a particular source of the goods or services, and cannot be registered as trademarks. In re Dial-A-Mattress Operating Corp., 240 F.3d 1341, 57 USPQ2d 1807, 1810 (Fed. Cir. 2001).
  • Because they are incapable of identifying source, generic terms are not registrable on the Supplemental Register.
    • In re Active Ankle Systems, Inc., Serial No. 78349181, (TTAB 2007)
      • Because they are incapable of indicating a particular source, generic terms are not registrable on the Supplemental Register.
    • In re Rodale Inc., Serial No. 78369245, (TTAB 2006).
      • Because they are incapable of identifying source, generic terms are not registrable on the Supplemental Register.
  • If applicant's mark is generic, then no amount of evidence of acquired distinctiveness can establish that the mark is registrable.
    • In re International Business Machines Corporation, Serial No. 75581859, (TTAB 2006).
      • Evidence of acquired distinctiveness cannot suffice to convert a generic term into a registrable mark. As the Board observed in Continental Airlines, 53 USPQ2d at 1395: "Even if one has achieved de facto acquired distinctiveness in a generic term through promotion and advertising, the generic term is still not entitled to protection because to allow protection would "deprive competing manufacturers of the product of the right to call an article by its name." America Online Inc. v. AT & T Corp., 51 USPQ2d 1865, 1873 (E.D. Va. 1999), citing Abercrombie & Fitch, 537 F.2d 4, 9, 189 USPQ 759 (2d Cir. 1976); Genesee Brewing Co., Inc. v. Stroh Brewing Co., 124 F.3d 137, 143 at n.4, 43 USPQ2d 1734 (2d Cir. 1997); Keebler Co. v. Rovira Biscuit Corp., 624 F.2d 366, 374, 207 USPQ 465 (1st Cir. 1980) ("No amount of purported proof that a generic term has acquired secondary meaning associating it with a particular producer can transform that term into a registrable trademark"); Reese Publishing v. Hampton International Communication, 620 F.2d 7, 12 n.2, 205 USPQ 585 (2d Cir. 1980) (Evidence of secondary meaning "at most could have established 'de facto secondary meaning,' which cannot suffice to convert a generic term into a trademark"); Surgicenters of America, Inc. v. Medical Dental Surgeries, Co., 601 F.2d 1011, 1014, 202 USPQ 401 (9th Cir. 1979) (A generic word "cannot be validly registered as a trademark even if there is proof of secondary meaning"). America Online Inc. v. AT & T Corp., 51 USPQ2d at 1873."
    • In re The American Academy of Facial Plastic and Reconstructive Surgery, Serial No. 75/215,519, (TTAB 2002).
      • However, even if we were to find this phrase not to be a generic one for applicant's services, we would hold that, in view of the very highly descriptive nature of these words, applicant's evidence of acquired distinctiveness is insufficient to show that these words have come to be recognized as an indication of origin of the services in applicant. See Yamaha International Corp. v. Hoshino Gakki Co., 840 F.2d 1572, 6 USPQ2d 1001, 1008 (Fed. Cir. 1988)(the greater the degree of descriptiveness a term has, the heavier the burden of proof of acquired distinctiveness).
    • In re The American Academy of Facial Plastic and Reconstructive Surgery, Serial No. 75/215,519, (TTAB 2002).
      • The evidence of purported association of a generic term with an applicant is often viewed as "de facto secondary meaning." McCarthy, supra, §12:47. See also, for example, Abercrombie & Fitch Co. v. Hunting World, Inc., 537 F.2d 4, 189 USPQ 759, 764 (2d Cir. 1976)("[E]ven proof of secondary meaning, by virtue of which some "merely descriptive" terms may be registered, cannot transform a generic term into a subject for trademark ..[N]o matter how much money and effort the user of a generic term has poured into promoting the sale of its merchandise and what success it has achieved in securing public identification, it cannot deprive competing manufacturers of the product the right to call an article by its name."); A.J. Canfield Co. v. Honickman, 808 F.2d 291, 1 USPQ2d 1364 (3d Cir. 1986)(evidence that a generic term is identified with one producer proves only de facto secondary meaning); Christian Science Board of Directors v. Evans, 105 N.J. 297, 520 A.2d 1347, 2 USPQ2d 1093 (N.J.S.Ct. 1987); Continental Airlines Inc. v. United Air Lines Inc., 53 USPQ2d 1385 (TTAB 2000)("Even if one has achieved de facto acquired distinctiveness in a generic term through promotion and advertising, the generic term is still not entitled to protection because to allow protection would 'deprive competing manufacturers of the product of the right to call an article by its name.'"); and In re BOC Group, Inc., 223 USPQ 462 (TTAB 1984)(No amount of secondary meaning evidence can "rescue" a generic term. Customer letters "evidence only de facto secondary meaning, that is some association between the name and applicant. However, to this type of secondary meaning the law does not accord legal significance.").
    • In re A La Vieille Russie, Inc., Serial No. 75/609,153, (TTAB 2001).
      • Because we have found applicant's RUSSIANART designation to be generic as applied to the services recited in the application, applicant's claim that the designation is registrable on the Principal Register pursuant to Section 2(f) is unavailing. That is, because the designation is generic and incapable of functioning as a service mark, no amount of evidence of acquired distinctiveness would be sufficient to warrant its registration as a mark. See, e.g., H. Marvin Ginn Corp., supra, 782 F.2d at 989, 228 USPQ at 530.
    • In re Candy Bouquet International, Inc., Serial No. 78058216, (TTAB 2004).
      • If applicant's mark is generic, which we have found in this case, then no amount of evidence of acquired distinctiveness can establish that the mark is registrable. In re Northland Aluminum Products, Inc., supra at 964.
  • Even if a term is not generic, if the evidence established that the term is very highly descriptive then a relatively greater quantum and quality of evidence of acquired distinctiveness is required in order to support a finding that the term is registrable under Section 2(f).
    • In re A La Vieille Russie, Inc., Serial No. 75/609,153, (TTAB 2001).
      • Even if RUSSIANART were not deemed to be generic for applicant's services, we find that the evidence of record, discussed above, establishes that the term is very highly descriptive of those services. Accordingly, a relatively greater quantum and quality of evidence of acquired distinctiveness is required in order to support a finding that the term is registrable under Section 2(f). See Yamaha International v. Hoshino Gakki, supra, 6 USPQ2d at 1008. Applicant's evidence of acquired distinctiveness in this case falls far short.
  • An abbreviation or initialism of a generic name which still conveys to the relevant public the original generic connotation of the abbreviated name is still generic.
    • In re The Council on Certification of Nurse Anesthetists, Serial No. 75722091, (TTAB 2007).
      • An abbreviation or initialism of a generic name which still conveys to the relevant public the original generic connotation of the abbreviated name is still generic. Acronyms and initialisms are often used interchangeably with the full generic name and recognized as equivalent."
    • Capital Project Management, Inc. v. IMDISI, Inc., Opposition No. 121,819, (TTAB 2003).
      • An abbreviation or initialism of a generic name which still conveys to the relevant public the original generic connotation of the abbreviated name is still generic. Acronyms and initialisms are often used interchangeably with the full generic name and recognized as equivalent. The predecessor to our primary reviewing court had occasion to deal with this issue in the case of Modern Optics, Inc. v. Univis Lens Co., 234 F.2d 504, 110 USPQ 293 (CCPA 1956). In that case, involving the registration of the letters CV as a trademark for ophthalmic lens blanks, the Court stated: "The letters "CV" are, of course, the initial letters of the words "continuous vision," and it is possible for initial letters to become so associated with descriptive words as to become descriptive themselves. [citations omitted] It does not follow, however, that all initials or combinations of descriptive words are ipso facto unregistrable. While each case must be determined on the basis of the particular facts involved, it would seem that, as a general rule, initials cannot be considered descriptive unless they have become so generally understood as representing descriptive words as to be accepted as substantially synonymous therewith." Id. at 295. See also, e.g., Southwire Co. v. Kaiser Aluminum 7 Chemical Corp., 196 USPQ 566 (TTAB 1977); and Intel Corp. v. Radiation Inc., 184 USPQ 54 (TTAB 1974). See generally: J.T. McCarthy, McCarthy on Trademarks and Unfair Competition, §12:37 (4th ed. 2001).
    • In view of the foregoing, we find that the term "certified registered nurse anesthetist" is generic. This does not end our inquiry, however, because it is not automatically the case that the initial letters of a generic term are recognized as being substantially synonymous with such term. Rather, as the Board discussed in Capital Project Management Inc. v. IMDISI Inc., 70 USPQ2d 1172, 1179 involving the designation TIA for scheduling analysis services for construction projects involving time impact analysis: "Whether the initials for this generic term ["time impact analysis"] should also be deemed generic presents a separate, yet related issue. In determining this issue, we must examine whether the letters "TIA" are generally recognized and used in the construction field as an accepted abbreviation for "time impact analysis."
      • Whether the initials for a generic term should also be deemed generic presents a separate, yet related issue. In determining this issue, one must examine whether the initials are generally recognized and used in the particular field as an accepted abbreviation.
  • A trademark registration affords prima facie rights in the marks as a whole, not in any component. Thus, a showing of descriptiveness or genericness of part of a mark does not constitute an attack on the registration
    • Tea Board of India v. The Republic of Tea, Inc., Opposition No. 91118587, (TTAB 2006).
      • FOOTENOTE 5 "Applicant has not counterclaimed to cancel opposer's other pleaded registration for DARJEELING and design even though it too contains the word DARJEELING. Nevertheless, we do not consider the counterclaim against DARJEELING to constitute a collateral attack on the registration which consists only in part of DARJEELING. See Sweats Fashions Inc. v. Pannill Knitting Co. Inc., 833 F.2d 1560, 4 USPQ2d 1793, 1796 (Fed. Cir. 1987) ("The registration affords prima facie rights in the marks as a whole, not in any component. Thus, a showing of descriptiveness or genericness of part of a mark does not constitute an attack on the registration.") (Emphasis in original.)"
  • Evidence of generic use and proper trademark use by applicant does not necessarily create a mixed record that would overcome an examining attorney's evidence of genericness.
    • In re International Business Machines Corporation, Serial No. 75581859, (TTAB 2006).
      • Evidence of generic use and proper trademark use by applicant does not necessarily create a mixed record that would overcome an examining attorney's evidence of genericness. It would be fairly easy for a well-heeled applicant to ensure that its web site and promotional materials, and even articles in the press regarding its products, properly use the applicant's mark. However, in this case, the significant evidence of generic use is not offset by applicant's evidence that shows proper trademark use by applicant and articles regarding applicant's servers.
    • In re America Online, Inc., Serial No. 75460305, (TTAB 2006).
      • While the examining attorney has submitted significant evidence to support the genericness refusal, applicant's response is impressive. The Federal Circuit has addressed a similar case where there was a mixed record on the question of genericness. "The mixture of usages unearthed by the NEXIS computerized retrieval service does not show, by clear evidence, that the financial community views and uses the term CASH MANAGEMENT ACCOUNT as a generic, common descriptive term for the brokerage services to which Merrill Lynch first applied the term." In re Merrill Lynch, Pierce, Fenner and Smith Inc., 828 F.2d 1567, 4 USPQ2d 1141, 1143 (Fed. Cir. 1987) (footnote omitted).
    • In re America Online, Inc., Serial No. 75460305, (TTAB 2006).
      • We add that the mere fact that a record includes evidence of both proper trademark use and generic use does not necessarily create a mixed record that would overcome an examining attorney's evidence of genericness.
    • In re America Online, Inc., Serial No. 75460305, (TTAB 2006).
      • Quite simply, it would be fairly easy for a well-heeled applicant to ensure that there were at least some stories that would properly use an applicant's mark. However, in this case, the evidence of generic use is offset by applicant's evidence that shows not only a significant amount of proper trademark use but also trademark recognition by customers, publishers, and third parties.
  • Hyphenating a term is not necessarily different then the unhyphenated term and both could be seen as an abbreviated form of a term.
    • In re International Business Machines Corporation, Serial No. 75581859, (TTAB 2006).
      • In so finding, we reject applicant's suggestion that there is a difference between "e-server" with a hyphen and "eserver" without a hyphen - we see no difference in the meaning or connotation of "eserver" and "e-server," and consider them both to be an abbreviated form of "electronic server."
    • In re Dial A Mattress Operating Corporation, Serial No. 75/131,355, (TTAB 1999).
      • Specifically, we find that "M-A-T-R-E-S-S" is the legal equivalent of the word "mattress." See In re Hubbard Milling Co., 6 USPQ2d 1239 (TTAB 1987); see also In re Wyandotte Chemicals Corporation, 155 USPQ 100 (TTAB 1967), and In re Initial Teaching Alphabet Publications, Inc., 153 USPQ 684 (TTAB 1967).
  • The combination of two separate terms into one term does not necessarily add additional meaning to the term.
    • In re International Business Machines Corporation, Serial No. 75581859, (TTAB 2006).
      • Also, applicant contends that it has combined two separate terms and through this combination, its mark has added additional meaning to the terms, which enables ESERVER to be capable of identifying applicant's goods. Brief at p. 6. We are not persuaded by applicant's argument in light of the clear evidence of record showing "eserver" as a sub-genus of servers.
  • A term created by combining two words together may be found generic if the evidence of record shows that the public understands the individual terms to be generic for a genus of goods or services, and the joining of the individual terms into one compound word lends 'no additional meaning to the term.
    • In re A La Vieille Russie, Inc., Serial No. 75/609,153, (TTAB 2001).
      • First, where the mark sought to be registered is a compound term "formed by the union of words," the term may be found generic if the evidence of record shows that "the public understands the individual terms to be generic for a genus of goods or services, and the joining of the individual terms into one compound word lends 'no additional meaning to the term.'" In re Dial-A-Mattress Operating Corp., 240 F.3d 1341, 57 USPQ2d 1807, 1810 (Fed. Cir. 2001), quoting from In re American Fertility Society, 188 F.3d 1341, 51 USPQ2d 1832, 1837 (Fed. Cir. 1999). "In other words, if the compound word would plainly have no different meaning from its constituent words, and dictionaries, or other evidentiary sources, establish the meaning of those words to be generic, then the compound word too has been proved generic. No additional proof of the genericness of the compound word is required." In re American Fertility Society, supra, 51 USPQ2d at 1836. See also In re Gould Paper Corp., 834 F.2d 1017, 1018, 5 USPQ2d 1110 (Fed. Cir. 1987)(SCREENWIPE, a compound term composed of generic words SCREEN and WIPE, itself is generic for "pre-moistened, anti-static cloth for cleaning computer and television screens").
  • Dictionary definitions alone cannot support a refusal to register a mark which is a phrase.
    • In re The Outdoor Recreation Group, Serial No. 76570321, (TTAB 2006).
      • We find that, in this case, OUTDOOR PRODUCTS is somewhat more analogous to the phrase considered by the court in American Fertility than it is to the compound word considered in Gould. That is to say, unlike the term SCREENWIPE contemplated by the Federal Circuit in In re Gould, supra, OUTDOOR PRODUCTS appears to be less of a compound word formed by the union of OUTDOOR and PRODUCTS than a phrase comprising its constituent words. Thus, dictionary definitions alone cannot support a refusal to register the proposed mark. However, we need not determine whether definitions of the constituent terms would be sufficient in view of the fact that evidence made of record by the examining attorney establishes that the wording "outdoor products" is the name of a class of goods.
  • Where the mark is a phrase, the Examining Attorney cannot simply cite definitions and generic uses of the individual components of the mark, but must provide evidence of the meaning of the composite mark as a whole.
    • In re The American Academy of Facial Plastic and Reconstructive Surgery, Serial No. 75/215,519, (TTAB 2002).
      • Where the mark is a phrase, the Examining Attorney cannot simply cite definitions and generic uses of the individual components of the mark, but must provide evidence of the meaning of the composite mark as a whole.
    • In re Rodale Inc., Serial No. 78369245, (TTAB 2006).
      • Where (as in this case) the matter sought to be registered is a phrase (rather than a compound word), the Office must provide more than mere dictionary definitions showing the genericness of the component words; "it must conduct an inquiry into 'the meaning of the disputed phrase as a whole.'" Id., quoting from In re American Fertility Society, supra, 51 USPQ2d at 1836.
    • In re Cell Therapeutics, Inc., Serial No. 75/313,795, (TTAB 2003).
      • Thus, the issue before this Board is whether the phrase CELL THERAPEUTICS is a generic phrase for applicant's goods and services. Because applicant is seeking to register a phrase and not a single or compound word, "the Board cannot simply cite [dictionary] definitions and generic uses of the constituent terms of the mark . in lieu of conducting an inquiry as to meaning of the disputed phrase as a whole to hold a mark, or a phrase within the mark, generic." In re American Fertility Society, 188 F.3d 1341, 51 USPQ2d 1832, 1836 (Fed. Cir. 1999).
  • In addition to finding that each of the terms are generic as applied to the genus of services at issue, we also find, as we must under American Fertility, supra, that the phrase consisting of both terms as a whole is generic for the services.
    • In re Rodale Inc., Serial No. 78369245, (TTAB 2006).
      • In addition to finding that each of the words NUTRITION and BULLETIN are generic as applied to the genus of services at issue, we also find, as we must under American Fertility, supra, that the phrase NUTRITION BULLETIN as a whole is generic for the services.
  • The effect of the latter decision's limitation on Gould is to preclude the Patent and Trademark Office from finding a multi-word phrase to be generic, when the only available evidence is that the components are, individually, generic.
    • In re American Institute of Certified Public Accountants, Serial No. 75/626,097, (TTAB 2002).
      • This is not the first case in which parties to an inter partes proceeding, or an applicant and an examining attorney in an ex parte proceeding, have argued over how to harmonize Gould and American Fertility. We, however, need not address these arguments. The effect of the latter decision's limitation on Gould is to preclude the Patent and Trademark Office from finding a multi-word phrase to be generic, when the only available evidence is that the components are, individually, generic.
    • In re Active Ankle Systems, Inc., Serial No. 78349181, (TTAB 2007)
      • Throughout the examination of the application, the examining attorney took the position that the applied-for-mark is a compound word, and thus the determination of genericness should be guided by In re Gould Paper Corp., 834 F.2d 1017, 5 USPQ2d 1110 (Fed. Cir. 1987) and In re Leatherman Tool Group, Inc., 32 USPQ2d 1443 (TTAB 1994).
    • In re Active Ankle Systems, Inc., Serial No. 78349181, (TTAB 2007)
      • Thus, in reaching our decision, we have been guided by American Fertility, supra.
  • If a mark is dominated by a descriptive and disclaimed element, that part of the mark imparts non-registrable meaning to the entire mark.
    • In re The American Academy of Facial Plastic and Reconstructive Surgery, Serial No. 75/215,519, (TTAB 2002).
      • In Dena Corp. v. Belvedere International, Inc., 950 F.2d 1555, 21 USPQ2d 1047 (Fed. Cir. 1991), the Court stated that, if a mark is dominated by a descriptive and disclaimed element, that part of the mark imparts non-registrable meaning to the entire mark.
  • Where a mark containing insignificant elements is dominated by descriptive and unregistrable matter, the entire mark remains unregistrable because the nonregistrable meaning is imparted to the entire mark.
    • In re The American Academy of Facial Plastic and Reconstructive Surgery, Serial No. 75/215,519, (TTAB 2002).
      • The Court explained that where a mark containing insignificant elements is dominated by descriptive and unregistrable matter, the entire mark remains unregistrable because the nonregistrable meaning is imparted to the entire mark.
    • In re The American Academy of Facial Plastic and Reconstructive Surgery, Serial No. 75/215,519, (TTAB 2002).
      • The Court stated, 21 USPQ2d at 1051: "Such a mark, in effect, has no "unregistrable component" because the dominant feature of the mark extends a nonregistrable meaning to the whole. The entire mark becomes nonregistrable."
  • Owners of marks which are logos containing generic names sometimes attempt to assert a greater scope of rights against competitors as if their registration excludes competitors from using the generic name within the registered logo.
    • In re The American Academy of Facial Plastic and Reconstructive Surgery, Serial No. 75/215,519, (TTAB 2002).
      • As Professor McCarthy indicates, supra, at §12:40: "The potential competitive danger of such logo registrations of generic names is that the owners of such registrations sometimes have an inflated notion of the scope of their exclusive rights and assert them against competitors as if they owned the generic name displayed in the registration. Faced with such a registration, the businessperson who fails to seek competent legal advice may agree to cease use of the generic name, causing a significant and unnecessary impairment of the competitive process."
  • A generic term is not transformed into a registrable mark simply by joining it with a toll-free telephone area code which itself is devoid of source-indicating significance.
    • In re Dial A Mattress Operating Corporation, Serial No. 75/131,355, (TTAB 1999).
      • Stated differently, a generic term is not transformed into a registrable mark simply by joining it with a toll-free telephone area code which itself is devoid of source-indicating significance.
  • Test for determining the registerablility of alphanumeric telephone number marks.
    • In re Dial A Mattress Operating Corporation, Serial No. 75/131,355, (TTAB 1999).
      • We note that this test is essentially the same test already used by the Trademark Examining Operation for determining the registrability of alphanumeric telephone number marks. The Trademark Manual of Examining Procedure, following the Third Circuit's Dranoff decision rather than the Second Circuit's Dial-A-Mattress decision, sets forth the following general guidelines with respect to the registrability of such telephone number marks: "If an applicant applies to register a designation that consists of a merely descriptive or generic term with numerals in the form of a telephone number, for example, 800, 888 or 900 followed by a word, registration should be refused under §2(e)(1). The fact that a designation is in the form of a telephone number is insufficient, by itself, to render it distinctive. See Dranoff-Perlstein Associates v. Sklar, 23 USPQ2d 1174 (3d Cir. 1992). But see Dial-A-Mattress Franchise Corp. v. Page, 880 F.2d 675, 11 USPQ2d 1644 (2d Cir. 1989); Murrin v. Midco Communications Inc., 726 F.Supp. 1195, 13 USPQ2d 1815 (D. Minn. 1989). If the relevant term is merely descriptive, but not generic, the mark may be registered on the Principal Register with a proper showing of acquired distinctiveness under §2(f) or on the Supplemental Register. Of course, the designation must also be used in the manner of a mark.9 If the relevant term is generic, the designation is unregistrable on either the Principal or the Supplemental Register." TMEP section 1209.01(b)(12).
  • The test for the registerability of Internet domain name marks is similar to the test for alphanumeric telephone numbers.
    • In re Dial A Mattress Operating Corporation, Serial No. 75/131,355, (TTAB 1999).
      • Furthermore, it appears that a similar analysis has been adopted by the Office for examination of the ever-increasing number of marks which consist of or incorporate those portions of Internet domain names which are devoid of any source-indicating significance, such as "http," "www" and ".com". See Examination Guide No. 2-99, issued September 29, 1999, entitled "Marks Composed, in Whole or in Part, of Domain Names."10 FOOTNOTE 10 "Additionally, we note that the Board has used a similar analysis in the analogous situation of marks which are comprised solely of generic matter combined or joined with an entity designation such as "Inc." or "Co." In such cases, the entity designation is found to be devoid of source-indicating significance, and its presence in the mark does not suffice to transform otherwise generic matter into a registrable mark. See, e.g., In re The Paint Products Co., supra; In re E.I. Kane, Inc., 221 USPQ 1203 (TTAB 1984)."
    • In re Martin Container, Inc., Serial No. 75/553,426, (TTAB 2002).
      • The instant appeal is distinguishable from the decision in that case because the matter sought to be registered here is not a mnemonic formed by combining numbers with a word. It is not a telephone number, but instead is an Internet address, but this fact does not, in and of itself, mandate registration. Just as in the Dial- A-Mattress case, what is sought to be registered is not the name of the genus or category of services, and in a sense similar to the toll-free telephone number scenario, the combination of the generic word "CONTAINER" and the TLD ".COM," considered in its entirety, is not the common descriptive name of the services at issue. In a similar sense, domain names, just like telephone numbers, typically can be used by only one entity at a time.
    • In re Martin Container, Inc., Serial No. 75/553,426, (TTAB 2002).
      • In the case before us, contrary to Dial-A-Mattress, the mark cannot be characterized as a mnemonic phrase. It is instead a compound word, a generic term combined with the top level domain indicator, ".COM." In proving genericness, the Office may satisfy its burden by showing that these separate generic words have a meaning identical to the meaning common usage would ascribe to those words as a compound. In re Gould Paper Corp., 834 F.2d 1017, 5 USPQ2d 1110 (Fed. Cir. 1987).
    • In re Martin Container, Inc., Serial No. 75/553,426, (TTAB 2002).
      • Applicant also argues that the mark is not generic because applicant's services are not Web-based. While it may be that applicant currently does not sell its goods over the Internet, that may not always be the case. In any event, applicant currently advertises its goods on the Internet.
    • In re Martin Container, Inc., Serial No. 75/553,426, (TTAB 2002).
      • We affirm the refusal to register because the matter for which registration is sought, "CONTAINER.COM," is incapable of identifying the source of applicant's retail and rental services featuring containers. Even applicant, as noted above, concedes that "CONTAINER" is generic in connection with its services.2 We agree with the Examining Attorney that what applicant seeks to register is simply a generic term, which has no source-identifying significance in connection with applicant's services, in combination with the top level domain indicator, which also has no source-identifying significance, and that combining the two does not create a term which has somehow acquired the capability of identifying and distinguishing applicant's services. FOOTNOTE 2 "Had applicant not made this concession, the burden would have remained on the Examining Attorney to put in evidence demonstrating generic use of the term, preferably in addition to dictionary evidence of genericness."
  • Generic terms coupled with a TLD (.com, .org, etc.) are considered compound words.
    • In re Eddie Z's Blinds and Drapery, Inc., Serial No. 76112441, (TTAB 2005).
      • Generic terms coupled with a TLD, on the other hand, are considered compound words. See CyberFinancial and Martin Container, supra.
  • Neither the generic term nor the domain indicator has the capability of functioning as an indication of source, and combining the two does not result in a compound term that has somehow acquired this capability.
    • In re Martin Container, Inc., Serial No. 75/553,426, (TTAB 2002).
      • In a similar sense, neither the generic term nor the domain indicator has the capability of functioning as an indication of source, and combining the two does not result in a compound term that has somehow acquired this capability.
    • In re CyberFinancial.Net, Inc., Serial No. 75/482,561, (TTAB 2002).
      • The Board viewed CONTAINER.COM more like a compound term than a phrase, and cited to In re Gould Paper Corp., 834 F.2d 1017, 5 USPQ2d 1110 (Fed. Cir. 1987) in finding it generic. The Board stated that "to the average customer seeking to buy or rent containers, 'CONTAINER.COM' would immediately indicate a commercial web site on the Internet which provides containers." In making its determination, the Board analogized to the cases of In re Paint Products Co., 8 USPQ2d 1863 (TTAB 1988) [PAINT PRODUCTS CO. held incapable of identifying and distinguishing paints], and In re E.I. Kane, Inc., 221 USPQ 1203 (TTAB 1984) [OFFICE MOVERS, INC. held incapable of identifying and distinguishing office facilities moving services].
    • In re CyberFinancial.Net, Inc., Serial No. 75/482,561, (TTAB 2002).
      • The Board also cited to the views espoused by Professor McCarthy: "a top level domain ["TLD"] indicator [such as ".com"] has no source indicating significance and cannot serve any trademark [or service mark] purpose. The same is true of other non-distinctive modifiers used in domain names, such as "http://www" and "html"...[because] the TLD ".com" functions in the world of cyberspace much like the generic indicators "Inc.," "Co.," or "Ltd." placed after the name of a company. A top level domain indicator like ".com" does not turn an otherwise unregistrable designation into a distinctive, registrable trademark [or service mark]. Thus, for example, adding a ".com" to a generic term, such as would not change the basic generic nature and the composite will probably be found generic and unregistrable for the service of providing information in the field of banking." 1 J. McCarthy, McCarthy on Trademarks and Unfair Competition, § 7:17.1 at pp. 7-28.1 to 7-29 (4th ed. 2002).
    • In re CyberFinancial.Net, Inc., Serial No. 75/482,561, (TTAB 2002).
      • We reach the same result here as did the Board in Martin Container. Applicant seeks to register the generic term "bonds," which has no source-identifying significance in connection with applicant's services, in combination with the top level domain indicator ".com," which also has no source-identifying significance. And combining the two terms does not create a term capable of identifying and distinguishing applicant's services. The public would not understand BONDS.COM to have any meaning apart from the meaning of the individual terms combined. In re Gould Paper Corp., supra. Simply put, the TLD ".com," as shown by the Examining Attorney's evidence, signifies to the public that the user of the domain name constitutes a commercial entity.
    • In re CyberFinancial.Net, Inc., Serial No. 75/482,561, (TTAB 2002).
      • We are not the first to find that the TLD designation ".com" has no trademark significance. This finding is consistent with the Ninth Circuit's decision in Brookfield Communications, Inc. v. West Coast Entertainment Corp., 174 F.3d 1036, 50 USPQ2d 1545, 1558 ["the '.com' top-level domain signifies the site's commercial nature"] as well as some lower court decisions. See: 555.1212.com Inc. v. Communication House International Inc., 157 F.Supp2d 1084, 59 USPQ2d 1453, 1458 (N.D. Cal. 2001) wherein the court stated the following: "While no Circuit Court has specifically addressed this issue [of when one adds a ".com" to a generic term], the Ninth Circuit has held that "[t]he domain name is more than a mere address: like trademarks, second-level domain names communicate information as to source." Brookfield Communications, Inc. v. West Coast Entertainment Corp., 174 F.3d 1036, 50 USPQ2d 1545. Second-level domain names are the words before the ".com." The ".com" is considered a top-level domain name. Thus, the Ninth Circuit has implied that the source identifying nature of a domain name, if any, lies in the characters which precede a ".com" not the ".com" itself. Following the Ninth Circuit's lead in Brookfield, one district court has held that generic top level domain names such as ".com" are not source identifying words and are therefore generic." See, also: Image Online Design, Inc. v. Core Association, 120 F.Supp2d 870, 877 (C.D. Cal. 2000); and Nissan Motor Co. v. Nissan Computer Corp., 204 F.R.D. 460, 466-67 (C.D. Cal. 2001).
  • Adjacent words simply run together in domain names, or spaces are replaced with a hyphen or similarly-approved characters.
    • In re DNI Holdings Ltd., Serial No. 76331011, (TTAB 2005).
      • As to domain names, presumably international protocols define a limited range of printable characters for second level domain names, including that they cannot contain spaces. We observe that, generally, adjacent words are simply run together in domain names (or at the very least, any spaces occurring naturally in normal English language text must be replaced with a hyphen or similarly-approved characters).
    • In re Eddie Z's Blinds and Drapery, Inc., Serial No. 76112441, (TTAB 2005).
      • The second reason this case is not, contrary to applicant's contention, akin to that in Dial-A-Mattress, is that 1-888-M-A-T-R-E-S-S was determined to be a mnemonic representing a particular telephone number. Applicant's BLINDSANDDRAPERY.COM is not a mnemonic, but rather, a correctly spelled generic term followed by the TLD ".com." See CyberFinancial, 65 USPQ2d at 1793-94, and Martin Container, 65 USPQ2d at 1061.
  • The precise generic term and TLD combination can be incorporated into other domain names. Others should not be precluded from combining its name with the generic compound term.
    • In re Eddie Z's Blinds and Drapery, Inc., Serial No. 76112441, (TTAB 2005).
      • Further, as explained in CyberFinancial, mnemonics representing telephone numbers correspond to unique ten-digit numbers that can be used by only a single entity, whereas the precise generic term and TLD combination employed by applicant can be incorporated into other domain names. A "blinds and drapery" concern should not be precluded from combining its name with the generic compound term BLINDSANDDRAPERY.COM to create thereby a different domain name from that of applicant. CyberFinancial, 65 USPQ2d at 1793.
  • While the addition of a TLD such as ".com" or ".org" to an otherwise unregistrable mark will typically not add any source identifying significance, this "is not a bright-line, per se rule and that exceptional circumstances might yield a different result.
    • In re Reed Elsevier Properties Inc., Serial No. 75530795, (TTAB 2005).
      • As the Board noted in its decision in the Eddie Z's case, In re Eddie Z's Blinds and Drapery Inc., 74 USPQ2d 1037 (TTAB 2005), we are cognizant of the Federal Circuit's ruling in Oppedahl, which cautions that while the "addition of a TLD such as '.com' or '.org' to an otherwise unregistrable mark will typically not add any source identifying significance," this "is not a bright-line, per se rule" and that "exceptional circumstances" might yield a different result. Oppedahl, 71 USPQ2d 1374.
    • In re Eddie Z's Blinds and Drapery, Inc., Serial No. 76112441, (TTAB 2005).
      • We also are aware of the Federal Circuit's ruling in In re Oppedahl & Larson LLP, 373 F.3d 1171, 71 USPQ2d 1370 (Fed. Cir. 2004), on which applicant relies in its reply brief. Oppedahl cautions that while the "addition of a TLD such as '.com' or '.org' to an otherwise unregistrable mark will typically not add any source-identifying significance," this "is not a bright-line, per se rule" and that "exceptional circumstances" might yield a different result. Id. at 71 USPQ2d 1374.
  • The addition of the word '"Company" to an otherwise unregistrable mark does not render the mark registrable.
    • In re CyberFinancial.Net, Inc., Serial No. 75/482,561, (TTAB 2002).
      • Over 100 years ago, the Supreme Court, in the case of Goodyear's India Rubber Glove Mfg. Co. v. Goodyear Rubber Co., 128 US 598, 602 (1888), indicated that "[t]he addition of the word 'Company' [to an otherwise unregistrable mark] only indicates that parties have formed an association or partnership to deal in such goods..." and does not render the mark registrable.
    • In re CyberFinancial.Net, Inc., Serial No. 75/482,561, (TTAB 2002).
      • The Supreme Court noted that adding "company" to "wine" or "cotton" or "grain" did not magically create a term that was no longer generic: "[P]arties united to produce or sell wine, or to raise cotton or grain, might style themselves Wine Company, Cotton Company, or Grain Company; but by such description they would in no respect impair the equal right of others engaged in similar business to use similar designations, for the obvious reason that all persons have a right to deal in such articles, and to publish that fact to the world. Names of such articles cannot be adopted as trade-marks, and be thereby appropriated to the exclusive right of any one; nor will the incorporation of a company in the name of an article of commerce, without other specification, create any exclusive right to use of the name. Id. at 602-03."
  • A term which is generic for a particular class of goods is also deemed to be generic for the services of selling those goods.
    • In re Candy Bouquet International, Inc., Serial No. 78058216, (TTAB 2004).
      • Inasmuch as applicant is seeking to register a service mark rather than a trademark, an additional principle applicable to our genericness determination in this case is that a term which is generic for a particular class of goods is also deemed to be generic for the services of selling those goods. See, e.g., In re CyberFinancial.Net, Inc., 65 USPQ2d 1789 (TTAB 2002) [BONDS.COM generic for providing information regarding financial products and services on the Internet and providing electronic commerce services on the Internet]; In re A La Vielle Russie Inc., 60 USPQ2d 1895 (TTAB 2001) [RUSSIANART generic for a particular field or type of art and also for dealership services directed to that field]; In re Log Cabin Homes Ltd., 52 USPQ2d 1206 (TTAB 1999) [LOG CABIN HOMES generic for "architectural design of buildings, especially houses, for others," and "retail outlets featuring kits for constructing buildings, especially houses"]; In re Bonni Keller Collections Ltd., 6 USPQ2d 1224 (TTAB 1987) [LA LINGERIE generic for "retail store services in the field of clothing"]; and In re Half Price Books, Records, Magazines, Incorporated, 225 USPQ 219 (TTAB 1984) [HALF PRICE BOOKS RECORDS MAGAZINES generic for "retail book and record store services"]. See also In re Northland Aluminum Products, supra [BUNDT generic of a "ring cake mix" despite fact that evidence showed generic use of term only for a type of cake, and not for a cake mix].
    • In re A La Vieille Russie, Inc., Serial No. 75/609,153, (TTAB 2001).
      • The second principle applicable to our genericness determination in this case is that a term which is generic for a particular class of goods is also deemed to be generic for the services of selling those goods. See, e.g., In re Log Cabin Homes Ltd., 52 USPQ2d 1206 (TTAB 1999)(LOG CABIN HOMES generic for "architectural design of buildings, especially houses, for others," and "retail outlets featuring kits for constructing buildings, especially houses"); In re Bonni Keller Collections Ltd., 6 USPQ2d 1224 (TTAB 1987)(LA LINGERIE generic for "retail store services in the field of clothing"); In re Wickerware, Inc., 227 USPQ 970 (TTAB 1985)(WICKERWARE generic for "mail order and distributorship services in the field of products made of wicker"); and In re Half Price Books, Records, Magazines, Incorporated, 225 USPQ 219 (TTAB 1984)(HALF PRICE BOOKS RECORDS MAGAZINES generic for "retail book and record store services"). Cf. In re Northland Aluminum Products, 777 F.2d 1556, 227 USPQ 961 (Fed. Cir. 1985)(BUNDT generic for a "ring cake mix" despite fact that evidence showed generic use of term only for a type of cake, and not for a cake mix).
  • While one should not place determinative weight upon it, the way in which newspaper articles capitalize the term can suggest that the term functions as an identifier and not as a generic designation.
    • Jacob Zimmerman v. National Association of Realtors, Cancellation No. 92032360, (TTAB 2003).
      • While one should not place determinative weight upon whether or not the journalists and editors involved in these randomly-selected newspaper articles use an uppercase or lower-case letter "R," we find it instructive that in a majority of these instances, the word "Realtor" is capitalized and used in a manner consistent with respondent's position that this term functions as an identifier for its members - not as a generic designation for all real estate agents.
  • Definition: Hybrid mark.
    • Jacob Zimmerman v. National Association of Realtors, Cancellation No. 92032360, (TTAB 2003).
      • In Bayer, Judge Learned Hand observed that case "presents a situation in which . the trade is divided into two classes, separated by vital differences."18

        FOOTNOTE 18 "Here, as in the Bayer case, a single term may be found to function as a "hybrid," i.e., a trademark and a generic term for the same goods or service, depending upon whether one is a member of the class of knowledgeable intermediaries or a member of the general public. The professional class in the Bayer case included retail pharmacists, and it was in these wholesale channels of trade where Bayer was permitted to retain the trademark status of the term "Aspirin." In the Bayer case, ordinary consumers were not free to enter into the marketplace reserved for pharmacists and physicians. Similarly, here, consumers needing the services of a real estate agent or broker are not free to enter into the world of the real estate professional. Like the pharmacists and physicians in Bayer, the real estate professionals herein - whether or not they are members of respondent - have at their ready disposal the generic identifier to which they are most accustomed. See also "Distinct Classes of Consumers of a Single Product - Accommodating Competing Perceptions of Genericness of the Same Identification," Jonathan Bersade, The Trademark Reporter, 86 T.M.R. 56 (1996)."

  • Evidence: Any competent source suffices to show the relevant purchasing public's understanding of a contested term, including purchaser testimony, consumer surveys, dictionary definitions, trade journals, newspapers and other publications.
    • In re Active Ankle Systems, Inc., Serial No. 78349181, (TTAB 2007)
      • "Any competent source suffices to show the relevant purchasing public's understanding of a contested term, including purchaser testimony, consumer surveys, dictionary definitions, trade journals, newspapers and other publications." In re Dial-A-Mattress Operating Corp., supra, 57 USPQ2d at 1810.
    • In re Lens.com, Inc., Serial No. 78076812, (TTAB 2007)
      • Evidence of the relevant public's understanding of a term may be obtained from any competent source, including testimony, surveys, dictionaries, trade journals, newspapers, and other publications. See In re Northland Aluminum Products, Inc., 777 F.2d 1556, 227 USPQ 961 (Fed. Cir. 1985).
    • Tea Board of India v. The Republic of Tea, Inc., Opposition No. 91118587, (TTAB 2006).
      • Evidence of the relevant public's understanding of a term may be obtained from "any competent source...including purchaser testimony, consumer surveys, dictionary definitions, trade journals, newspapers and other publications." In re Dial-A-Mattress Operating Corp., 240 F.3d 1341, 57 USPQ2d 1807, 1810 (Fed. Cir. 2001).
    • Capital Project Management, Inc. v. IMDISI, Inc., Opposition No. 121,819, (TTAB 2003).
      • Evidence of the relevant public's understanding of a term may be obtained from any competent source, including testimony, surveys, dictionaries, trade journals, newspapers, and other publications. In re Northland Aluminum Products, Inc., 777 F.2d 1556, 227 USPQ 961 (Fed. Cir. 1985).
    • In re International Business Machines Corporation, Serial No. 75581859, (TTAB 2006).
      • "Evidence of the public's understanding of the term may be obtained from any competent source, such as purchaser testimony, consumer surveys, listings in dictionaries, trade journals, newspapers, and other publications." In re Merrill Lynch, Pierce, Fenner and Smith Inc., 828 F.2d 1567, 4 USPQ2d 1141, 1143 (Fed. Cir. 1987).
    • In re The American Academy of Facial Plastic and Reconstructive Surgery, Serial No. 75/215,519, (TTAB 2002).
      • Evidence of the public's understanding of a term can be obtained from any competent source, including dictionary definitions, research databases, newspapers and other publications. In re Northland Aluminum Products, Inc., 777 F.2d 1556, 227 USPQ 961 (Fed. Cir. 1985)(BUNDT designates a type of cake, held generic for ring cake mix).
    • Jacob Zimmerman v. National Association of Realtors, Cancellation No. 92032360, (TTAB 2003).
      • Evidence of the relevant public's perception of a term may be obtained from any competent source, including newspapers, magazines, dictionaries, trade journals, catalogs and other publications. In re Leatherman Tool Group, Inc., 32 USPQ2d 1443, 1449 (TTAB 1994), citing In re Northland Aluminum Products, Inc., supra.
    • In re Rodale Inc., Serial No. 78369245, (TTAB 2006).
      • "Any competent source suffices to show the relevant purchasing public's understanding of a contested term, including purchaser testimony, consumer surveys, dictionary definitions, trade journals, newspapers and other publications." In re Dial- A-Mattress Operating Corp., supra, 57 USPQ2d at 1810.
    • In re Reed Elsevier Properties Inc., Serial No. 75530795, (TTAB 2005).
      • Evidence of the public's understanding of a term may be obtained from any competent source, including testimony, surveys, dictionaries, trade journals, newspapers and other publications. See Merrill Lynch, supra, 4 USPQ2d at 1143 (Fed. Cir. 1987), and In re Northland Aluminum Products, Inc., 777 F.2d 1556, 227 USPQ 961, 963 (Fed. Cir. 1985).
    • In re Candy Bouquet International, Inc., Serial No. 78058216, (TTAB 2004).
      • Evidence of the relevant public's understanding of a term may be obtained from any competent source, including testimony, surveys, dictionaries, trade journals, newspapers, and other publications. In re Northland Aluminum Products, Inc., 777 F.2d 1556, 227 USPQ 961 (Fed. Cir. 1985).
    • In re The Outdoor Recreation Group, Serial No. 76570321, (TTAB 2006).
      • Evidence of the relevant public's understanding of a term may be obtained from any competent source, including testimony, surveys, dictionaries, trade journals, newspapers, and other publications. See In re Northland Aluminum Products, Inc., 777 F.2d 1556, 227 USPQ 961 (Fed. Cir. 1985).
    • In re American Institute of Certified Public Accountants, Serial No. 75/626,097, (TTAB 2002).
      • Evidence of the public's understanding of a term may be obtained from any competent source, including testimony, surveys, dictionaries, trade journals, newspapers and other publications. See In re Merrill Lynch, Pierce, Fenner and Smith Inc., 828 F.2d 1567, 4 USPQ2d 1141, 1143 (Fed. Cir. 1987), and In re Northland Aluminum Products, Inc., 777 F.2d 1556, 227 USPQ 961, 963 (Fed. Cir. 1985).
    • Nobelle.com, LLC v. Qwest Communications International, Inc., Cancellation No. 92030454, (TTAB 2003).
      • Evidence of the public's understanding (under the second part of the Ginn test) may come from direct testimony of consumers, consumer surveys, dictionary listings, or from generic usage in newspapers and other publications. See Magic Wand Inc., supra, 19 USPQ2d at 1553; In re Northland Aluminum Products, Inc., 777 F.2d 1556, 227 USPQ 961, 963 (Fed. Cir. 1985).
    • In re Eddie Z's Blinds and Drapery, Inc., Serial No. 76112441, (TTAB 2005).
      • Evidence of the public's understanding of a term may be obtained from any competent source, including testimony, surveys, dictionaries, trade journals, newspapers and other publications. See Merrill Lynch, supra, 4 USPQ2d at 1143 (Fed. Cir. 1987), and In re Northland Aluminum Products, Inc., 777 F.2d 1556, 227 USPQ 961, 963 (Fed. Cir. 1985).
  • Evidence: Evidence of use of a term or phrase in headings or content on individual web sites has far greater probative value than a search results list with truncated text.
    • In re International Business Machines Corporation, Serial No. 75581859, (TTAB 2006).
      • FOOTNOTE 3 "Some of this evidence has limited probative value. The listing of search results from the Google database for "server" showing "about 104,000,000" results, and for "eserver" showing "about 2,030,000" results, is of limited probative value because the excerpts that appear in the Google listing are extremely truncated with brief bits of text, and we do not have the web pages themselves from which to examine the context within which the search terms are used. Evidence of use of a term or phrase in headings or content on individual web sites has far greater probative value. See In re Fitch IBCA Inc., 64 USPQ2d 1058 (TTAB 2002)."
  • Evidence: The TTAB takes judicial notice that toll-free area codes are used by numerous entities and are devoid of any source-indicating significance.
    • In re Dial A Mattress Operating Corporation, Serial No. 75/131,355, (TTAB 1999).
      • Furthermore, we take judicial notice, see Fed. R. Evid. 201(b) and Trademark Rule 2.122(a), that toll-free telephone area codes such as "1-888" are used by numerous persons and businesses, and accordingly we find that such telephone area codes are devoid of any source-indicating significance.
  • Evidence: With the increase of the public obtaining news via the Internet, it is now more likely that newswire stories will reach the public.
    • In re Cell Therapeutics, Inc., Serial No. 75/313,795, (TTAB 2003).
      • Taking a broader view, we note that the Professional Tennis Council and Appetito Provisions cases were decided well over fifteen years ago. This Board would be blind if it did not recognize that during the past fifteen years, there has been a dramatic change in the way Americans receive their news.
    • In re Cell Therapeutics, Inc., Serial No. 75/313,795, (TTAB 2003).
      • Put quite simply, we believe that communications have changed dramatically during the past fifteen years such that by now it is by no means uncommon for even ordinary consumers (much less sophisticated doctors and researchers) to receive news not only via tangible newspapers and magazines, but also electronically through personal computers. Thus, it is much more likely that newswire stories will reach the public because they can be picked up and "broadcast" on the Internet.
  • Evidence: While newswire stories do not have the same probative value as stories appearing in magazines and newspapers, such that said newswire stories have decidedly more probative value than they did prior to the increasing use of the Internet.
    • In re Cell Therapeutics, Inc., Serial No. 75/313,795, (TTAB 2003).
      • In short, while we are not saying that newswire stories are of the same probative value as are stories appearing in magazines and newspapers, we think that the situation has changed such that said newswire stories have decidedly more probative value than they did when this Board decided the Professional Tennis Council and Appetito Provisions cases.
  • Evidence: Third-party registrations are of little persuasive value because prior registrations do not bind the TTAB as it must assess each mark on the record of public perception submitted with the application.
    • In re Cell Therapeutics, Inc., Serial No. 75/313,795, (TTAB 2003).
      • In any event, it is a matter of law that "even if some prior registrations had some characteristics similar to [applicant's] application, the PTO's allowance of such prior registrations does not bind the Board or this court . The Board (and this court in its limited review) must assess each mark on the record of public perception submitted with the application. Accordingly, this court finds little persuasive value in the registrations that [applicant] submitted to the examiner or the list of registered marks [applicant] attempted to submit to the Board." In re Nett Designs Inc., 236 F.3d 1339, 57 USPQ2d 1564, 1566 (Fed. Cir. 2001).
  • Evidence: Survey criticisms.
    • Jacob Zimmerman v. National Association of Realtors, Cancellation No. 92032360, (TTAB 2003).
      • Totally apart from the question of whether petitioner has selected the proper universe for this survey, we find that many of respondent's criticisms of this survey are valid, including, but not limited to, the following: .= The low response rate (~10%) negatively affects the reliability of the survey, as the sample may well no longer be representative of the relevant consuming universe. .= The final number of survey subjects (96) was too low to accord much weight to the study results. .= The gate-keeping queries deviated from the "Teflon" format in ways that render the answers meaningless in ensuring understanding on the part of the survey subjects.15 .= Orienting the survey subjects to the concept of "brand names" and giving them examples of well-known brands and trade names before asking them to categorize a collective mark was misleading. .= The failure to provide survey subjects with a "don't know" option forced guessing or choosing an option by default.
  • Evidence: The gate-keeping questions in a genericness survey are designed to determine whether the survey participant understands the difference between "brand names" and "common names.
    • Jacob Zimmerman v. National Association of Realtors, Cancellation No. 92032360, (TTAB 2003).
      • FOOTNOTE 15 "The gate-keeping questions in a genericness survey are designed to determine whether the survey participant understands the difference between "brand names" and "common names.""
  • Evidence: Examples of evidence offered as probative in answering the second question posed by analysis of genericness.
    • Jacob Zimmerman v. National Association of Realtors, Cancellation No. 92032360, (TTAB 2003).
      • There was a fairly extensive record developed during these proceedings, and we review the principal categories of evidence offered as probative in answering the second question posed by the Marvin Ginn analysis of genericness. HEADINGS IN ANALYSIS (1) Uncontested Generic Use By Competitors (2) Generic Use By the Trademark Holder (3) Dictionary Definitions (4) Generic Use in the Media (5) Testimony of Persons in the Trade (6) Consumer Surveys
  • Evidence: Evidence that the subject term is used both as a class of products and that business refer to themselves in that business are probative evidence of the genericness of the term.
    • In re Eddie Z's Blinds and Drapery, Inc., Serial No. 76112441, (TTAB 2005).
      • These third-party registrations, article excerpts and web pages show that "blinds and drapery" is used as the name or designation for a class of products used in homes and businesses and is the term used by many businesses to indicate that they make or sell blinds, drapery and other "window treatments." Both types of evidence, i.e., the evidence that shows there is a class of products known as "blinds and drapery," and the evidence that shows businesses refer to themselves as, or are referred to by others as, a "blinds and drapery" business, are probative evidence of the genericness of BLINDSANDDRAPERY.COM for applicant's services. See, e.g., In re Half Price Books, Records, Magazines, Incorporated, 225 USPQ 219, 221 (TTAB 1984) (generic terms for products equally generic for a retailer of such products).
  • Evidence: A submitted Google search result and copies of web pages from the search were made part of the record to show the use of a mark in a generic fashion.
    • In re DNI Holdings Ltd., Serial No. 76331011, (TTAB 2005).
      • With that definition of "relevant public" in mind, the Trademark Examining Attorney characterizes the evidence in the file as follows: "It is similarly clear from the record herein that the providers of sportsbetting services use the term in reference to the providing of information in this field, such as sportsbetting information. The results of a search of the GOOGLE® database attached to the Office Action of December 15, 2003 for the term "sportsbetting" resulted in approximately 216,000 hits, and copies of web pages viewed as part of the results of said search and of record herein show use of the mark in generic fashion for both betting and providing of sportsbetting information."
  • Evidence: Evidence of competitor use of the term in a generic manner is evidence of genericness.
    • Nobelle.com, LLC v. Qwest Communications International, Inc., Cancellation No. 92030454, (TTAB 2003).
      • Petitioner has not submitted any of these types of evidence in this case. Instead, petitioner bases its genericness claim on evidence showing use of the Bell logo by multiple, unrelated third-party competitors of respondent's, i.e., the other RBOCs. "The cases have recognized that competitor use is evidence of genericness." BellSouth Corp. v. DataNational Corp., 60 F.3d 1565, 35 USPQ2d 1554, 1558 (Fed. Cir. 1995).
  • Evidence: Evidence of competitors' use of a logo is not relevant or probative if it is not used within the same description of services set forth in the certificate of registration.
    • Nobelle.com, LLC v. Qwest Communications International, Inc., Cancellation No. 92030454, (TTAB 2003).
      • First, although the genus of services involved in this case is "telecommunications services," essentially all of petitioner's evidence pertains to respondent's competitors' use of the Bell logo on goods, i.e., telephones, telephone accessories, and other related equipment. Such evidence simply is not relevant to, or probative of, the issue to be decided in this cancellation proceeding, i.e., whether the registered Bell logo mark is generic for the "telecommunications services" recited in the registration petitioner seeks to cancel. See Magic Wand Inc., supra, 19 USPQ2d at 1552 ("Thus, a proper genericness inquiry focuses on the description of services set forth in the certificate of registration.").
  • Evidence: Evidence of competitors use of a term is irrelevant if it pertains to goods rather than to the services recited in respondent's registration, and it is insufficient because it fails to show that the competitors use of the term in a generic manner or otherwise than as a trademark or service mark.
    • Nobelle.com, LLC v. Qwest Communications International, Inc., Cancellation No. 92030454, (TTAB 2003).
      • In short, petitioner's "competitor use" genericness evidence (which is petitioner's only proffered genericness evidence) is irrelevant to the extent that it pertains to goods rather than to the services recited in respondent's registration, and it is insufficient in any event because it fails to show that respondent's competitors use the Bell logo in a generic manner or otherwise than as a trademark or service mark. We find that petitioner has not proven that the public understands the Bell logo to be a generic designation as applied to telecommunications services, and that petitioner's genericness claim therefore fails.
  • Evidence: Evidence of how competitors, dealers and consumers perceive the term can be through declarations or affidavits.
    • In re Log Cabin Homes, Ltd., Serial No. 74/682,845, (TTAB 1998).
      • Before leaving the issue of genericness and turning to the issue of acquired distinctiveness, we wish to make two comments which are pertinent to both issues. First, we note again that applicant has made of record no evidence regarding how its competitors, dealers and ultimate consumers perceive the term "log cabin homes." Such evidence could have been in the form of declarations or affidavits. Thus, we have no evidence showing that competitors, dealers and ultimate consumers either (1) have perceived from the very beginning the term "log cabin homes" as a service mark and not as a generic term, or (2) have come to recognize the term "log cabin homes" as having acquired a secondary meaning, that is to say, as having acquired distinctiveness indicating services emanating from applicant.
  • Evidence: Mere dates of use and ownership of registrations are insufficient to rebut the Examining Attorney's prima facie case of genericness.
    • In re The Outdoor Recreation Group, Serial No. 76570321, (TTAB 2006).
      • In addition, applicant has failed to introduce evidence sufficient to rebut the examining attorney's evidence of genericness. Instead, applicant merely relies upon the asserted dates of use of its proposed mark since September 1974 and ownership of its prior registrations. As such, the evidence submitted by applicant in this case is insufficient to rebut the examining attorney's strong prima facie case of genericness. Cf. In re American Online, Inc., 77 USPQ2d 1618 (TTAB 2006).
  • Case Finding: The term "certified registered nurse anesthetist" is generic in that it directly names the services, i.e., certified registered nurse anesthetist services.
    • In re The Council on Certification of Nurse Anesthetists, Serial No. 75722091, (TTAB 2007).
      • In this case, the term "certified registered nurse anesthetist" is generic in that it directly names the services, i.e., "certified registered nurse anesthetist services." See In re Northland Aluminum Products, Inc., 777 F.2d 1556, 227 USPQ 961 (Fed. Cir. 1995)[BUNDT for coffee cake held generic]; In re Central Sprinkler Co., 49 USPQ2d 1194 (TTAB 1998) [ATTIC for automatic sprinklers for fire protection held generic]; and In re Reckitt & Colman, North America Inc., 18 USPQ2d 1389 (TTAB 1991) [PERMA PRESS for soil and stain removers held generic]. It would be reasonable for a surgical patient, doctor or hospital administrator to refer to such anesthesia and anesthesia related care as certified registered nurse anesthetist care.
  • Case Finding: The TTAB is not convinced that CRNA would be seen as an alterative to the generic term "certified registered nurse anethetist" and thus resolved the doubt in applicant's favor.
    • In re The Council on Certification of Nurse Anesthetists, Serial No. 75722091, (TTAB 2007).
      • In other words, we are not convinced, on this record, that surgical patients, doctors, and hospital administrators would understand that CRNA stands for or is an alternative term for a certified registered nurse anesthetist generally, rather than as referring to a registered nurse anesthetist certified by applicant. We readily admit that we have doubt as to the character of CRNA, but we believe such doubt should be resolved in applicant's favor. In re Waverly Inc., 27 USPQ2d 1620 (TTAB 1993).
  • Case Finding: The relevant public for applicant's goods included not only medical doctors but also the general public given evidence that the goods were available for public purchase through the Internet.
    • In re Active Ankle Systems, Inc., Serial No. 78349181, (TTAB 2007)
      • Next, we must determine the relevant public for applicant's goods. Contrary to applicant's assertion that the relevant public for its goods consists only of medical doctors, and in particular, podiatrists, we find the relevant public also includes the general public. While physicians/podiatrists may recommend the use of applicant's product to their patients, and even assuming that applicant's orthopedic splints may only be obtained from a physician/podiatrist, the general public is still the ultimate consumer and, thus, included in the relevant public. Moreover, the evidence of record shows that applicant's orthopedic splints sold under the designation DORSAL NIGHT SPLINT are available for purchase by the general public via the Internet at (www.alimed.com) and (www.drnelsonclinic.com).
  • Case Finding: "CPA Examination" held generic.
    • In re Active Ankle Systems, Inc., Serial No. 78349181, (TTAB 2007)
      • See In re American Institute of Certified Public Accountants, 65 USPQ2d 1972 (TTAB 2003) (The term "CPA Examination" held generic notwithstanding that some members of the relevant public appeared to associate the term with applicant.).
  • Case Finding: Cases where a terms was found generic for applicant's services.
    • In re Lens.com, Inc., Serial No. 78076812, (TTAB 2007)
      • Because "lens" is a name for the contact eyewear which comprises the subject matter of applicant's services, the term is likewise a generic name for the retail Internet store services themselves. See In re Candy Bouquet International, Inc., 73 USPQ2d 1883 (TTAB 2004) [because CANDY BOUQUET is generic for gift packages of candy, it also is generic for applicant's retail, mail and computer ordering services therefor]; In re A La Vieille Russie Inc., 60 USPQ2d 1895 (TTAB 2001) [RUSSIANART generic for particular field or type of art and also for dealership services directed to that field]; In re Log Cabin Homes Ltd., 52 USPQ2d 1206 (TTAB 1999) [because LOG CABIN HOMES is generic for a particular type of building, it is also generic for architectural design services directed to that type of building, and for retail outlets featuring kits for construction of that type of building]; In re Web Communications, 49 USPQ2d 1478 (TTAB 1998) [because WEB COMMUNICATIONS is generic for publication and communication via the World Wide Web, it is also generic for consulting services directed to assisting customers in setting up their own Web sites for such publication and communication); and In re Harcourt Brace Jovanovich, Inc., 222 USPQ 820 (TTAB 1984) [LAW & BUSINESS incapable of distinguishing applicant's services of arranging and conducting seminars in the field of business law].
    • In re The American Academy of Facial Plastic and Reconstructive Surgery, Serial No. 75/215,519, (TTAB 2002).
      • As used in connection with training in the field of facial plastic surgery, promoting the interests of facial plastic surgeons and research in this field, as well as indicating membership of facial plastic surgeons, the words FACIAL PLASTIC SURGERY are generic, indicating only the field of specialty in which these services are rendered. See, for example, In re A La Vieille Russie, Inc., 60 USPQ2d 1895 (TTAB 2001)(RUSSIANART generic for dealership services in the field of fine art, antiques, furniture and jewelry); In re Log Cabin Homes Ltd., 52 USPQ2d 1206 (TTAB 1999)(LOG CABIN HOMES generic for architectural design of buildings and retail outlets selling kits for building log homes); In re Web Communications, 49 USPQ2d 1478 (TTAB 1998)(WEB COMMUNICATIONS generic for consulting services to businesses seeking to establish sites on a global computer network).
    • In re The American Academy of Facial Plastic and Reconstructive Surgery, Serial No. 75/215,519, (TTAB 2002).
      • The words FACIAL PLASTIC SURGERY for training, association, research and collective membership services in the field of facial plastic surgery are clearly very highly descriptive of the nature and subject matter of applicant's services rendered to facial plastic surgeons, and applicant's evidence of acquired distinctiveness fails to demonstrate that these words alone have become associated with any one entity. See, for example, In re Stanbel Inc., 16 USPQ2d 1469 (TTAB 1990), aff'd 20 USPQ2d 1319 (Fed. Cir. 1991)(ICE PAK for reusable ice substitute for use in food and beverage coolers held generic; even assuming a contrary holding, evidence submitted by applicant deemed insufficient to establish acquired distinctiveness); and In re Paint Products Co., 8 USPQ2d 1863 (TTAB 1988)(PAINT PRODUCTS CO. for "interior and exterior paints and coatings, namely, alkyd, oil, latex, urethane and epoxy based paints and coatings" held incapable of becoming distinctive; even assuming the term could function as a mark, applicant's evidence deemed insufficient to establish acquired distinctiveness). Cf. In re American Fertility Society, supra (SOCIETY FOR REPRODUCTIVE MEDICINE held not generic for association services in the field of reproductive medicine).
  • Case Finding: A term was found generic where the listed services in the application would include the more specific term.
    • In re Lens.com, Inc., Serial No. 78076812, (TTAB 2007)
      • In the present case, although the recitation of services does not specifically use the term "lens," we have found based upon the evidence of record that the "contact eyewear products" listed in the present application encompass the more specific term "lens." And, if applicant's mark LENS is generic as to part of the services applicant offers under its mark, the mark is unregistrable. See In re Analog Devices Inc., 6 USPQ2d 1808, 1810 (TTAB 1988), aff'd without pub. op., 871 F.2d 1097, 10 USPQ2d 1879 (Fed. Cir. 1989); and In re Allen Electric and Equipment Co., 458 F.2d 1404, 173 USPQ 689, 690 (CCPA 1972) [genericness is determined on the basis of the goods and/or services identified in the involved application].
  • Case Finding: "Lens" is a generic term and unregisterable for retail services in the field of contact eyewear.
    • In re Lens.com, Inc., Serial No. 78076812, (TTAB 2007)
      • In short, the proposed mark is a common designation used in the industry to identify retail services in the field of contact eyewear. The designation LENS is generic and does not and could not function as a service mark to distinguish applicant's services from those of other contact eyewear providers and serve as an indication of origin. The designation sought to be registered should not be subject to exclusive appropriation, but rather should remain free for others in the industry to use in connection with their contact eyewear services. See In re Boston Beer Co. L.P., 198 F.3d 1370, 53 USPQ2d 1056 (Fed. Cir. 1999).
  • Case Finding: Conclusory statements that applicant's mark is arbitrary or at most suggestive is unpersuasive and does not make the statements true.
    • In re Viventia Biotech Inc., Serial No. 76424575, (TTAB 2006).
      • We note applicant's argument that its mark is "arbitrary, or at most suggestive," brief, p. 3, but we are simply unpersuaded by applicant's conclusory statements to this effect. Applicant variously contends "that imagination, thought and perception would be required for the consumer to obtain any direct message about the goods and services offered by Applicant," and that ARMED ANTIBODIES "fails to directly convey a real and unequivocal idea of goods and services." Brief, p. 4. However, simply making these statements does not make them true.
  • Case Finding: "E" is a prefix generally recognized as meaning "electronic" in connection with computers and the Internet.
    • In re International Business Machines Corporation, Serial No. 75581859, (TTAB 2006).
      • We find that in the context of applicant's identified goods, which fall within the definition of a "server," and in light of the term SERVER in applicant's mark, the "E" in ESERVER would be perceived as a prefix standing for "electronic," and identify a server involved with the Internet. See Continental Airlines, 53 USPQ2d at 1397 ("'E-ticket' is an abbreviated form of 'electronic ticketing'"); In re Styleclick.com Inc., 57 USPQ2d 1445, 1448 (TTAB 2000) ("E" is a prefix that is generally recognized as meaning "electronic" in connection with computers and the Internet).
  • Case Finding: The stair-step display of generic words was the result of the length of the individual words and does not create a commercial impression apart from the unregisterable components.
    • In re The American Academy of Facial Plastic and Reconstructive Surgery, Serial No. 75/215,519, (TTAB 2002).
      • Here, the display of the generic words FACIAL PLASTIC SURGERY is clearly nondistinctive with the words shown one above the other in ordinary capital letters with an insignificant underscoring. The display is nothing but ordinary in nature and does not create a commercial impression separate and apart from the unregistrable components. The only "design" component of applicant's asserted mark is the underlining, and there is no evidence of record that specifically points to recognition of this common and prosaic feature in applicant's asserted mark as the element which potential purchasers or users of applicant's services have come to recognize as the distinctive aspect indicating origin in applicant.
    • In re The American Academy of Facial Plastic and Reconstructive Surgery, Serial No. 75/215,519, (TTAB 2002).
      • Applicant makes much of the fact that its mark is displayed in a "cascading stairstep" manner. However, we note that such a display is the natural result of displaying these words one above the other with a left justification. In other words, with variable spaced letters, the seven-letter word "PLASTIC" extends right beyond the end of the six-letter word "FACIAL"; and, even though the word "SURGERY," like the word "PLASTIC," has seven letters, because some of the letters (e.g., the letter "G") are wider than the letters of the word "PLASTIC" (e.g., the letter "I"), the word "SURGERY" in turn extends right beyond the end of the word "PLASTIC".
  • Case Finding: If the mark sought to be registered is comprised solely of the combination of a designation (such as a toll-free telephone area code) which is devoid of source-indicating significance, joined with matter which, under the Ginn two-part test, is generic for the identified goods or services, then the mark as a whole is generic and unregistrable.
    • In re Dial A Mattress Operating Corporation, Serial No. 75/131,355, (TTAB 1999).
      • Accordingly, we hold that if the mark sought to be registered is comprised solely of the combination of a designation (such as a toll-free telephone area code) which is devoid of source-indicating significance, joined with matter which, under the Ginn two-part test, is generic for the identified goods or services, then the mark as a whole is generic and unregistrable.
  • Case Finding: The mark 1-888-M-A-T-R-E-S-S is generic and unregistrable, inasmuch as it consists merely of a generic term combined with a telephone area code.
    • In re Dial A Mattress Operating Corporation, Serial No. 75/131,355, (TTAB 1999).
      • Applying this analysis to the present case, we find that applicant's mark 1-888-M-A-T-R-E-S-S is generic and unregistrable, inasmuch as it consists merely of a generic term combined with a telephone area code. See Dranoff- Perlstein, supra, and 800 Spirits, supra.
    • In re Dial A Mattress Operating Corporation, Serial No. 75/131,355, (TTAB 1999).
      • Accordingly, we find that M-A-T-R-E-S-S is generic for such services under the Ginn two-part test. See In re Bonni Keller Collections Ltd., 6 USPQ2d 1224 (TTAB 1987)(LA LINGERIE generic for "retail store services in the field of clothing"); In re Wickerware, Inc., 227 USPQ 970 (TTAB 1985)(WICKERWARE generic for "mail order and distributorship services in the field of products made of wicker"); In re Half Price Books, Records, Magazines, Incorporated, 225 USPQ 219 (TTAB 1984)(HALF PRICE BOOKS RECORDS MAGAZINES generic for "retail book and record store services").
    • In re Dial A Mattress Operating Corporation, Serial No. 75/131,355, (TTAB 1999).
      • The presence of this non-distinctive telephone area code in applicant's mark does not negate the genericness of the term M-A-T-R-E-S-S, nor does it transform that generic term into a registrable mark. See Dranoff-Perlstein, supra, and 800 Spirits, supra.
    • In re Dial A Mattress Operating Corporation, Serial No. 75/131,355, (TTAB 1999).
      • Because applicant's mark consists merely of a generic term combined with a non-distinctive toll-free telephone area code, we find the mark as a whole to be generic and unregistrable.
  • Case Finding: "Russianart" has no different meaning than "Russian art" and is generic as applied to applicant's services of selling Russian art.
    • In re A La Vieille Russie, Inc., Serial No. 75/609,153, (TTAB 2001).
      • Applying this first principle to the facts of the present case, we find that RUSSIANART, the term applicant seeks to register, is a "compound term[] formed by the union of words," i.e., by the union of the words RUSSIAN and ART. We further find that the compound term RUSSIANART "would plainly have no different meaning from its constituent words," RUSSIAN and ART. That is, the words "Russian art" are not lent any additional meaning simply by virtue of their having been combined into the compound term RUSSIANART. Applicant has suggested no such other or additional meaning that results from the compression of the two words into one, and we are aware of none. Therefore, pursuant to the authorities discussed above, if the evidence of record establishes that "Russian art," as applied to applicant's services, is generic under Marvin Ginn's two-step inquiry, then the evidence also suffices to establish the genericness of the compound term RUSSIANART.
  • Case Finding: "Russian art" is a generic term for the type of art sold by applicant and is therefore also generic for applicant's services of selling such art.
    • In re A La Vieille Russie, Inc., Serial No. 75/609,153, (TTAB 2001).
      • Applying this second principle to the facts of this case, we find that RUSSIANART (the compound term formed from the words RUSSIAN and ART; see In re Gould Paper, supra) is generic as applied to applicant's services. The evidence of record, discussed above, clearly shows that "Russian art" is a generic name for a certain type of art which is sold by applicant and by other art dealers. Therefore, pursuant to the authorities cited above, "Russian art," or the legally equivalent compound term RUSSIANART, also is generic for applicant's services of selling such art.
  • Case Finding: "Inc." has no source identifying or distinguishing capability.
    • In re Cell Therapeutics, Inc., Serial No. 75/313,795, (TTAB 2003).
      • At the outset, our determination will focus upon whether the phrase CELL THERAPEUTICS is a generic term for applicant's goods and services. In this regard, we note that applicant has never argued that the addition of INC. would cause its mark in its entirety (CELL THERAPEUTICS, INC.) to be not generic assuming that it were proven that CELL THERAPEUTICS was generic for applicant's goods and services. See applicant's briefs pages 15 and 16. See also In re Packaging Specialists, Inc., 221 USPQ 917, 919 (TTAB 1984) ("The element INC. [is] recognized, in trademark evaluation, to have no source identifying or distinguishing capability."); In re Paint Products Co., 8 USPQ2d 1863, 1866 (TTAB 1988).
  • Case Finding: Case involving members of the real estate profession.
    • Jacob Zimmerman v. National Association of Realtors, Cancellation No. 92032360, (TTAB 2003).
      • However, in the instant case, we are not dealing merely with ordinary consumer goods or services. Rather, in this case, the record shows that we are faced with two distinct populations of persons whose perceptions may well be quite different. While any member of the general public who is in the market for real estate would be a prospective consumer of the listed "brokerage services," it is also clear that in the context of collective service marks, the members of the real estate profession - i.e., those who are eligible for membership in respondent - are a distinct population whose perceptions also are critical herein.
  • Case Finding: Cases wherein combinations of generic terms along with designations identifying the types of entities as companies or corporations were held to be no more registrable than the generic terms would be by themselves.
    • In re Martin Container, Inc., Serial No. 75/553,426, (TTAB 2002).
      • This case is analogous to the cases cited by the Examining Attorney, such as In re Paint Products Co., 8 USPQ2d 1863 (TTAB 1988), ["PAINT PRODUCTS CO" held incapable of identifying and distinguishing paints], and In re E.I. Kane, Inc., 221 USPQ 1203 (TTAB 1984), ["OFFICE MOVERS, INC." held incapable of identifying and distinguishing office facilities moving services], wherein combinations of generic terms along with designations identifying the types of entities as companies or corporations were held to be no more registrable than the generic terms would be by themselves. Just as "555- 1212.com" was held to be merely descriptive of providing databases featuring telephone and directory information accessible via electronic communication networks in 555- 1212.com Inc. v. Communication House International Inc., 157 F.Supp.2d 1084, 59 USPQ2d 1453, 1457-59 (N.D. Cal. 2001), to the average customer seeking to buy or rent containers, "CONTAINER.COM" would immediately indicate a commercial web site on the Internet which provides containers. See also: 1 J. McCarthy, Mc Carthy on Trademarks & Unfair Competition, Section 7:17.1 (4th ed. 2002) at 7-28.1 [" a top level domain ['TLD)'] indicator [such as 'com.'] has no source indicating significance and cannot serve any trademark [or service mark] purpose" and "[t]he same is true of other non-distinctive modifiers used in domain names, such as 'http://www" and "html"; thus, because "the TLD '.com' functions in the world of cyberspace much like the generic indicators 'Inc.,' 'Co.,' or 'LTD.' placed after the name of a company," "[a] top level domain indicator like '.com' does not turn an otherwise unregistrable designation into a distinctive, registrable trademark [or service mark].
  • Case Finding: A couple NEXIS excerpts and seven Internet page excerpts were sufficient to show that informational reports on the subject of nutrition are referred to generically as "nutrition bulletins."
    • In re Rodale Inc., Serial No. 78369245, (TTAB 2006).
      • The two NEXIS excerpts and the seven Internet page excerpts quoted above show that informational reports on the subject of nutrition are referred to generically as "nutrition bulletins." Several of the excerpts specifically show that such nutrition bulletins are disseminated or made available via the Internet. We find that the quoted excerpts suffice to establish that NUTRITION BULLETIN, as a whole, is and would be understood by purchasers to refer to the genus of services at issue here, i.e., the service of "providing information in the field of health and diet via a web site on the Internet."
  • Case Finding: Cases where the Board has held in the past that a term which is the generic name of a particular category of goods is likewise generic for any services which are directed to or focused on that class of goods.
    • In re CyberFinancial.Net, Inc., Serial No. 75/482,561, (TTAB 2002).
      • The Board has held in the past that a term which is the generic name of a particular category of goods is likewise generic for any services which are directed to or focused on that class of goods. See: In re A La Vieille Russie Inc., 60 USPQ2d 1895 (TTAB 2001)[RUSSIANART generic for particular field or type of art and also for dealership services directed to that field]; In re Log Cabin Homes Ltd., 52 USPQ2d 1206 (TTAB 1999)[because LOG CABIN HOMES is generic for a particular type of building, it is also generic for architectural design services directed to that type of building, and for retail outlets featuring kits for construction of that type of building]; In re Web Communications, 49 USPQ2d 1478 (TTAB 1998)[because WEB COMMUNICATIONS is generic for publication and communication via the World Wide Web, it is also generic for consulting services directed to assisting customers in setting up their own Web sites for such publication and communication); and In re Harcourt Brace Jovanovich, Inc., 222 USPQ 820 (TTAB 1984)[LAW & BUSINESS incapable of distinguishing applicant's services of arranging and conducting seminars in the field of business law].
    • In re CyberFinancial.Net, Inc., Serial No. 75/482,561, (TTAB 2002).
      • In the present case, although the recitation of services relates to a variety of financial products, we find that the "taxable and tax exempt debt instruments" listed in the present application encompass bonds. And, if applicant's mark BONDS.COM is generic as to part of the services applicant offers under its mark, the mark is unregistrable. In re Analog Devices Inc., 6 USPQ2d 1808, 1810 (TTAB 1988), aff'd without pub. op., 871 F.2d 1097, 10 USPQ2d 1879 (Fed. Cir. 1989); and In re Allen Electric and Equipment Co., 458 F.2d 1404, 173 USPQ 689, 690 (CCPA 1972)[genericness is determined on the basis of the goods and/or services identified in the involved application].
    • In re CyberFinancial.Net, Inc., Serial No. 75/482,561, (TTAB 2002).
      • The issue presently before us was squarely addressed by the Board in the recent decision of In re Martin Container, Inc., ___USPQ2d___ (TTAB June 11, 2002) (application Serial No. 75/553,426). In that case, the Board found the designation CONTAINER.COM to be generic and incapable of registration on the Supplemental Register when used in connection with "retail store services and retail services offered via telephone featuring metal shipping containers" (Class 35) and "rental of metal shipping containers" (Class 39). The Board concluded that "what applicant seeks to register is simply a generic term ["container"], which has no source-identifying significance in connection with applicant's services, in combination with the top level domain indicator [".com"], which also has no source identifying significance, and that combining the two does not create a term which has somehow acquired the capability of identifying and distinguishing applicant's services."
  • Case Finding: Terms with Internet-related terms (www, .com, etc.) are generic and further, a term which may form the base for other internet domain names may be equally generic.
    • In re CyberFinancial.Net, Inc., Serial No. 75/482,561, (TTAB 2002).
      • In its hypothetical, the Supreme Court did not hint that the outcome was somehow contingent upon whether there was evidence showing that the public used the exact term "wine company." We view the Supreme Court's reasoning, although expressed so long ago, to be equally applicable today to cyberspace domain names.
    • In re CyberFinancial.Net, Inc., Serial No. 75/482,561, (TTAB 2002).
      • Following the reasoning of the Supreme Court, the term BONDS CO. would be generic for services relating to bonds, and competitors should be allowed to freely use marks such as ACME BONDS CO. or UNITED BONDS CO. to identify and distinguish their services. In the same manner, a designation such as BONDS.COM should be freely available for others to adopt so that designations such as ACMEBONDS.COM or UNITEDBONDS.COM could be used by competitors to identify and distinguish their services from others in the field. See also: Trademark Manual of Examining Procedure, §§ 1209.03(m) and 1215.05 (3rd ed. 2002).
    • In re CyberFinancial.Net, Inc., Serial No. 75/482,561, (TTAB 2002).
      • We recognize, of course, as did the Board panel in Martin Container, that there are similarities between a toll-free telephone number and a domain name in that neither is the name of the category of services, and each typically can be used by only one entity at a time.
    • In re CyberFinancial.Net, Inc., Serial No. 75/482,561, (TTAB 2002).
      • However, we view the present case as distinguishable from Dial-A-Mattress because, although telephone numbers are unique, that is, a given ten-digit number can be used by only one entity at a time, domain names may be up to sixty-three numbers or characters (plus the characters used to identify the TLD), so that many domain names could contain the same root terms (in many instances, generic root terms), combining them with different numbers or letters as prefixes and/or suffixes.
    • In re CyberFinancial.Net, Inc., Serial No. 75/482,561, (TTAB 2002).
      • Financial entities that compete with applicant have a competitive need to use the matter sought to be registered, BONDS.COM, as part of their own domain names and trademarks. In this connection, we point to the Examining Attorney's evidence that at least two others in the financial field are using the root term "bonds.com" as an element of their domain names. Specifically, two Web sites show the adoption of the generic designation BONDS.COM and the addition of other matter to it to form the domain names of "bonds-online.com" and "investinginbonds.com."
    • In re CyberFinancial.Net, Inc., Serial No. 75/482,561, (TTAB 2002).
      • We likewise find Dial-A-Mattress distinguishable from the present case for the other reasons set forth in Martin Container (slip opinion at pp. 10-11): "The mark there was a toll-free telephone number which featured a misspelled generic term instead of the usual seven-digit number following the area code. As the Court characterized it, the proposed mark was a mnemonic combining numbers with a word, which was more of a "phrase" than a "compound word." Here the mark consists of a correctly spelled generic term followed by ".com." Unlike the toll-free area code in Dial-A-Mattress, the ".com" portion of applicant's mark indicates that applicant is a commercial enterprise. ********** In the case before us, contrary to Dial-A-Mattress, the mark cannot be characterized as a mnemonic phrase. It is instead a compound word, a generic term combined with the top level domain indicator, ".COM.""
    • In re CyberFinancial.Net, Inc., Serial No. 75/482,561, (TTAB 2002).
      • In finding that the designation BONDS.COM as a whole is no less generic than its constituents, we recognize the Federal Circuit's statement relative to Gould in American Fertility Society (at p. 1837): "Gould is limited, on its facts, language, and holding, to compound terms formed by the union of words. It is legally erroneous to attempt to apply the language quoted below to phrases consisting of multiple terms, which are not "joined" in any sense other than appearing as a phrase. The compound immediately and unequivocally describes the purpose, function and nature of the goods as Gould itself tells us. Gould has simply joined the two most pertinent and individually generic terms applicable to its product, and then attempts to appropriate the ordinary compound thus created as its trademark. In this instance, the terms remain as generic in the compound as individually, and the compound thus created is itself generic." Gould, 834 F.2d at 1019, 5 USPQ2d at 1112 (citations omitted).
    • In re CyberFinancial.Net, Inc., Serial No. 75/482,561, (TTAB 2002).
      • BONDS.COM is properly considered a compound word in this analysis. The terms "bond" and ".com" are joined as a compound word and appear without any space or separation between them. This is analogous to Gould, where "screen" and "wipe" appeared as the compound "screenwipe," and differs from American Fertility, where the Federal Circuit held that the terms "Society for Reproductive Medicine" were not "...'joined' in any sense other than appearing as a phrase." American Fertility Society, supra at 1837.
    • In re CyberFinancial.Net, Inc., Serial No. 75/482,561, (TTAB 2002).
      • In reaching our conclusion, we have considered the designation sought to be registered as a whole. See: Estate of P.D. Beckwith, Inc. v. Comm'r of Patents, 252 U.S. 538, 545-46 (1920). We would add that even if the designation BONDS.COM were viewed as a phrase, we would reach the same result here.
  • Case Finding: The description in the registration certificate identifies the services in connection with which the registrant uses the mark.
    • In re Reed Elsevier Properties Inc., Serial No. 75530795, (TTAB 2005).
      • The Magic Wand case involved a petition to cancel the mark TOUCHLESS, on the ground that it was generic for services identified as "automobile washing services." The petitioner in that case attempted to focus on a "relevant public" unwarranted by the description of services, specifically, "operators and manufacturers of car wash equipment," rather than purchasers of automobile washing services. Thus, the Federal Circuit's statement that "a proper genericness inquiry focuses on the description of services set forth in the certificate of registration" must be read in that context, i.e., as an explanation of the error in petitioner's attempt to have the Board and, later, the Federal Circuit focus on a relevant public not warranted by the description of services. Further, the quoted reference from the Magic Wand case is preceded by the Federal Circuit's observation that "[t]he description in the registration certificate identifies the services in connection with which the registrant uses the mark." Magic Wand, 19 USPQ2d at 1552.
  • Case Finding: The analytical focus on the description of services is based on the premise that the description reflects actual conditions of use of a mark.
    • In re Reed Elsevier Properties Inc., Serial No. 75530795, (TTAB 2005).
      • The Federal Circuit also observed, "According to the registration, the mark TOUCHLESS is used in connection with automobile washing services." Id. (emphasis added). Thus, it is clear that the analytical focus on the description of services is based on the premise that the description reflects actual conditions of use of a mark. See also, In re American Fertility Society, 188 F3d 1341, 51 USPQ2d 1832, 1836 (Fed. Cir. 1999) ("The PTO must prove: (1) what the genus of the services the Society provides is.."), and In re Web Communications, 49 USPQ2d 1478, 1479 (TTAB 1998) ("We agree with applicant that its services in the broadest sense would be considered 'consulting services.' But there are many varieties of consulting services and each would necessarily be further identified as to the particular subject or focus of the services being offered. Here applicant has described a major focus of its services in the specimens of record as 'publication and communication via the World Wide Web..' Applicant's services enable its customers to achieve this communication by assisting them in setting up their own Web sites.") (emphasis added).
  • Case Finding: Because Section 7(b) of the Lanham Act bestows upon the owner of a registration the presumption of use of a mark for all goods or services identified in a registration, the question of registrability must be determined by considering any goods or services falling within the literal scope of an identification, and not merely the particular goods or services an applicant may be marketing at the time when registrability is determined.
    • In re Reed Elsevier Properties Inc., Serial No. 75530795, (TTAB 2005).
      • In both Allen Electric and Datatime, each applicant was arguing that its goods were of a more specific type than would be apparent from the identification. As the Board explained in Datatime, because Section 7(b) of the Lanham Act bestows upon the owner of a registration the presumption of use of a mark for all goods or services identified in a registration, the question of registrability must be determined by considering any goods or services falling within the literal scope of an identification, and not merely the particular goods or services an applicant may be marketing at the time when registrability is determined. These decisions do not run counter to the presumption that an identification of goods or services is rooted in the reality of use but, rather, explain that the presumption extends to all goods or services encompassed by an identification.
  • Case Finding: Likely perception of a mark is not evaluated as an abstract matter but in connection with the identified goods or services.
    • In re Reed Elsevier Properties Inc., Serial No. 75530795, (TTAB 2005).
      • In the Vehicle Information case, the applicant was essentially arguing that the relevant public would perceive its services as somewhat different from what they actually were, given the likely connotation of its mark for that public. The Board then focused on the identification in its discussion of possible meanings consumers might find in the mark. This is nothing more than an example of the well-settled rule that likely perception of a mark is not evaluated as an abstract matter but in connection with the identified goods or services.
  • Case Finding: The Federal Circuit began its analysis of the genus by focusing on applicant's amended recitation of services, but interpreted the meaning of services in light of the actual use being made by the applicant.
    • In re Reed Elsevier Properties Inc., Serial No. 75530795, (TTAB 2005).
      • We also note that in the recent Steelbuilding.com decision, which involved a genericness refusal, the Federal Circuit began its analysis of the genus by focusing on applicant's amended recitation of services ["computerized on-line retail services in the field of pre-engineered metal buildings and roofing systems"], but interpreted the meaning of "computerized online retail services" in light of the actual use being made by the applicant on its web site. See In re Steelbuilding.com, 415 F.3d 1293, 75 USPQ2d 1420, 1422 (Fed. Cir. 2005): "The applicant defined its goods and services, in its amended application, as "computerized on-line retail services in the field of pre-engineered metal buildings and roofing systems." Although the definitions of the applicant and of the Board appear nearly identical, the parties understand the phrase "computerized on-line retail services" differently. Applicant sells steel buildings on line, but the record indicates it provides services beyond mere sales." Id. at 1422.
  • Case Finding: The fact that a term may have two generic meanings when considered in connection with a particular class of services does not mean it is not generic.
    • In re Reed Elsevier Properties Inc., Serial No. 75530795, (TTAB 2005).
      • Either understanding of the term would be generic and the fact that a term may have two generic meanings when considered in connection with a particular class of services does not mean it is not generic. Compare Steelbuilding.com, supra, 75 USPQ2d at 1422-23 (the Federal Circuit found neither of two possible meanings for the mark STEELBUILDING.COM to be generic) with Abercrombie & Fitch Company v. Hunting World, Inc., 537 F. 2d 4, 189 USPQ 759, 766 (2d Cir. 1976) (stating "a word may have more than one generic use," the Second Circuit found "safari" to be generic in multiple contexts, although not in all contexts). See also Northland Aluminum, supra (the Federal Circuit found BUNDT generic for cakes and cake mixes); and Gear Inc. v. L.A. Gear California Inc., 670 F.Supp. 508, 4 USPQ2d 1192, 1197 (S.D.N.Y. 1987) ("A word may have more than one generic use, and it is protected in each of its generic uses from appropriation by any one merchant."), vacated in part, dismissed, 13 USPQ2d 1655 (S.D.N.Y. 1989) (disposition of some claims by summary judgment vacated by a settlement agreement of the parties and all claims dismissed).
  • Case Finding: The Board also noted it does not view Oppedahl as creating a per se rule that addition of a TLD to an unregistrable term always results in at least a potential mark, i.e., a non-generic compound and, instead, views the Oppedahl decision as leaving the door open for registration of combinations of unregistrable terms and TLDs in the exceptional circumstances whereby the combination results in a whole greater than the sum of its parts.
    • In re Reed Elsevier Properties Inc., Serial No. 75530795, (TTAB 2005).
      • As the Board also noted in Eddie Z's, it does not view Oppedahl as creating a per se rule that addition of a TLD to an unregistrable term always results in at least a potential mark, i.e., a non-generic compound and, instead, views the Oppedahl decision as leaving the door open for registration of combinations of unregistrable terms and TLDs in the exceptional circumstances whereby the combination results in a whole greater than the sum of its parts. Eddie Z's, 74 USPQ2d at 1042. While the Federal Circuit determined in the Steelbuilding.com case that STEELBUILDING.COM had a non-generic meaning and was therefore registrable, we do not find the designation now before us to present such exceptional circumstances.
    • In re Eddie Z's Blinds and Drapery, Inc., Serial No. 76112441, (TTAB 2005).
      • We do not, however, view the Oppedahl decision as creating a per se rule that the addition of a TLD to a generic term will always result in creation of a potential mark, i.e., a descriptive term that is registrable on the Supplemental Register and may at some point in the future be registrable on the Principal Register.
    • In re Eddie Z's Blinds and Drapery, Inc., Serial No. 76112441, (TTAB 2005).
      • Clearly, the Oppedahl decision's reference to exceptional circumstances, and its discussion of a hypothetical mark employing a TLD that could be considered not merely descriptive, reveal that the Federal Circuit has anticipated situations whereby the coupling of an otherwise unregistrable term and a TLD create a whole greater than the sum of its parts. We do not believe applicant's combination of terms yields such a result.
  • Case Finding: Where the applicant makes a tactical decision to carve specific services out of its recitation of services yet the evidence suggests the applicant plans to undertake the omitted services, the TTAB can find that the relevant genus of services includes those omitted services.
    • In re DNI Holdings Ltd., Serial No. 76331011, (TTAB 2005).
      • In determining the first part of the Marvin Ginn genericness inquiry in this case, we are faced immediately with the question of whether it is consistent with the letter and the spirit of the Lanham Act for an applicant to carve out from the recitation contained in the application what are arguably its core services in order to avoid a likely finding of genericness. Specifically, applicant has deftly carved out any reference to "sports betting services," all the while admitting that its website may well offer sports betting services. Must this Board turn a blind eye to the reality of what is being offered on the named website, restricting our purview to the recitation of services in the application itself, as suggested by the Magic Wand case" We do not believe that is what Magic Wand requires.
    • In re DNI Holdings Ltd., Serial No. 76331011, (TTAB 2005).
      • We do not believe that is what Magic Wand requires. The Magic Wand case involved a petition to cancel the registration of the service mark TOUCHLESS on the ground that the term TOUCHLESS was generic for "automobile washing services." The petitioner in that case attempted to focus on a "relevant public" that was unwarranted by the description of services, namely, manufacturers and dealers of car wash equipment, and not the automobile owners and operators to whom the automobile washing services would be directed. Thus, the decision's statement that "a proper genericness inquiry focuses on the description of services set forth in the certificate of registration" must be read in that context, i.e., as an explanation of the error in petitioner's attempt to focus on a relevant public not warranted by the actual recitation of services. Further, the quoted reference from the Magic Wand case is preceded by the Federal Circuit's observation that "[t]he description in the registration certificate identifies the services in connection with which the registrant uses the mark." Magic Wand, supra at 1552. The Court also observed: "According to the registration, the mark TOUCHLESS is used in connection with automobile washing services." Id. [emphasis supplied]. Thus, it is clear that the analytical focus on the recitation of services is based on the premise that the recitation accurately reflects actual conditions of use of the involved term. See also, In re American Fertility Society, supra at 1836 ["The PTO must prove: (1) what the genus of the services the Society provides is .."], and In re Web Communications, 49 USPQ2d 1478, 1479 (TTAB 1998) ["We agree with applicant that its services in the broadest sense would be considered 'consulting services.' But there are many varieties of consulting services and each would necessarily be further identified as to the particular subject or focus of the services being offered. Here applicant has described a major focus of its services in the specimens of record as 'publication and communication via the World Wide Web ..' Applicant's services enable its customers to achieve this communication by assisting them in setting up their own Web sites." (emphasis supplied)].
    • In re DNI Holdings Ltd., Serial No. 76331011, (TTAB 2005).
      • We also note that the Federal Circuit, in describing the genus of goods and services offered by the applicant in In re Steelbuilding.com, 415 F.3d 1293, 75 USPQ2d 1420 (Fed. Cir. 2005), began by focusing on applicant's amended recitation of services ["computerized on-line retail services in the field of pre-engineered metal buildings and roofing systems"], but in deriving the correct genus of goods and services, then went on to look at the actual website and other evidence of record...In this vein, particularly where a single website is offering a variety of interrelated, interactive services, it seems appropriate to take all of those largely undifferentiated services into consideration when defining the genus of services. Accordingly, despite applicant's tactical decision to carve them out of its recitation of services, we find that the relevant genus of services herein includes wagering on sporting events.
  • Case Finding: Even if for purposes of this inquiry we were to ignore applicant's clear offering on its website of "sports betting services," we nonetheless find that the class or category of services described in the application still clearly includes that of providing information regarding sports and betting.
    • In re DNI Holdings Ltd., Serial No. 76331011, (TTAB 2005).
      • Even if we are constrained to ignore the realities of use actually made by applicant because applicant has purposely drafted a description omitting that use, this does not end the first part of the Marvin Ginn inquiry into possible genericness..That is, even if for purposes of this inquiry, we were to ignore applicant's clear offering on its website of "sports betting services," we nonetheless find that the class or category of services described in the application still clearly includes that of providing information regarding sports and betting. See In re CyberFinancial.Net Inc., 65 USPQ2d 1789 (TTAB 2002) [BONDS.COM generic for identified information services related to investment securities even where applicant does not buy or sell bonds].
  • Case Finding: "Sports betting" is a generic term for a service that permits one to wager on sporting events.
    • In re DNI Holdings Ltd., Serial No. 76331011, (TTAB 2005).
      • We find that these dictionary definitions show that "sports betting" is the equivalent of "sports wagering" or "wagering on sports." We have no doubt but that joining the separate words "sports" and "betting" creates a term that, in context, would be generic for a service that permits one to wager on sporting events. In this case, the combined term is not greater than the sum of its parts. See Gould, supra.
  • Case Finding: The joining of separate words with ".com" created a "formulation" that suggested a non-descriptive connotation and does not necessarily create a compound term that would be generic.
    • In re DNI Holdings Ltd., Serial No. 76331011, (TTAB 2005).
      • The Court in Steelbuilding.com also found that joinder of the separate words "steel" and "building" with the TLD ".com" created a "formulation" that, in context, could be perceived by the relevant public as meaning either "steel buildings" available via the Internet or "the building of steel structures" via an Internet website. While not using the term "double entendre," the Court's reasoning in Steelbuilding.com suggests a non-descriptive connotation (perhaps not unlike SUGAR & SPICE for bakery products, THE SOFT PUNCH for noncarbonated soft drink, and NO BONES ABOUT IT for fresh pre-cooked ham). The Court found that simply joining the separate words "steel" and "building" and the TLD ".com" does not necessarily create a compound term that would be generic for "computerized online retail services in the field of pre-engineered metal buildings and roofing systems." Specifically, given the interactive design feature of that applicant's goods and services, the Court concluded that STEELBUILDING could also refer to "the building of steel structures."
  • Case Finding: In defining the "relevant public," the TTAB included those with access to the Internet.
    • In re DNI Holdings Ltd., Serial No. 76331011, (TTAB 2005).
      • In defining the "relevant public" whose understanding and perception of SPORTSBETTING.COM is critical to our analysis (see Magic Wand Inc., supra at 1553), we must include all persons having access to the Internet who might potentially wager on sports.
  • Case Finding: Cases concerning combined words to form a single term.
    • In re DNI Holdings Ltd., Serial No. 76331011, (TTAB 2005).
      • As a matter of trademark law, "sports betting" is equivalent to "sportsbetting," which in its combined or collapsed form is not greater than the sum of its parts. See In re Gould Paper, supra; [SCREENWIPE generic for a wipe for cleaning television and computer screens]; In re Abcor Dev., supra, [GASBADGE at least descriptive for gas monitoring badges; three judges concurred in finding that term was the name of the goods]; In re Planalytics Inc., 70 USPQ2d 1453 (TTAB 2004) [GASBUYER merely descriptive of "on-line risk management services in the field of pricing and purchasing decisions for natural gas"]; In re Orleans Wines, Ltd., 196 USPQ 516 (TTAB 1977) [BREADSPRED descriptive for jams and jellies that would be a spread for bread]; and In re Perkin-Elmer Corp., 174 USPQ 57 (TTAB 1972) [LASERGAGE merely descriptive for interferometers utilizing lasers].
  • Case Finding: In this alternative analysis, having found the applied-for matter generic for the third portion of the recitation of services, namely, 'providing information regarding sports and betting,' registration is appropriately denied if the term is generic for any of the goods or services for which registration is sought.
    • In re DNI Holdings Ltd., Serial No. 76331011, (TTAB 2005).
      • We turn next to our alternative holding, based upon an explicit exclusion of applicant's "sports betting services" from the genus of services (e.g., as discussed supra, in the first part of the Marvin Ginn genericness inquiry). As seen on applicant's website - and, similarly, on the websites of third-party competitors - much of the discussion about "sports betting" (or "sportsbetting") focuses on the need to gather and analyze as much information as one can to become knowledgeable about the particular sport on which one is wagering. Hence, when it comes to the activity of "sports betting," we find that the information piece of applicant's recited services is inextricably tied into the actual betting. This linkage is not unique to the field of gaming. This tying together of information and the underlying activity is analogous, for example, to our finding that the word "bonds" (and hence the mark BONDS.COM) is generic for information services related to debt instruments and other related investment securities. CyberFinancial.Net, supra.16

        FOOTNOTE 16 "In this alternative analysis, having found the applied-for matter generic for the third portion of the recitation of services, namely, 'providing information regarding sports and betting,' registration is appropriately denied if the term is generic for any of the goods or services for which registration is sought. See In re Quik-Print Copy Shop, Inc., 616 F.2d 525, 205 USPQ 505, 507 (CCPA 1980). Accordingly, we do not find it necessary to discuss further the first two portions of the recitation of services in International Class 41, e.g., (1) casino games for fun, and (2) contests and sweepstakes.

  • Case Finding: The addition of a top level domain indicator could expand the meaning of a mark.
    • In re DNI Holdings Ltd., Serial No. 76331011, (TTAB 2005).
      • Our adherence to the holdings of reported decisions like CyberFinancial.Net is also not affected by the Court's discussion in Steelbuilding.com, supra, inasmuch as we can find no reason why this would be one of those "unusual cases" where the addition of the top level domain indicator (TLD) expands the meaning of the mark to include services beyond offering sports wagering or providing information about sports wagering.17

        FOOTNOTE 17 "The Court of Appeals for the Federal Circuit introduced its own hypothetical during oral argument in the case of In re Oppedahl & Larson LLP, 373 F.3d 1171, 71 USPQ2d 1370, 1373 (Fed. Cir. 2004) [PATENTS.COM merely describes patent-related goods in connection with the Internet]: ". Under the hypothetical, a company seeks to register the mark tennis.net for a store that sells tennis nets. The applicant openly states that it does no business on the Internet and has no intention to ever use the Internet. This hypothetical applicant's mark consists of a descriptive term - "tennis" - and a TLD - ".net." The "net" portion alone has no source-identifying significance. The hypothetical mark as a whole, as is immediately apparent, produces a witty double entendre relating to tennis nets, the hypothetical applicant's product. Arguably, the attachment of the TLD to the other descriptive portion of the mark could enhance the prospects of registrability for the mark as a whole. This hypothetical example illustrates that, although TLDs will most often not add any significant source-identifying function to a mark, a bright-line rule might foreclose registration to a mark with a TLD component that can demonstrate distinctiveness."

  • Case Finding: The addition of the TLD, or the "dot com" portion of the alleged mark, SPORTSBETTING.COM, does not create a source identifier if none exists in the combined term.
    • In re DNI Holdings Ltd., Serial No. 76331011, (TTAB 2005).
      • When considered in its entirety, the addition of the TLD, or the "dot com" portion of the alleged mark, SPORTSBETTING.COM, does not create a source identifier if none exists in the combined term "sports betting" or SPORTSBETTING. See In re Martin Container, Inc., 65 USPQ2d 1058 (TTAB 2002) ["[T]o the average customer seeking to buy or rent containers, CONTAINER.COM would immediately indicate a commercial website on the Internet which provides containers."].
  • Case Finding: Under the first part of the genericness test, the goods or services at issue were the same as the services recited in the registration.
    • Nobelle.com, LLC v. Qwest Communications International, Inc., Cancellation No. 92030454, (TTAB 2003).
      • Under the first part of the Ginn two-part genericness test, we find that the genus of goods or services at issue in this case is "telecommunications services," the services recited in respondent's involved registration. See Magic Wand Inc. v. RDB Inc., 940 F.2d 638, 19 USPQ2d 1551, 1552 (Fed. Cir. 1991)("Thus, a proper genericness inquiry focuses on the description of services set forth in the certificate of registration.").
  • Case Finding: Under the second part of the genericness test, petitioner failed to establish that the logo in its mark is understood by the relevant public primarily to refer to the genus of services at issue.
    • Nobelle.com, LLC v. Qwest Communications International, Inc., Cancellation No. 92030454, (TTAB 2003).
      • Under the second part of the Ginn test, we find, for the reasons discussed below, that petitioner has failed to establish that the Bell logo mark depicted in respondent's registration is understood by the relevant public primarily to refer to the genus of services at issue, i.e., "telecommunications services."
  • Case Finding: Evidence of competitor's use of the logo on goods, rather than services listed in the registration, was clearly insufficient to establish that the logo is regarded by the relevant public as a generic identifier for such services
    • Nobelle.com, LLC v. Qwest Communications International, Inc., Cancellation No. 92030454, (TTAB 2003).
      • To the extent that the evidence of record pertains to "telecommunications services" at all, we find that it is de minimis and is clearly insufficient to establish that the Bell logo is regarded by the relevant public as a generic identifier for such services.14

        FOOTNOTE 14 "Even if petitioner's evidence had established (it has not) that the Bell logo is generic for telephone equipment, this is not a case in which we would apply the principle that a mark which is generic for goods is also generic for the services related to the selling of those goods. See, e.g., In re A La Vieille Russie Inc., 60 USPQ2d 1812 (TTAB 2001); cf. In re The Phone Company, Inc., 218 USPQ 1027 (TTAB 1983). The "telecommunications services" recited in the registration are neither goods nor the sale of goods, nor have they been shown to be related to goods or to the sale of goods in any manner which would warrant application of the principle."

  • Case Finding: Cases which have found that competitor use is evidence of genericness.
    • Nobelle.com, LLC v. Qwest Communications International, Inc., Cancellation No. 92030454, (TTAB 2003).
      • Second, in the cases which have found that competitor use is evidence of genericness, it is competitors' generic use of the designation in question that has been deemed to be evidence of genericness; purchasers exposed to generic use by competitors may themselves come to regard the designation as generic. See, e.g., BellSouth Corp. v. DataNational Corp., supra (Walking Fingers logo); Remington Products, Inc. v. North American Philips Corp., 892 F.2d 1576, 1578, 13 USPQ2d 1444, 1446 (Fed. Cir. 1990)(TRAVEL CARE); DeWalt, Inc. v. Magna Power Tool Corp. 289 F.2d 656, 129 USPQ 275 (CCPA 1961)(POWER SHOP); Continental Airlines Inc. v. United Air Lines Inc., 53 USPQ2d 1385 (TTAB 1999)(ETICKET); and In re Consolidated Cigar Corp., 13 USPQ2d 1481 (TTAB 1989)(WHIFFS); see also J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition §12:13 (4th ed. 12/01)("Evidence to prove genericness can include . generic use by competitors." (emphasis added)).
  • Case Finding: A competitor's use of a term in a source-indicating manner does not serve as evidence that the relevant public regards the term as being generic.
    • Nobelle.com, LLC v. Qwest Communications International, Inc., Cancellation No. 92030454, (TTAB 2003).
      • In the present case, however, there is no evidence that any of respondent's competitors uses the Bell logo generically. Instead, petitioner's evidence shows that whenever the Bell logo is used by any of respondent's competitors, it is used in a source-indicating manner, i.e., as part of their trademarks and service marks. For this reason, the cases discussed above are distinguishable from the present case, and the proposition for which they stand (i.e., that generic use by competitors is evidence that the public views the designation in question as generic), is inapposite here. We see no legal or logical basis for finding that trademark or service mark use of a designation by competitors is probative evidence, under the second part of the Ginn test, that the relevant public regards the designation as being generic.
  • Case Finding: The term "Bundt" was found generic for a ring cake mix because it is not of trademark significance to differentiate a cake made from a cake mix from a cake made from a recipe.
    • In re Log Cabin Homes, Ltd., Serial No. 74/682,845, (TTAB 1998).
      • Our primary reviewing Court has previously rejected the very argument advanced by applicant in its decision In re Northland Aluminum Products, 777 F.2d 1556, 227 USPQ 961 (Fed. Cir. 1985). In Northland Aluminum, the Court found that the proposed mark BUNDT was generic for a "ring cake mix" (emphasis added) despite the fact that the evidence presented by the Examining Attorney simply showed that the term "bundt" was generic for a type of cake. With one possible exception, none of the evidence presented by the Examining Attorney showed that the term "bundt" was generic for a ring cake mix. In so doing, the Court had the following to say: "We agree with the Board that it is not of trademark significance to differentiate a cake made from a cake mix from a cake made from a recipe." 227 USPQ at 964.
  • Case Finding: "Log Cabin Homes" found generic as applied to retail outlets featuring kits for constructing buildings.
    • In re Log Cabin Homes, Ltd., Serial No. 74/682,845, (TTAB 1998).
      • Three comments are in order. First, the Court in Northland Aluminum did not merely find that the term "bundt" was descriptive, but instead it found that the term was "a common descriptive name for a type of ring cake, and is not registrable as a trademark for 'ring cake mix.'" 227 USPQ at 964. In other words, the Court found that the term "bundt" was not merely descriptive, but instead was generic.1.

        FOOTNOTE 1 "As Professor McCarthy notes, "some semantic confusion arose prior to 1989 because sections 14 and 15 of the Lanham Act used the term 'common descriptive name' to denote the generic name of a product or service. . This confusion came to an end when, effective in 1989, the Trademark Law Revision Act replaced the statutory phrase 'common descriptive name' with 'generic name,' thereby codifying prior judicial interpretation." 2 J. McCarthy, McCarthy on Trademarks and Unfair Competition Section 12:57 at pages 12-108 to 12-109 (4th ed. 1999)."

    • In re Log Cabin Homes, Ltd., Serial No. 74/682,845, (TTAB 1998).
      • Second, even if we accept applicant's reasoning, what applicant fails to note is that its description of services includes not only the "architectural design of buildings, especially houses," but also "retail outlets featuring kits for constructing buildings, especially houses." A kit for constructing a house bears an extremely similar relationship to a house as does a ring cake mix to a ring cake. Thus, applicant's argument about the Court in Northland Aluminum not discussing "the design of the cake mixes" totally overlooks the fact that applicant's chosen description of services also includes "retail outlets featuring kits for constructing buildings, especially houses." Therefore, even assuming for the sake of argument that applicant's proposed mark is not generic as applied to the architectural design of buildings, it clearly is generic as applied to retail outlets featuring kits for constructing buildings. It is well settled that if a term is generic for some of the goods or services listed in an application, "registration is properly refused." In re Analog Devices Inc., 6 USPQ2d 1808, 1810 (TTAB 1988), aff'd 871 F.2d 1097, 10 USPQ2d 1879 (Fed. Cir. 1989).
    • In re Log Cabin Homes, Ltd., Serial No. 74/682,845, (TTAB 1998).
      • Third, we simply do not accept applicant's argument that it can obtain exclusive service mark rights in a word or term for the architectural design of a particular type of building when that word or term is a generic name for the particular type of building.
  • Case Finding: Use of the word "original" in front of a word or term indicates that that word or term is used by others to designate a particular type of product or service, and thus is generic.
    • In re Log Cabin Homes, Ltd., Serial No. 74/682,845, (TTAB 1998).
      • Second, applicant makes the argument that its "trademark [sic] LOG CABIN HOMES has acquired distinctiveness because of [applicant's] prior Registration No. 1,920,361 for substantially the same mark [THE ORIGINAL LOG CABIN HOMES and design] used on identical services." (Applicant's brief page 9). While applicant has referenced its prior registration solely with regard to the issue of acquired distinctiveness, we believe that said registration is pertinent to both the issue of acquired distinctiveness and the issue of genericness. Put quite simply, the words THE ORIGINAL in applicant's other mark serve to educate the public that there are other designers and retailers of "log cabin homes." Thus, applicant's use of the mark THE ORIGINAL LOG CABIN HOMES and design actually detracts from applicant's claim that the term "log cabin homes" per se has acquired distinctiveness indicating services emanating from applicant.
    • In re Log Cabin Homes, Ltd., Serial No. 74/682,845, (TTAB 1998).
      • Moreover, applicant's use of the mark THE ORIGINAL LOG CABIN HOMES and design would actually reinforce the belief of competitors, dealers and ultimate consumers that the term "log cabin homes" is indeed generic. In this regard, reference is made to the case of King-Seeley Thermos Co. v. Aladdin Industries, 321 F.2d 577, 138 USPQ 349 (2d Cir. 1963).
    • In re Log Cabin Homes, Ltd., Serial No. 74/682,845, (TTAB 1998).
      • In King-Seeley, the Court found that plaintiff King-Seeley's mark THERMOS had become generic. However, rather than permitting defendant Aladdin to make unlimited use of the term "thermos" in connection with vacuum insulated bottles, the Court required, among other things, that Aladdin "never use the words 'original' or 'genuine' in describing its product." 138 USPQ at 352. The use of the words "original" and "genuine" were reserved for King- Seeley. The King-Seeley case is instructive in that it demonstrates that the use of the word "original" in front of a word or term indicates that that word or term is used by others to designate a particular type of product or service, and thus is generic.
  • Case Finding: "Candy Bouquet" is generic for gift arrangements of candies and chocolates.
    • In re Candy Bouquet International, Inc., Serial No. 78058216, (TTAB 2004).
      • We next must determine whether the term applicant seeks to register, CANDY BOUQUET, is understood by the relevant public primarily to refer to that genus of services...Based on this evidence, we find that "candy bouquet" is used in a generic manner in the candy industry and among candy sellers to name a floral-type gift arrangement of candies and chocolates. There is a distinct commercial market for "candy bouquets," and applicant is just one of many merchants who sells such gift packages of candy.
  • Case Finding: Analyzing terms which are a "compound word."
    • In re The Outdoor Recreation Group, Serial No. 76570321, (TTAB 2006).
      • In the case of In re Dial-A-Mattress Operating Corp., supra, 1-888-M-A-T-R-E-S-S for "telephone shop-at-home retail services in the field of mattresses," the court further clarified the test as follows (Id. at 1810): "Where a term is a "compound word" (such as "Screenwipe"), the Director may satisfy his burden of proving it generic by producing evidence that each of the constituent words is generic, and that "the separate words joined to form a compound have a meaning identical to the meaning common usage would ascribe to those words as a compound." In re Gould Paper Corp., 834 F.2d 1017, 1018, 5 USPQ2d 1110, 1110 (Fed. Cir. 1987). However, where the proposed mark is a phrase (such as "Society for Reproductive Medicine"), the board "cannot simply cite definitions and generic uses of the constituent terms of a mark"; it must conduct an inquiry into "the meaning of the disputed phrase as a whole." In re The Am. Fertility Soc'y, 188 F.3d at 1347, 51 USPQ2d at 1836. The In re Gould test is applicable only to "compound terms formed by the union of words" where the public understands the individual terms to be generic for a genus of goods or services, and the joining of the individual terms into one compound word lends "no additional meaning to the term." Id. at 1348-49, 51 USPQ2d at 1837."
  • Case Finding: A mnemonic formed by the union of a series of numbers and a word, bears closer conceptual resemblance to a phrase than a compound word, and the court reiterated that the PTO must produce evidence of the meaning the relevant purchasing public accords to the proposed mnemonic mark "as a whole."
    • In re The Outdoor Recreation Group, Serial No. 76570321, (TTAB 2006).
      • The court concluded that "1-888-M-A-T-R-E-S-S," as a mnemonic formed by the union of a series of numbers and a word, bears closer conceptual resemblance to a phrase than a compound word, and the court reiterated that the PTO must produce evidence of the meaning the relevant purchasing public accords to the proposed mnemonic mark "as a whole."
    • In re The Outdoor Recreation Group, Serial No. 76570321, (TTAB 2006).
      • In concluding that there was not substantial evidence that the term is generic, the court added that the term is not literally a genus or class name nor does it "immediately and unequivocally" describe the service at issue.
    • In re Eddie Z's Blinds and Drapery, Inc., Serial No. 76112441, (TTAB 2005).
      • We, however, find the case at hand distinguishable from Dial-A-Mattress, for reasons largely articulated by the Board in In re CyberFinancial.Net, Inc., 65 USPQ2d 1789 (TTAB 2002) and In re Martin Container, Inc., 65 USPQ2d 1058 (TTAB 2002).
    • In re Eddie Z's Blinds and Drapery, Inc., Serial No. 76112441, (TTAB 2005).
      • First, it has been held that compound words may be refused as generic when definitions of the individual terms which are joined to create the compound show that such terms are generic. Gould, supra, 5 USPQ2d at 1110. In Dial-A-Mattress, the Federal Circuit noted that "'(888)' is not a word" and that 1-888-M-A-T-R-E-S-S is conceptually closer to a phrase than a compound word, so that the Gouldtype evidence would not be sufficient. Dial-A-Mattress, 57 USPQ2d at 1811.
  • Case Finding: Applicant's contention that the evidence submitted by the examining attorney (uses of the mark used in a generic manner) consists of infringing and improper uses of applicant's mark is not persuasive.
    • In re The Outdoor Recreation Group, Serial No. 76570321, (TTAB 2006).
      • Applicant's contention that the evidence submitted by the examining attorney consists of infringing and improper uses of applicant's mark is not persuasive. As shown by the record, many entities in the relevant industry use the term "outdoor products" in a generic manner. The multiple uses of the designation "outdoor products" show that the designation does not point to applicant or any other single entity.
  • Case Finding: "Outdoor Products" is generic.
    • In re The Outdoor Recreation Group, Serial No. 76570321, (TTAB 2006).
      • In sum, the proposed mark is a common designation used in the industry to identify products such as clothing and gear used by persons engaged in outdoor activities. The designation OUTDOOR PRODUCTS is generic and does not and could not function as a trademark to distinguish applicant's goods from those of others and serve as an indication of origin. The designation sought to be registered should not be subject to exclusive appropriation, but rather should remain free for others in the industry to use in connection with their clothing and gear used for outdoor activities. See In re Boston Beer Co. L.P., 198 F.3d 1370, 53 USPQ2d 1056 (Fed. Cir. 1999).
  • Case Finding: "Instant Messenger" is generic.
    • In re America Online, Inc., Serial No. 75460305, (TTAB 2006).
      • When we view the examining attorney's evidence, it is clear why applicant's marks were refused registration on the ground that the marks were generic. Numerous references in a wide variety of publications over a number of years show use of the term "Instant Messenger" to refer to services related to providing real time text messages. Such excerpts as "thoughts are conveyed electronically through instant messengers and cell phones" and "[d]rop superfluous programs, such as instant messengers and screen savers" clearly show generic use of the term. These references convince us that the examining attorney has met her initial burden of setting forth a prima facie case that the term INSTANT MESSENGER is generic for the services identified in applicant's applications.
  • Case Finding: "CPA Examination" is generic.
    • In re American Institute of Certified Public Accountants, Serial No. 75/626,097, (TTAB 2002).
      • All of this evidence persuades us that the relevant public primarily perceives "CPA exam," "CPA examination," and variations in which the initials are set forth in lower case letters or with its component terms spelled out, as generic, even if a sizable subset of that public draws an association between the AICPA and the UNIFORM CPA EXAMINATION. We find that "CPA EXAMINATION" is generic and, therefore, affirm the examining attorney's requirement for a disclaimer.
  • A term that names the central focus or subject matter of the services is generic for the services themselves.
    • In re Tires, Tires, Tires, Inc., Serial No. 77091459 (TTAB 2009)
      • Because the term "tires" identifies a key aspect of applicant's services, i.e., the goods sold in applicant's retail store, and the recitation of services specifically uses the term "tires" to name the subject matter of applicant's retail services, the term is generic for the retail sales of tires. A term that names the central focus or subject matter of the services is generic for the services themselves. See In re Candy Bouquet International, Inc., 73 USPQ2d 1883 (TTAB 2004) (because CANDY BOUQUET is generic for gift packages of candy, it also is generic for applicant's retail, mail and computer ordering services therefor); In re A La Vielle Russie, Inc., 60 USPQ2d 1895 (TTAB 2001) (RUSSIANART generic for particular field or type of art and also for dealership services directed to that field); In re Log Cabin Homes Ltd., 52 USPQ2d 1206 (TTAB 1999) (LOG CABIN HOMES generic for type of building and also for architectural design services directed to that type of building and for retail outlets featuring kits for construction of that type building); In re Web Communications, 49 USPQ2d 1478 (TTAB 1998) (WEB COMMUNICATIONS generic for publication and communication via the World Wide Web, and also for consulting services directed to assisting customers in setting up their own Web sites for such publication and communication); and In re Harcourt Brace Jovanovich, Inc., 222 USPQ 820 (TTAB 1984) (LAW & BUSINESS incapable of distinguishing applicant's services of arranging and conducting seminars in the field of business law).
  • Absent relevant evidence, there is no additional meaning found in a mark which repeats a term multiple times to distinguish it from a mark which states the term only once.
    • In re Tires, Tires, Tires, Inc., Serial No. 77091459 (TTAB 2009)
      • Here, "tires" and "tires tires tires" have the same meaning. So does "tires tires" as well as "tires tires tires tires." There is no "additional meaning" in "tires tires tires" that separates the designation from "tires" or even other designations solely comprising a repetition of "tires." See American Fertility, 51 USPQ2d at 1837 ("[t]he PTO here failed to provide any evidence that the phrase as a whole, SOCIETY FOR REPRODUCTIVE MEDICINE, has acquired no additional meaning to the relevant public than the terms 'society' and 'reproductive medicine' have individually.")
  • Case Finding: Applicant's services are identified as "retail tire stores." We accept this identification as identifying the genus of services, which is the genus advocated by applicant.
    • In re Tires, Tires, Tires, Inc., Serial No. 77091459 (TTAB 2009)
      • Applicant's services are identified as "retail tire stores." We accept this identification as identifying the genus of services, which is the genus advocated by applicant.
  • Case Finding: Because "tires" is generic for retail sales of tires, and because TIRES has the same meaning as TIRES TIRES TIRES, we find that the examining attorney has met his substantial burden of establishing that TIRES TIRES TIRES is generic for, and hence incapable of identifying and distinguishing the source of, the identified services.
    • In re Tires, Tires, Tires, Inc., Serial No. 77091459 (TTAB 2009)
      • Also, because "tires" is generic for retail sales of tires, and because TIRES has the same meaning as TIRES TIRES TIRES, we find that the examining attorney has met his substantial burden of establishing that TIRES TIRES TIRES is generic for, and hence incapable of identifying and distinguishing the source of, the identified services.
  • Case Finding: Inasmuch as "REDUCER" is the generic term for piping that joins pipes of different diameters together and applicant's goods act, inter alia, as reducers, the examining attorney has established a prima facie showing that the term "REDUCER" is generic for applicant's goods which has not been rebutted by applicant.
    • In re Rosemount Inc., Serial Nos. 78180535 and 78180540 (TTAB 2008)
      • Inasmuch as "REDUCER" is the generic term for piping that joins pipes of different diameters together and applicant's goods act, inter alia, as reducers, the examining attorney has established a prima facie showing that the term "REDUCER" is generic for applicant's goods which has not been rebutted by applicant.
  • Case Finding: The composition of TIRES TIRES TIRES, through its repetition of a single word, is different from the composition of other marks which have been found to be phrases.
    • In re Tires, Tires, Tires, Inc., Serial No. 77091459 (TTAB 2009)
      • Finally, the composition of TIRES TIRES TIRES, through its repetition of a single word, is different from the composition of other marks which have been found to be "phrases." See, e.g., In re Active Ankle Systems Inc., 83 USPQ2d 1532, 1534 (TTAB 2007) ("DORSAL NIGHT SPLINT is a phrase. . In the present case, 'dorsal,' 'night,' and 'splint' are multiple words joined together as a phrase."); In re Outdoor Recreation Group, 81 USPQ2d 1392, 1397 (TTAB 2006) ("OUTDOOR PRODUCTS is somewhat more analogous to the phrase considered by the court in American Fertility"); and In re Rodale Inc., 80 USPQ2d 1696 (TTAB 2006) (NUTRITION BULLETIN is a phrase).
  • Case Finding: The specimen of use states "YOUR FAMILY CAR CARE CENTER." (Underlining and capitalization in original.) The services are suited to the public at large. We therefore conclude that the relevant public for applicant's services is substantially composed of members of the general public who own vehicles.
    • In re Tires, Tires, Tires, Inc., Serial No. 77091459 (TTAB 2009)
      • The specimen of use states "YOUR FAMILY CAR CARE CENTER." (Underlining and capitalization in original.) The services are suited to the public at large. We therefore conclude that the relevant public for applicant's services is substantially composed of members of the general public who own vehicles.
  • Case Finding: Tthe cases relied upon by applicant, involved the issue of mere descriptiveness and terms that presented a double meaning that would be perceived as completely arbitrary and fanciful, unlike the proposed mark before us which simply names the goods inasmuch as they consist of a flowmeter combined with a reducer.
    • In re Rosemount Inc., Serial Nos. 78180535 and 78180540 (TTAB 2008)
      • Moreover, the cases relied upon by applicant, involved the issue of mere descriptiveness and terms that presented a double meaning that would be perceived as completely arbitrary and fanciful, unlike the proposed mark before us which simply names the goods inasmuch as they consist of a flowmeter combined with a reducer. See Blisscraft of Hollywood v. United Plastics Co., 294 F.2d 694, 131 USPQ 55 (2d Cir. 1961) (POLYPITCHER not merely descriptive of polyethylene pitchers inasmuch as it is an incongruous expression suggestive of MOLLY PITCHER) and In re Colonial Stores Inc., 394 F.2d 549, 157 USPQ 382 (CCPA 1968) (SUGAR & SPICE not merely descriptive of bakery products inasmuch as it is suggestive of a nursery rhyme).
  • Determining whether a mark is generic involves a two-step inquiry: First, what is the genus of goods or services at issue" Second, is the term sought to be registered or retained on the register understood by the relevant public primarily to refer to that genus of goods or services"
    • In re Tires, Tires, Tires, Inc., Serial No. 77091459 (TTAB 2009)
      • "Ginn explains that: ""Determining whether a mark is generic . involves a two-step inquiry: First, what is the genus of goods or services at issue" Second, is the term sought to be registered or retained on the register understood by the relevant public primarily to refer to that genus of goods or services""" Id."
  • Evidence of competitors' use of a term as the name of their goods and services is persuasive evidence that the relevant consumers perceive the term as generic.
    • In re Tires, Tires, Tires, Inc., Serial No. 77091459 (TTAB 2009)
      • Evidence of competitors' use of a term as the name of their goods and services is persuasive evidence that the relevant consumers perceive the term as generic. Continental Airlines Inc. v. United Airlines Inc., 53 USPQ2d 1385 (TTAB 1999).
  • Evidence of the public's understanding of a term may be obtained from any competent source, including testimony, surveys, dictionaries, trade journals, newspapers and other publications.
    • In re Rosemount Inc., Serial Nos. 78180535 and 78180540 (TTAB 2008)
      • Evidence of the public's understanding of a term may be obtained from any competent source, including testimony, surveys, dictionaries, trade journals, newspapers and other publications. See Merrill Lynch, supra, 4 USPQ2d at 1143 (Fed. Cir. 1987), and In re Northland Aluminum Products, Inc., 777 F.2d 1556, 227 USPQ 961, 963 (Fed. Cir. 1985).
  • Evidence of the relevant public's understanding of a term may be obtained from any competent source including consumer surveys, dictionary definitions, newspapers and other publications.
    • In re Tires, Tires, Tires, Inc., Serial No. 77091459 (TTAB 2009)
      • Evidence of the relevant public's understanding of a term may be obtained from any competent source including consumer surveys, dictionary definitions, newspapers and other publications. See In re Reed Elsevier Properties Inc., 482 F.3d 1376, 82 USPQ2d 1378 (Fed. Cir. 2007).
  • In an appeal, the Office bears the burden of establishing genericness based on clear evidence of generic use.
    • In re Tires, Tires, Tires, Inc., Serial No. 77091459 (TTAB 2009)
      • In an appeal, the Office bears the burden of establishing genericness based on clear evidence of generic use. In re American Fertility Society, 188 F.3d 1341, 51 USPQ2d 1832 (Fed. Cir. 1999).
  • It is well established that the TTAB must look to the meaning of the term within the context of the identified goods.
    • In re Rosemount Inc., Serial Nos. 78180535 and 78180540 (TTAB 2008)
      • It is well established that we must look to the meaning of the term within the context of the identified goods. In re Chopper Industries, 222 USPQ 258, 259 (TTAB 1984).
  • Making this determination involves a two-step inquiry: First, what is the genus of goods or services at issue" Second, is the term sought to be registered understood by the relevant public primarily to refer to that genus of goods or services"
    • In re Rosemount Inc., Serial Nos. 78180535 and 78180540 (TTAB 2008)
      • Making this determination "involves a two-step inquiry: First, what is the genus of goods or services at issue" Second, is the term sought to be registered ... understood by the relevant public primarily to refer to that genus of goods or services"" Ginn, supra, 228 USPQ at 530.
  • Summary of cases that found that repeated wording is unregistrable as a whole under Section 2(e)(1).
    • In re Tires, Tires, Tires, Inc., Serial No. 77091459 (TTAB 2009)
      • "The examining attorney cites to two Board decisions which found that repeated wording is unregistrable as a whole under Section 2(e)(1). One decision is In re Litehouse Inc., 82 USPQ2d 1471 (TTAB 2007), where the Board found CAESAR!CAESAR! for salad dressing not unitary, and stated that "neither the mere repetition of the word CAESAR in applicant's mark, nor the presence of the exclamation points in the mark, nor both of these features combined, suffices to negate the mere descriptiveness of the mark as a whole as applied to salad dressings." Id. at 1474. The other decision is In re Disc Jockeys, Inc., 23 USPQ2d 1715 (TTAB 1992), where the Board found DJDJ to be merely descriptive of disc jockey services, and explained that "the combinations of these words [DJ] would not, simply because of their repetition, be rendered something more than descriptive." Id. at 1716. The Board noted that "[n]othing new or different is imparted by the simple repetition of the descriptive expression DJ"; and commented that: ""There is nothing in the composite which changes the meaning of the letters in any manner which would give them a different meaning. If one were to express the view that milk was "creamy creamy" or that a red bicycle was "red red" or that a razor was "sharp sharp," the repetition of the words "creamy," "red" and "sharp" would be understood as emphasis and the combinations of these words would not, simply because of their repetition, be rendered something more than descriptive."" Id."
  • The critical issue in genericness cases is whether members of the relevant public primarily use or understand the term sought to be protected to refer to the genus of goods or services in question.
    • In re Tires, Tires, Tires, Inc., Serial No. 77091459 (TTAB 2009)
      • The Court of Appeals for the Federal Circuit, our primary reviewing court, has stated that "[t]he critical issue in genericness cases is whether members of the relevant public primarily use or understand the term sought to be protected to refer to the genus of goods or services in question." H. Marvin Ginn Corp. v. Int'l Association of Fire Chiefs, Inc., 782 F.2d 987, 228 USPQ 528, 530 (Fed. Cir. 1986).
  • The critical issue is to determine whether the record shows that members of the relevant public primarily use or understand the term sought to be registered to refer to the category or class of goods or services in question.
    • In re Rosemount Inc., Serial Nos. 78180535 and 78180540 (TTAB 2008)
      • The critical issue is to determine whether the record shows that members of the relevant public primarily use or understand the term sought to be registered to refer to the category or class of goods or services in question. H. Marvin Ginn Corp. v. International Ass'n of Fire Chiefs, Inc., 782 F.2d 987, 228 USPQ 528, 530 (Fed. Cir. 1986); In re Women's Publishing Co. Inc., 23 USPQ2d 1876, 1877 (TTAB 1992).
  • The evidentiary burden of establishing whether a term is generic rests with the Office and the showing must be based on clear evidence.
    • In re Rosemount Inc., Serial Nos. 78180535 and 78180540 (TTAB 2008)
      • As noted above, the evidentiary burden of establishing whether a term is generic rests with the Office and the showing must be based on clear evidence.
  • The number of terms in the designation does not determine whether the designation constitutes a unitary phrase or merely a repeating word, for, as shown above, even two words have been held to constitute a unitary phrase. Rather, the critical factor is that the two or more words serve to modify each other and enhance the meaning of the composite, which is something that does not occur merely by repeating a word.
    • In re Tires, Tires, Tires, Inc., Serial No. 77091459 (TTAB 2009)
      • The number of terms in the designation does not determine whether the designation constitutes a unitary phrase or merely a repeating word, for, as shown above, even two words have been held to constitute a unitary phrase. Rather, the critical factor is that the two or more words serve to modify each other and enhance the meaning of the composite, which is something that does not occur merely by repeating a word.
  • The TTAB has already made clear in In re Litehouse and In re Disc Jockeys that the simple repetition of a merely descriptive term does not imbue the composite with the distinctiveness of a mark.
    • In re Tires, Tires, Tires, Inc., Serial No. 77091459 (TTAB 2009)
      • Additionally, the Board has already made clear in In re Litehouse and In re Disc Jockeys that the simple repetition of a merely descriptive term does not imbue the composite with the distinctiveness of a mark.
  • The TTAB must consider all the evidence of record including the evidence applicant has submitted in support of its claim of acquired distinctiveness.
    • In re Tires, Tires, Tires, Inc., Serial No. 77091459 (TTAB 2009)
      • We have considered, as we must, all the evidence of record including the evidence applicant has submitted in support of its claim of acquired distinctiveness. See In re Recorded Books Inc., 42 USPQ2d 1275 (TTAB 1997).
  • The TTAB next considers whether members of the relevant public would understand the mark to refer to the genus of the goods/services.
    • In re Tires, Tires, Tires, Inc., Serial No. 77091459 (TTAB 2009)
      • We now consider whether members of the relevant public would understand TIRES TIRES TIRES to refer to the genus of the services. Marvin Ginn, 228 USPQ at 530.
  • There is no valid reason to require an examining attorney to demonstrate that a designation composed solely of a repeating word has been used by others, when the examining attorney has demonstrated that the repeated term is generic and that the repetition does not result in a designation with a different meaning.
    • In re Tires, Tires, Tires, Inc., Serial No. 77091459 (TTAB 2009)
      • We too disagree with applicant's argument that the examining attorney must establish that TIRES TIRES TIRES per se has been used by others in order to find the designation generic. Applicant's argument implies that a generic term would be rendered non-generic simply by repeating the term. There is no valid reason to require an examining attorney to demonstrate that a designation composed solely of a repeating word has been used by others, when the examining attorney has demonstrated that the repeated term is generic and that the repetition does not result in a designation with a different meaning.
  • Under the doctrine of foreign equivalents, foreign words from common languages are translated into English for the purpose of comparing them to other marks in the context of a likelihood of confusion determination or in deciding whether the mark is descriptive or generic in its foreign language.
    • Green Spot (Thailand) Ltd. v. Vitasoy International Holdings Limited, Opposition No. 91165010, (TTAB 2008)
      • Under the doctrine of foreign equivalents, foreign words from common languages are translated into English for the purpose of comparing them to other marks in the context of a likelihood of confusion determination or in deciding whether the mark is descriptive or generic in its foreign language.7 FOOTNOTE 7 "See e.g., In re Oriental Daily News, Inc., 230 USPQ 637 (TTAB 1986)(Chinese characters translated as "Oriental Daily News" are descriptive of a newspaper under the doctrine of foreign equivalents); 2 McCarthy, J. Thomas, McCarthy on Trademarks and Unfair Competition § 11:34 (4th ed.)."
  • We begin by noting that because applicant seeks registration on the Supplemental Register, applicant has conceded that the marks are merely descriptive.
    • In re Rosemount Inc., Serial Nos. 78180535 and 78180540 (TTAB 2008)
      • We begin by noting that because applicant seeks registration on the Supplemental Register, applicant has conceded that the marks are merely descriptive. See In re Eddie Z's Blinds and Drapery, Inc., 74 USPQ2d 1037, 1039 (TTAB 2005); Perma Ceram Enterprises Inc. v. Preco Industries Ltd., 23 UPSQ2d 1134, 1137 n.11 (TTAB 1992). Thus, the arguments regarding other meanings for "REDUCER" and double entendre are inapplicable.
  • When a proposed mark is refused registration as generic, the examining attorney has the burden of proving genericness by clear evidence thereof.
    • In re Rosemount Inc., Serial Nos. 78180535 and 78180540 (TTAB 2008)
      • When a proposed mark is refused registration as generic, the examining attorney has the burden of proving genericness by "clear evidence" thereof. See In re Merrill Lynch, Pierce, Fenner & Smith, Inc., 828 F.2d 1567, 4 USPQ2d 1141, 1143 (Fed. Cir. 1987); see also In re Gould Paper Corp., 834 F.2d 1017, 5 USPQ2d 1110, 1111 (Fed. Cir. 1987).
  • We now turn to the second inquiry: the public's understanding of the term.
    • In re Greenliant Systems, Ltd., Serial No. 78724139 (TTAB 2010)
      • We now turn to the second inquiry: the public's understanding of the term.
  • Case Finding: ELECTRIC CANDLE or ELECTRIC CANDLE COMPANY as a phrase is generic.
    • In re Wm. B. Coleman Co., Inc., Serial No. 77067861 (TTAB 2010)
      • Even if we were to treat ELECTRIC CANDLE or ELECTRIC CANDLE COMPANY as a phrase, and therefore subject to the American Fertility test, we find that the record in this case continues to support a finding that the proposed mark is generic.
  • The evidentiary burden is different depending on the type of mark an applicant seeks to register.
    • In re Wm. B. Coleman Co., Inc., Serial No. 77067861 (TTAB 2010)
      • Finally, the evidentiary burden is different depending on the type of mark an applicant seeks to register.
  • Case Finding: The term NANDRIVE is generic when used in connection with electronic integrated circuits.
    • In re Greenliant Systems, Ltd., Serial No. 78724139 (TTAB 2010)
      • In view of the foregoing, we find that the term NANDRIVE is generic when used in connection with "electronic integrated circuits." Because the term NANDRIVE is generic when used in connection with "electronic integrated circuits," it is not registrable on the Supplemental Register or on the Principal Register under the provisions of Section 2(f).
  • As noted above, the evidentiary burden of establishing that a term is generic rests with the USPTO and the showing must be based on clear evidence.
    • In re Greenliant Systems, Ltd., Serial No. 78724139 (TTAB 2010)
      • As noted above, the evidentiary burden of establishing that a term is generic rests with the USPTO and the showing must be based on clear evidence. Merrill Lynch, 4 USPQ2d at 1143.
  • As noted above, the evidentiary burden of establishing that a term is generic rests with the USPTO and the showing must be based on clear evidence.
    • In re Wm. B. Coleman Co., Inc., Serial No. 77067861 (TTAB 2010)
      • As noted above, the evidentiary burden of establishing that a term is generic rests with the USPTO and the showing must be based on clear evidence. Merrill Lynch, 4 USPQ2d at 1143.
  • Evidence of the public's understanding of a term may be obtained from any competent source, including testimony, surveys, dictionaries, trade journals, newspapers and other publications.
    • In re Greenliant Systems, Ltd., Serial No. 78724139 (TTAB 2010)
      • Evidence of the public's understanding of a term may be obtained from any competent source, including testimony, surveys, dictionaries, trade journals, newspapers and other publications. See In re Northland Aluminum Products, Inc., 777 F.2d 1556, 227 USPQ 961, 963 (Fed. Cir. 1985); Merrill Lynch, 4 USPQ2d at 1143.
  • Evidence of the public's understanding of a term may be obtained from any competent source, including testimony, surveys, dictionaries, trade journals, newspapers and other publications.
    • In re Wm. B. Coleman Co., Inc., Serial No. 77067861 (TTAB 2010)
      • Evidence of the public's understanding of a term may be obtained from any competent source, including testimony, surveys, dictionaries, trade journals, newspapers and other publications. See Merrill Lynch, supra, 4 USPQ2d at 1143 (Fed. Cir. 1987), and In re Northland Aluminum Products, Inc., 777 F.2d 1556, 227 USPQ 961, 963 (Fed. Cir. 1985).
  • Turning to the second inquiry, the public's understanding of the term, the relevant public consists of the ordinary consumer interested in purchasing light bulbs, accessories and fixtures, including electric candles.
    • In re Wm. B. Coleman Co., Inc., Serial No. 77067861 (TTAB 2010)
      • Turning to the second inquiry, the public's understanding of the term, the relevant public consists of the ordinary consumer interested in purchasing light bulbs, accessories and fixtures, including electric candles.
  • Once an applicant provides a translation of a foreign term that is a generic or descriptive term for the goods in English, it has a more difficult burden to then show that the term is not merely descriptive or generic.
    • In re Tokutake Industry Co., Ltd., Serial No. 79018656 (TTAB 2008)
      • Once an applicant provides a translation of a foreign term that is a generic or descriptive term for the goods in English, it has a more difficult burden to then show that the term is not merely descriptive or generic. An applicant is not likely to succeed in this challenge when it relies primarily on the argument of its counsel.
  • Case Finding: The relevant public, when it considers NANDRIVE in conjunction with electronic integrated circuits, readily understands that term as identifying a type of electronic integrated circuit, namely, a solid-state flash drive.
    • In re Greenliant Systems, Ltd., Serial No. 78724139 (TTAB 2010)
      • Based on the record described above, we find that there is clear evidence to support a finding that the relevant public, when it considers NANDRIVE in conjunction with electronic integrated circuits, readily understands that term as identifying a type of electronic integrated circuit, namely, a solid-state flash drive.
  • Making this determination involves a two-step inquiry: First, what is the genus of goods or services at issue? Second, is the term sought to be registered ... understood by the relevant public primarily to refer to that genus of goods or services?
    • In re Greenliant Systems, Ltd., Serial No. 78724139 (TTAB 2010)
      • Making this determination "involves a two-step inquiry: First, what is the genus of goods or services at issue? Second, is the term sought to be registered ... understood by the relevant public primarily to refer to that genus of goods or services?" Ginn, 228 USPQ at 530.
  • Making this determination involves a two-step inquiry: First, what is the genus of goods or services at issue? Second, is the term sought to be registered ... understood by the relevant public primarily to refer to that genus of goods or services?
    • In re Wm. B. Coleman Co., Inc., Serial No. 77067861 (TTAB 2010)
      • Making this determination "involves a two-step inquiry: First, what is the genus of goods or services at issue? Second, is the term sought to be registered ... understood by the relevant public primarily to refer to that genus of goods or services?" Ginn, 228 USPQ at 530.
  • When an applicant amends its application to the Supplemental Register in response to a descriptiveness refusal, if the examining attorney determines that the designation is a generic name for the applicant's goods, the statutory basis for such a refusal is Section 23.
    • In re Wm. B. Coleman Co., Inc., Serial No. 77067861 (TTAB 2010)
      • Upon applicant's amendment to the Supplemental Register, the examining attorney refused registration under Section 23 of the Trademark Act, 15 U.S.C. § 1091, on the ground that applicant's proposed mark is generic and, as such, unregistrable. Trademark Manual of Examining Procedure ("TMEP") §§815.04 and 1209.02(a)(i) (6th ed. 2009) (when an applicant amends its application to the Supplemental Register in response to a Section 2(e)(1) descriptiveness refusal, if the examining attorney determines that the designation is a generic name for the applicant's goods, the statutory basis for such a refusal is Section 23 of the Trademark Act). See also In re Controls Corp. of America, 46 USPQ2d 1308, 1309 n. 2 (TTAB 1998).
  • The critical issue is to determine whether the record shows that members of the relevant public primarily use or understand the term sought to be registered to refer to the category or class of goods in question.
    • In re Greenliant Systems, Ltd., Serial No. 78724139 (TTAB 2010)
      • The critical issue is to determine whether the record shows that members of the relevant public primarily use or understand the term sought to be registered to refer to the category or class of goods in question. H. Marvin Ginn Corp. v. International Ass'n of Fire Chiefs, Inc., 782 F.2d 987, 228 USPQ 528, 530 (Fed. Cir. 1986); In re Women's Publishing Co. Inc., 23 USPQ2d 1876, 1877 (TTAB 1992).
  • Case Finding: We begin by finding that the genus of goods at issue in this case is adequately defined by applicant's identification of goods.
    • In re Greenliant Systems, Ltd., Serial No. 78724139 (TTAB 2010)
      • We begin by finding that the genus of goods at issue in this case is adequately defined by applicant's identification of goods, namely, "electronic integrated circuits." Magic Wand Inc. v. RDB Inc., 940 F.2d 638, 19 USPQ2d 1551, 1552 (Fed. Cir. 1991) ("[A] proper genericness inquiry focuses on the description of [goods or] services set forth in the [application or] certificate of registration").
  • Case Finding: Due to the generic character of the term "nand drive," consumers are likely to perceive the telescoped term NANDRIVE merely as a stylized version of the generic term for purposes of advertising.
    • In re Greenliant Systems, Ltd., Serial No. 78724139 (TTAB 2010)
      • Due to the generic character of the term "nand drive," consumers are likely to perceive the telescoped term NANDRIVE or, as used in the above reference, NANDrive, merely as a stylized version of the generic term for purposes of advertising. There is simply no evidence to support applicant's claim that consumers will perceive NANDRIVE or NANDrive as a trademark or anything other than a generic term.
  • When a proposed mark is refused registration as generic, the examining attorney has the burden of proving genericness by clear evidence thereof.
    • In re Wm. B. Coleman Co., Inc., Serial No. 77067861 (TTAB 2010)
      • When a proposed mark is refused registration as generic, the examining attorney has the burden of proving genericness by "clear evidence" thereof. See In re Hotels.com, 573 F.3d 1300, 91 USPQ2d 1532, 1533 (Fed. Cir. 2009); In re Merrill Lynch, Pierce, Fenner & Smith, Inc., 828 F.2d 1567, 4 USPQ2d 1141, 1143 (Fed. Cir. 1987); and In re Gould Paper Corp., 834 F.2d 1017, 5 USPQ2d 1110, 1111 (Fed. Cir. 1987).
  • The critical issue is to determine whether the record shows that members of the relevant public primarily use or understand the term sought to be registered to refer to the category or class of goods or services in question.
    • In re Wm. B. Coleman Co., Inc., Serial No. 77067861 (TTAB 2010)
      • The critical issue is to determine whether the record shows that members of the relevant public primarily use or understand the term sought to be registered to refer to the category or class of goods or services in question. H. Marvin Ginn Corp. v. International Ass'n of Fire Chiefs, Inc., 782 F.2d 987, 228 USPQ 528, 530 (Fed. Cir. 1986); In re Women's Publishing Co. Inc., 23 USPQ2d 1876, 1877 (TTAB 1992).
  • Examples of competitors and commentators using the term as a category or type of product is persuasive evidence that the relevant consumers perceive the term as generic.
    • In re Greenliant Systems, Ltd., Serial No. 78724139 (TTAB 2010)
      • The news stories and articles submitted by the Examining Attorney expressly identify NAND drive devices as solid state flash memory drives. These examples of competitors and commentators using the term NAND drive as a category or type of product is persuasive evidence that the relevant consumers perceive the term as generic. Continental Airlines Inc. v. United Airlines Inc., 53 USPQ2d 1385, 1395 (TTAB 1999).
  • When a proposed mark is refused registration as being a generic term, the examining attorney has the burden of proving genericness by clear evidence thereof.
    • In re Greenliant Systems, Ltd., Serial No. 78724139 (TTAB 2010)
      • When a proposed mark is refused registration as being a generic term, the examining attorney has the burden of proving genericness by "clear evidence" thereof. See In re Hotels.com, 573 F.3d 1300, 91 USPQ2d 1532, 1533 (Fed. Cir. 2009); In re Merrill Lynch, Pierce, Fenner & Smith, Inc., 828 F.2d 1567, 4 USPQ2d 1141, 1143 (Fed. Cir. 1987); and In re Gould Paper Corp., 834 F.2d 1017, 5 USPQ2d 1110, 1111 (Fed. Cir. 1987).
  • Case Finding: The examples of use of "electric candle" in the record are sufficient to support the finding that the mark ELECTRIC CANDLE is generic.
    • In re Wm. B. Coleman Co., Inc., Serial No. 77067861 (TTAB 2010)
      • Similar to Cell Therapeutics, the record here includes evidence of the two words used together. Under this analysis, ELECTRIC CANDLE is the phrase and we have evidence of generic use of this phrase. The record clearly establishes that an "electric candle" is a type of lighting fixture. Thus, the examples of use of "electric candle" in the record are sufficient to support the finding that applicant's proposed mark is generic.
  • Because Section 7(b) of the Lanham Act bestows upon the owner of a registration the presumption of use of a mark for all goods identified in a registration, the question of registrability must be determined by considering any goods falling within the literal scope of an identification, and not merely the particular goods an applicant may be marketing at the time when registrability is determined.
    • In re Greenliant Systems, Ltd., Serial No. 78724139 (TTAB 2010)
      • Because Section 7(b) of the Lanham Act bestows upon the owner of a registration the presumption of use of a mark for all goods identified in a registration, the question of registrability must be determined by considering any goods falling within the literal scope of an identification, and not merely the particular goods an applicant may be marketing at the time when registrability is determined. In re Reed Elsevier Properties, Inc., 77 USPQ2d 1649, 1654 (TTAB 2005).
  • Descussion concerning the mark NANDRIVE.
    • In re Greenliant Systems, Ltd., Serial No. 78724139 (TTAB 2010)
      • The evidence shows common use of the term NAND drive in the industry. Applicant's mark NANDRIVE is simply a compressed version of the generic terms NAND and drive. When the terms NAND and drive are combined into the compressed term NANDRIVE, the mark is equivalent in sound and meaning to the individual terms. The individual words NAND and drive retain their generic meanings because the compression of the two terms is not incongruous and does not evoke a unique commercial impression.
  • A proper genericness inquiry focuses on the description of goods or services set forth in the application or certificate of registration.
    • In re Wm. B. Coleman Co., Inc., Serial No. 77067861 (TTAB 2010)
      • We begin by finding that the genus of goods at issue in this case is adequately defined by applicant's identification of goods, namely, "light bulbs; lighting accessories, namely, candle sleeves; lighting fixtures."1 Magic Wand Inc. v. RDB Inc., 940 F.2d 638, 19 USPQ2d 1551, 1552 (Fed. Cir. 1991) ("[A] proper genericness inquiry focuses on the description of [goods or] services set forth in the [application or] certificate of registration.") We further find that this identification encompasses "electric candles" and, as such, the genus includes "electric candles."
  • Where marks are compound terms, the examining attorney may establish that the term is generic by producing evidence that each of the constituent words is generic, and that the separate words retain their generic significance when joined to form a compound that has a meaning identical to the meaning common usage would ascribe to those words as a compound.
    • In re Wm. B. Coleman Co., Inc., Serial No. 77067861 (TTAB 2010)
      • Where marks are compound terms, the examining attorney may establish that the term is generic by producing evidence that each of the constituent words is generic, and that the separate words retain their generic significance when joined to form a compound that has "a meaning identical to the meaning common usage would ascribe to those words as a compound." In re Gould Paper Corp., 834 F.2d 1017, 5 USPQ2d 1110, 1111-1112 (Fed. Cir. 1987) (SCREENWIPE held generic as applied to premoistened antistatic cloths for cleaning computer and television screens). See also TMEP §1209.01(c)(i).
  • Registration should be refused if the mark is descriptive of any of the goods for which registration is sought.
    • In re Greenliant Systems, Ltd., Serial No. 78724139 (TTAB 2010)
      • In re Analog Devices, Inc., 6 USPQ2d 1808, 1810 (TTAB 1988), aff'd, 871 F.2d 1097, 10 USPQ2d 1879 (Fed. Cir. 1989) (unpublished) (registration is properly refused if the subject matter for registration is generic of any one of the goods for which registration is sought); Cf. In re Stereotaxis Inc., 429 F.3d 1039, 77 USPQ2d 1087, 1089 (Fed. Cir. 2005), quoting, Application of Richardson Ink Co., 511 F.2d 559, 185 USPQ 46, 48 (CCPA 1975) ("Our predecessor court...has stated that registration should be refused if the mark is descriptive of any of the goods for which registration is sought").
  • Case Finding: ELECTRIC CANDLE COMPANY is incapable of identifying source for electric candles because it is a term a purchaser would understand and could use to refer to the type of company that sells electric candles, and must be left available for use by other such companies selling electric candles.
    • In re Wm. B. Coleman Co., Inc., Serial No. 77067861 (TTAB 2010)
      • Finally, though applicant contends ELECTRIC CANDLE COMPANY is not the term the relevant public would use to describe the genus, the relevant public would nonetheless understand ELECTRIC CANDLE COMPANY to refer to a company that offers electric candles, and public understanding is critical. 1800Mattress.com, 92 USPQ2d at 1685. It is, therefore, incapable of identifying source for electric candles because it is a term a purchaser would understand and could use to refer to the type of company that sells electric candles, and must be left available for use by other such companies selling electric candles.
  • Where the mark is a compound term, the examining attorney may establish that the term is generic by producing evidence that each of the constituent words is generic, and that the separate words retain their generic significance when joined to form a compound that has a meaning identical to the meaning common usage would ascribe to those words as a compound.
    • In re Greenliant Systems, Ltd., Serial No. 78724139 (TTAB 2010)
      • Finally, where, as here, the mark is a compound term, the examining attorney may establish that the term is generic by producing evidence that each of the constituent words is generic, and that the separate words retain their generic significance when joined to form a compound that has "a meaning identical to the meaning common usage would ascribe to those words as a compound." In re Gould Paper Corp., 834 F.2d 1017, 5 USPQ2d 1110, 1111-1112 (Fed. Cir. 1987) (SCREENWIPE held generic as applied to premoistened antistatic cloths for cleaning computer and television screens); see also TMEP §1209.01(c) (i).
  • In Cell Therapeutics, the TTAB found the phrase CELL THERAPEUTICS, INC. to be generic.
    • In re Wm. B. Coleman Co., Inc., Serial No. 77067861 (TTAB 2010)
      • In Cell Therapeutics, 67 USPQ2d at 1796-98, the Board found the phrase CELL THERAPEUTICS, INC. to be generic for pharmaceutical preparations and laboratory research and development services. The Board made this determination under the standard set forth in American Fertility, characterizing CELL THERAPEUTICS as a phrase and effectively eliminating the term INC. from the analysis. The Board noted that the applicant had not argued that the addition of INC. would obviate a finding that the proposed mark is generic and went on to cite prior cases where the Board had stated that INC. has no source-identifying capability.
  • Case Finding: The addition of Inc. in this case has no significance and the record clearly establishes that the proposed mark is generic under either the Gould or American Fertility standards.
    • In re Wm. B. Coleman Co., Inc., Serial No. 77067861 (TTAB 2010)
      • There can be no dispute that the term "electric candle" is the name of a type of lighting fixture. The dispute centers on the effect of the addition of the word "company" to the term "electric candle" and the standard to be applied in analyzing the evidence.
        We find the addition of the company designation in this case to have no significance and the record clearly establishes that the proposed mark is generic under either the Gould or American Fertility standards. In addition, we find that even if the proposed mark as a whole is not the literal name of the goods, it is nonetheless incapable and, therefore, unregistrable on the Supplemental Register.
  • The TTAB does read American Fertility so broadly that an applicant could take a clearly generic term and add to it a non-source identifying word such as "company" and thereby create a trademark.
    • In re Wm. B. Coleman Co., Inc., Serial No. 77067861 (TTAB 2010)
      • In American Fertility, the Court of Appeals for the Federal Circuit (Court) determined that the USPTO did not satisfy its "burden of showing that the phrase SOCIETY FOR REPRODUCTIVE MEDICINE is generic as applied to the Society's' services, namely, promoting the interests of the reproductive medicine profession." American Fertility, 51 USPQ2d at 1836. However, we do not believe that American Fertility can be read such that an applicant could take a clearly generic term and add to it a non-source identifying word such as "company" and thereby create a trademark. This is true even in the absence of proof by the examining attorney that others have used "electric candle company."
  • The fact that an applicant may be the first or only user of a generic designation does not justify registration if the only significance conveyed by the term is that of the category of goods.
    • In re Greenliant Systems, Ltd., Serial No. 78724139 (TTAB 2010)
      • Moreover, the fact that an applicant may be the first or only user of a generic designation or, as in this case, a compressed version of such a term, does not justify registration if the only significance conveyed by the term is that of the category of goods. See In re Stanbel Inc., 16 USPQ2d at 1472; In re Hubbard Milling Co., 6 USPQ2d 1239 (TTAB 1987)(MINERAL-LYX held generic for mineral licks for feeding livestock); In re National Shooting Sports Foundation, Inc., 219 USPQ 1018, 1020 (TTAB 1983) (SHOOTING, HUNTING, OUTDOOR TRADE SHOW AND CONFERENCE held apt descriptive name for conducting and arranging trade shows in the hunting, shooting, and outdoor sports products field).
  • Evidence: Discussion of internet search and Lexis/Nexis search results and public perception.
    • In re Greenliant Systems, Ltd., Serial No. 78724139 (TTAB 2010)
      • Applicant contends that "48 of 52 hits on an internet search of the term NANDRIVE (representing 92.3% of the hits) were references to Applicant, and that 132 of 132 references found in a LexisNexis search of the term NANDRIVE were to applicant (which represents 100% of the references found) . [and] is strong evidence that the public regards the term NANDRIVE as a trademark for Applicant's goods."16 We disagree. First, as indicated above, because applicant may be the only user of the compound term NANDRIVE, its internet and Lexis/Nexis hits are going to be heavily skewed to articles referencing applicant. Second, it is not clear to us how consumers will perceive the term NANDRIVE as used in the articles.
  • Section 23 of the Trademark Act clearly prohibits registration of incapable matter on the Supplemental Register.
    • In re Wm. B. Coleman Co., Inc., Serial No. 77067861 (TTAB 2010)
      • Section 23 of the Trademark Act clearly prohibits registration of incapable matter on the Supplemental Register as set forth below: "All marks capable of distinguishing applicant's goods or services and not registrable on the principal register herein provided,...which are in lawful use in commerce...may be registered on the supplemental register ...
        For the purposes of registration on the supplemental register, a mark may consist of any trademark, symbol, label, package, configuration of goods, name, word, slogan, phrase, surname, geographical name, numeral, device, any matter that as a whole is not functional, or any combination of any of the foregoing, but such mark must be capable of distinguishing the applicant's goods or services."
        15 U.S.C. §1091(a) and (c).
  • Discussion of the Dial-A-Mattress case.
    • In re Wm. B. Coleman Co., Inc., Serial No. 77067861 (TTAB 2010)
      • In Dial-A-Mattress the Court, in addressing the commercial need to use the subject term 1-888-M-A-T-R-E-SS, stated that "given that telephone numbers consist of only seven numbers and typically can be used by only one entity at a time, a competitor of a business that has obtained a telephone number corresponding to a 'mattress' mnemonic for all practical purposes is already precluded from using and promoting the number. A rule precluding registerability merely shifts the race from the Trademark Office to the telephone company [and] its competitors have not been precluded from using mnemonic telephone numbers as marketing tools ... [and] remain free to use 'mattress' to describe their goods and services in formats other than the promotion of mnemonic telephone numbers consisting of the term." Dial-A-Mattress, 57 USPQ2d at 1811.
  • An entity designation must be free for all to use in combination with the generic name of the products sold by the entity and the addition of "company" cannot transform the name of the goods for which registration is sought into a trademark.
    • In re Wm. B. Coleman Co., Inc., Serial No. 77067861 (TTAB 2010)
      • This is distinct from the Court's decision in 1-800-MATTRESS where the Court affirmed the Board's finding that mattress.com is generic, because the record demonstrated others' need to use the term. In re 1800Mattress.com IP, LLC, 586 F.3d 1359, 92 USPQ2d 1682 (Fed. Cir. 2009). While this record does not contain an example of another electric candle company referring to itself or its candles as "electric candle company" in offering its electric candles for sale, the need to use "electric candle company" is demonstrated by the evidence establishing that "electric candle" is used by others as the generic name of the goods, and an entity designation must be free for all to use in combination with the generic name of the products sold by the entity. Therefore, we hold that the designation "company" cannot transform the name of the goods for which registration is sought into a trademark.
  • Where marks are more in the nature of a phrase, USPTO must provide evidence of the meaning of the composite mark as a whole.
    • In re Wm. B. Coleman Co., Inc., Serial No. 77067861 (TTAB 2010)
      • Where marks are more in the nature of a phrase, the United States Patent and Trademark Office ("USPTO") must provide evidence of the meaning of the composite mark as a whole. In re American Fertility Society, 188 F.3d 1341, 51 USPQ2d 1832, 1837 (Fed. Cir. 1999) (SOCIETY FOR REPRODUCTIVE MEDICINE not generic for association services in the field of reproductive medicine because where the mark is a phrase evidence that each separate term is generic is not sufficient). See also In re Dial-A-Mattress Operating Corp., 240 F.3d 1341, 57 USPQ2d 1807, 1810 (Fed. Cir. 2001) (1-888-M-A-T-R-E-S-S not generic for telephone shop-at-home retail services in the field of mattresses because it "bears closer conceptual resemblance to a phrase than a compound word" and there is no evidence of record that the mark as a whole is generic); and In re Active Ankle Systems Inc., 83 USPQ2d 1532 (TTAB 2007) (DORSAL NIGHT SPLINT found generic for orthopedic splints for the foot and ankle based on record that included third-party use of the entire phrase).
  • Registration should be refused if the mark is descriptive of any of the goods for which registration is sought.
    • In re Wm. B. Coleman Co., Inc., Serial No. 77067861 (TTAB 2010)
      • We further find that this identification encompasses "electric candles" and, as such, the genus includes "electric candles." Indeed, these are the goods sold by applicant as shown below in the excerpt from applicant's website submitted by the examining attorney: "This part is used to keep the electric candle from moving during shipment and may be discarded ... Electric Candles are Safe and Convenient" www.electric-candle.com. See In re Web Communications, 49 USPQ2d 1478, 1479 (TTAB 1998). See also In re Stereotaxis Inc., 429 F.3d 1039, 77 USPQ2d 1087, 1089 (Fed. Cir. 2005), quoting, Application of Richardson Ink Co., 511 F.2d 559, 185 USPQ 46, 48 (CCPA 1975) ("Our predecessor court...has stated that registration should be refused if the mark is descriptive of any of the goods for which registration is sought"); In re Analog Devices, Inc., 6 USPQ2d 1808, 1810 (TTAB 1988), aff'd, 871 F.2d 1097, 10 USPQ2d 1879 (Fed. Cir. 1989) (unpublished) (registration is properly refused if the subject matter for registration is generic of any one of the goods for which registration is sought).
  • Analsyis of ELECTRIC CANDLE COMPANY as a generic mark.
    • In re Wm. B. Coleman Co., Inc., Serial No. 77067861 (TTAB 2010)
      • The record shows that "electric candle" is a unitary generic term. The record also establishes that the term "company" is simply a designation for a type of entity without source-identifying capability. Therefore, ELECTRIC CANDLE COMPANY is the combination of two generic terms joined to create a compound. Eddie Z's Blinds, 74 USPQ2d at 1041-42. Thus, Gould-type evidence showing the generic nature of the two terms is sufficient to establish that the separate terms retain their generic significance when joined to form a compound that has "a meaning identical to the meaning common usage would ascribe to those words as a compound." Gould, 5 USPQ2d at 1111-12. The space between the generic terms "electric candle" and "company" does not disqualify this type of proposed mark from the Gould analysis. If anything, the terms appearing as they should in normal usage make it even more common. There is no logical basis upon which to conclude that Gould would have yielded a different result if the mark had been SCREEN WIPE rather than SCREENWIPE. Therefore, the Gould analysis applies under these circumstances.
  • Analysis of NANDRIVE as a generic mark.
    • In re Greenliant Systems, Ltd., Serial No. 78724139 (TTAB 2010)
      • It is clear from the evidence that the term NANDRIVE would be recognized as the combination of the words NAND and drive and that this would be readily apparent to any purchaser or prospective purchaser of applicant's goods. Therefore, the combination, or "telescoping," of the terms is immaterial to the issue before us and applicant's slightly misspelled version of the generic term NAND drive does not compel a different result. In re 3Com Corp., 56 USPQ2d 1060, (TTAB 2000) (the deletion of a space between the terms ATM and LINK does not transform the otherwise generic term into a trademark or change the commonly understood meaning of the term); Micro Motion Inc. v. Danfoss A/S, 49 USPQ2d 1628, 1631 (TTAB 1998) (the fact that MASSFLO is a telescoped, slightly misspelled version of "mass flow" does not transform a generic term into a trademark); In re Stanbel, Inc. 16 USPQ2d 1469 (TTAB 1990), aff'd without pub. op., 925 F.2d 1480, 20 USPQ2d 1319 (Fed.Cir. 1991) (where the record established that the term "ice pack" was a generic designation for a "nontoxic reusable ice substitute for use in food and beverage coolers," applicant's asserted mark ICE PAK was held generic and, therefore, unregistrable).
  • Case Finding: "electronic integrated circuits" encompass solid state flash memory drives and, as such, the category of goods at issue includes solid state flash memory drives.
    • In re Greenliant Systems, Ltd., Serial No. 78724139 (TTAB 2010)
      • Accordingly, we find that "electronic integrated circuits" encompass solid state flash memory drives and, as such, the category of goods at issue includes solid state flash memory drives. In other words, while the broad category of goods in the present case may be electronic integrated circuits, there is a narrower category of solid state flash drives within that broad category. See In re Wm. B. Coleman Co., 93 USPQ2d 2019 (TTAB 2010) (lighting fixtures is a generic term for electric candles); In re Reed Elsevier Properties, Inc., 77 USPQ2d at 1656 ("the genus of services is providing a web site with a database of information covering the identified topics of law, legal news and legal services and that includes information about lawyers and information from lawyers"); In re CyberFinancial.Net Inc., 65 USPQ2d 1789 (TTAB 2002) (BONDS.COM is generic for "providing information regarding financial products and services via a global computer network and providing electronic commerce services via a global computer network . with respect to taxable and tax exempt debt instruments" because the services encompass information about bonds); In re Web Communications, 49 USPQ2d 1478, 1479 (TTAB 1998) (consulting services include assisting customers in communications through the Internet)
  • Adding an entity designation such as "Company," "Inc." or "Partners" cannot transform a generic name into a trademark.
    • In re Wm. B. Coleman Co., Inc., Serial No. 77067861 (TTAB 2010)
      • Citing to several Board cases (In re Paint Products Co., 8 USPQ2d 1863 (TTAB 1988); In re Patent & Trademark Services Inc., 49 USPQ2d 1537 (TTAB 1998); In re Cell Therapeutics, Inc., 67 USPQ2d 1795), Professor McCarthy observes that: "Tacking a company organizational designation such as "Company," or "Inc." or "Partners" cannot transform a generic name into a protectable trademark. Such company designations or their abbreviations are themselves generic and have no trademark significance. Thus, one cannot append a generic company designation and magically transform a generic name for a product or service into a trademark, thereby giving a right to exclude others. Such composites cannot be trademarks. For example: "Color Television, Inc."; "Laptop Computers, Ltd."; or "Restaurant Food Services Company." In an early case, the U.S. Supreme Court held that adding designations such as "Company," "Corp.," or "Inc." does not add any trademark significance to a designation which does not otherwise qualify as a trademark:
        'The addition of the word "Company" only indicates that parties have formed an association or partnership to deal in such goods, either to produce or to sell them. Thus parties united to produce or sell wine, or to raise cotton or grain, might style themselves "Wine Company," "Cotton Company," or "Grain Company," but by such description they would in no respect impair the equal right of others engaged in similar business to use similar designations, for the obvious reason that all persons have a right to deal in such articles, and to publish the fact to the world. Names of such articles cannot be adopted as trade-marks, and be thereby appropriated to the exclusive right of any one; nor will the incorporation of a company in the name of an article of commerce, without other specification, create any exclusive right to the use of the name.'"
        2 J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition, §12:39 (4th ed. updated 2010), quoting, Goodyear's Rubber Mfg. Co. v. Goodyear Rubber Co., 128 US 598 (1888).
  • Discussion of cases where marks may not equate to the literal name of the goods or services for which registration is sought, but still be deemed to be generic or otherwise incapable of attaining source significance and thus unregistrable, even on the Supplemental register.
    • In re Wm. B. Coleman Co., Inc., Serial No. 77067861 (TTAB 2010)
      • As has been found in other cases, marks may not equate to the literal name of the goods or services for which registration is sought, but still be deemed to be "generic"2 or otherwise incapable of attaining source significance and thus unregistrable, even on the Supplemental register. See In re Boston Beer Co. Ltd. Partnership, 47 USPQ2d 1914 (TTAB 1998), aff'd, 198 F.3d 1370, 53 USPQ2d 1056 (Fed. Cir. 1999) (The Best Beer in America, although not the generic name of the goods, is such a commonly used laudatory phrase that it is incapable of registration as a trademark); see also Paint Products, 8 USPQ2d at 1866 ("[P]urchasers encountering the words 'PAINT PRODUCTS CO.' on the goods for which registration is sought would view those words not as a trademark, but in their ordinary dictionary sense; a company that sells paint products [and] because it describes the goods of any company selling such products, the phase should remain available for applicant's competitors"). FOOTNOTE 2 "For example, matter that names a central focus of a service or the goods to be sold in connection with a service is regarded as "generic." See, e.g., 1800Mattress.com, 92 USPQ2d at 1684 (MATTRESS.COM generic and unregistrable under Section 23(c) for "online retail store services in the field of mattresses, beds, and bedding"); In re Hotels.com, L.P., 91 USPQ2d 1532, 1537 (HOTELS.COM generic for "providing information for others about temporary lodging; ...making reservations and bookings for temporary lodging for others by means of ...global computer network"); In re Reed Elsevier Prop. Inc., 482 F.3d 1376, 82 USPQ2d 1378, 1380 (Fed. Cir. 2007) (LAWYERS.COM generic where lawyers were an "integral, if not the paramount, aspect" of the information services provided on the website); In re Eddie Z's Blinds and Drapery Inc., 74 USPQ2d at 1041-42 (generic terms for products equally generic for a retailer of such products); In re Candy Bouquet International Inc., 73 USPQ2d 1883, 1888 (TTAB 2004) ("[A] term which is generic for a particular class of goods is also deemed to be generic for the services of selling those goods."); In re Log Cabin Homes Ltd., 52 USPQ2d 1206, 1210 (TTAB 1999) (LOG CABIN HOMES generic for architectural design services directed to log cabins and retail outlets featuring log cabin construction kits); see also Clipper Cruise Line, Inc. v. Star Clippers, Inc., 952 F.2d 1046, 21 USPQ2d 1393, 1395 (8th Cir. 1992) (CLIPPER CRUISE LINE held generic for public sailing cruise services employing clipper-like ships)."
In re Greenliant Systems, Ltd., Serial No. 78724139 (TTAB 2010) In re Wm. B. Coleman Co., Inc., Serial No. 77067861 (TTAB 2010) In re Tires, Tires, Tires, Inc., Serial No. 77091459 (TTAB 2009) Green Spot (Thailand) Ltd. v. Vitasoy International Holdings Limited, Opposition No. 91165010, (TTAB 2008) In re Rosemount Inc., Serial Nos. 78180535 and 78180540 (TTAB 2008) In re Active Ankle Systems, Inc., Serial No. 78349181, (TTAB 2007) In re Lens.com, Inc., Serial No. 78076812, (TTAB 2007) In re The Council on Certification of Nurse Anesthetists, Serial No. 75722091, (TTAB 2007) In re America Online, Inc., Serial No. 75460305, (TTAB 2006) In re International Business Machines Corporation, Serial No. 75581859, (TTAB 2006) In re Rodale Inc., Serial No. 78369245, (TTAB 2006) In re The Outdoor Recreation Group, Serial No. 76570321, (TTAB 2006) Tea Board of India v. The Republic of Tea, Inc., Opposition No. 91118587, (TTAB 2006) In re DNI Holdings Ltd., Serial No. 76331011, (TTAB 2005) In re Eddie Z's Blinds and Drapery, Inc., Serial No. 76112441, (TTAB 2005) In re Reed Elsevier Properties Inc., Serial No. 75530795, (TTAB 2005) In re Candy Bouquet International, Inc., Serial No. 78058216, (TTAB 2004) Capital Project Management, Inc. v. IMDISI, Inc., Opposition No. 121,819, (TTAB 2003) In re Cell Therapeutics, Inc., Serial No. 75/313,795, (TTAB 2003) In re Cell Therapeutics, Inc., Serial No. 75/313,795, (TTAB 2003)  Jacob Zimmerman v. National Association of Realtors, Cancellation No. 92032360, (TTAB 2003) Nobelle.com, LLC v. Qwest Communications International, Inc., Cancellation No. 92030454, (TTAB 2003) In re American Institute of Certified Public Accountants, Serial No. 75/626,097, (TTAB 2002) In re CyberFinancial.Net, Inc., Serial No. 75/482,561, (TTAB 2002) In re Martin Container, Inc., Serial No. 75/553,426, (TTAB 2002) In re The American Academy of Facial Plastic and Reconstructive Surgery, Serial No. 75/215,519, (TTAB 2002) In re A La Vieille Russie, Inc., Serial No. 75/609,153, (TTAB 2001) In re Dial A Mattress Operating Corporation, Serial No. 75/131,355, (TTAB 1999) In re Log Cabin Homes, Ltd., Serial No. 74/682,845, (TTAB 1998) Grand Total
In re Wm. B. Coleman Co., 93 USPQ2d 2019 (TTAB 2010) 1
In re Hotels.com, 573 F.3d 1300, 91 USPQ2d 1532 (Fed. Cir. 2009) 2
In re 1800Mattress.com IP, LLC, 586 F.3d 1359, 92 USPQ2d 1682 (Fed. Cir. 2009) 1
In re Litehouse Inc., 82 USPQ2d 1471 (TTAB 2007) 1
In re Active Ankle Systems Inc., 83 USPQ2d 1532 (TTAB 2007) 2
In re Reed Elsevier Properties Inc., 482 F.3d 1376, 82 USPQ2d 1378 (Fed. Cir. 2007) 2
In re American Online Inc., 77 USPQ2d 1618 (TTAB 2006) 1
In re Rodale Inc., 80 USPQ2d 1696 (TTAB 2006) 1
In re Outdoor Recreation Group, 81 USPQ2d 1392 (TTAB 2006) 1
In re Eddie Z's Blinds and Drapery Inc., 74 USPQ2d 1037 (TTAB 2005) 3
In re First Draft Inc., 76 USPQ2d 1183 (TTAB 2005) 1
In re Steelbuilding.com, 415 F.3d 1293, 75 USPQ2d 1420 (Fed. Cir. 2005) 3
In re Reed Elsevier Properties, Inc., 77 USPQ2d 1649 (TTAB 2005) 1
In re Stereotaxis Inc., 429 F.3d 1039, 77 USPQ2d 1087 (Fed. Cir. 2005) 2
In re Candy Bouquet International Inc., 73 USPQ2d 1883 (TTAB 2004) 3
In re Oppedahl & Larson LLP, 373 F.3d 1171, 71 USPQ2d 1370 (Fed. Cir. 2004) 3
In re Planalytics Inc., 70 USPQ2d 1453 (TTAB 2004) 1
Capital Project Management Inc. v. IMDISI Inc., 70 USPQ2d 1172 (TTAB 2003) 1
In re American Institute of Certified Public Accountants, 65 USPQ2d 1972 (TTAB 2003) 2
In re Cell Therapeutics Inc., 67 USPQ2d 1795 (TTAB 2003) 1
CyberFinancial.Net Inc., 65 USPQ2d 1789 (TTAB 2002) 1
In re CyberFinancial.Net Inc., 65 USPQ2d 1789 (TTAB 2002) 3
In re Fitch IBCA Inc., 64 USPQ2d 1058 (TTAB 2002) 1
In re Martin Container Inc., 65 USPQ2d 1058 (TTAB 2002) 3
555-1212.com Inc. v. Communication House International Inc., 157 F.Supp2d 1084, 59 USPQ2d 1453 (N.D. Cal. 2001) 2
In re A La Vieille Russie Inc., 60 USPQ2d 1895 (TTAB 2001) 6
In re Best Software Inc., 58 USPQ2d 1314 (TTAB 2001) 1
Nissan Motor Co. v. Nissan Computer Corp., 204 F.R.D. 460 (C.D. Cal. 2001) 1
In re Dial A Mattress Operating Corp., 240 F.3d 1341, 57 USPQ2d 1807 (Fed. Cir. 2001) 12
In re Nett Designs Inc., 236 F.3d 1339, 957 USPQ2d 1564 (Fed. Cir. 2001) 4
In re Dial-A-Mattress Operating Corp., 240 F.3d 1341, 57 USPQ2d 1807 (Fed. Cir. 2001) 1
Continental Airlines Inc. v. United Air Lines Inc., 53 USPQ2d 1385 (TTAB 1999) 1
Image Online Design Inc. v. Core Association, 120 F.Supp2d 870 (C.D. Cal. 2000) 1
In re Styleclick.com Inc., 57 USPQ2d 1445 (TTAB 2000) 1
In re 3Com Corp., 56 USPQ2d 1060 (TTAB 2000) 1
America Online Inc. v. AT & T Corp., 51 USPQ2d 1865 (E.D. Va. 1999) 1
Brookfield Communications Inc. v. West Coast Entertainment Corp., 174 F.3d 1036, 50 USPQ2d 1545 (9th Cir. 1999) 1
Continental Airlines Inc. v. United Air Lines Inc., 53 USPQ2d 1385 (TTAB 1999) 5
In re American Fertility Society, 188 F.3d 1341, 51 USPQ2d 1832 (Fed. Cir. 1999) 14
In re Boston Beer Co. L.P, 198 F.3d 1370, 53 USPQ2d 1056 (Fed. Cir. 1999) 3
In re Log Cabin Homes Ltd., 52 USPQ2d 1206 (TTAB 1999) 7
In re The American Fertility Society, 188 F.3d 1341, 51 USPQ2d 1832 (Fed. Cir. 1999) 1
800 Spirits Inc. v. Liquor By Wire Inc., 14 F.Supp.2d 675 (D.N.J. 1998) 1
In re Central Sprinkler Co., 49 USPQ2d 1194 (TTAB 1998) 1
In re Controls Corp. of America, 46 USPQ2d 1308 (TTAB 1998) 1
In re Patent & Trademark Services Inc., 49 USPQ2d 1537 (TTAB 1998) 1
In re Web Communications, 49 USPQ2d 1478 (TTAB 1998) 7
Micro Motion Inc. v. Danfoss A/S, 49 USPQ2d 1628 (TTAB 1998) 1
Genesee Brewing Co. v. Stroh Brewing Co., 124 F.3d 137, 43 USPQ2d 1734 (2d Cir. 1997) 1
In re Recorded Books Inc., 42 USPQ2d 1275 (TTAB 1997) 2
Stocker v. General Conference Corp. of Seventh-day Adventists, 39 USPQ2d 1385 (TTAB 1996) 1
BellSouth Corp. v. DataNational Corp., 60 F.3d 1565, 35 USPQ2d 1554 (Fed. Cir. 1995) 1
In re K-T Zoe Furniture Inc., 16 F.3d 390, 29 USPQ2d 1787 (Fed. Cir. 1994) 2
In re Leatherman Tool Group Inc., 32 USPQ2d 1443 (TTAB 1994) 2
In re Vehicle Information Network Inc., 32 USPQ2d 1542 (TTAB 1994) 1
In re Waverly Inc., 27 USPQ2d 1620 (TTAB 1993) 3
Martahus v. Video Duplication Services Inc., 3 F.3d 417, 27 USPQ2d 1846 (Fed. Cir. 1993) 1
Dranoff-Perlstein Associates v. Sklar, 23 USPQ2d 1174 (3d Cir. 1992) 1
In re Disc Jockeys Inc., 23 USPQ2d 1715 (TTAB 1992) 1
In re Women's Publishing Co. Inc., 23 USPQ2d 1876 (TTAB 1992) 5
Perma Ceram Enterprises Inc. v. Preco Industries Ltd., 23 UPSQ2d 1134 (TTAB 1992) 1
Clipper Cruise Line, Inc. v. Star Clippers, Inc., 952 F.2d 1046, 21 USPQ2d 1393 (8th Cir. 1992) 1
In Dena Corp. v. Belvedere International Inc., 950 F.2d 1555, 21 USPQ2d 1047 (Fed. Cir. 1991) 1
In re Reckitt & Colman, North America Inc., 18 USPQ2d 1389 (TTAB 1991) 1
In re Stanbel Inc., 16 USPQ2d 1469 (TTAB 1990), aff'd 20 USPQ2d 1319 (Fed. Cir. 1991) 2
Magic Wand Inc. v. RDB Inc., 940 F.2d 638, 19 USPQ2d 1551 (Fed. Cir. 1991) 12
Midwest Plastic Fabricators Inc. v. Underwriters Laboratories Inc., 12 USPQ2d 1267 (TTAB 1989), aff'd, 906 F.2d 1568 (Fed. Cir. 1990) 1
Remington Products Inc. v. North American Philips Corp., 892 F.2d 1576, 13 USPQ2d 1444 (Fed. Cir. 1990) 1
Dial-A-Mattress Franchise Corp. v. Page, 880 F.2d 675, 11 USPQ2d 1644 (2d Cir. 1989) 1
Gear Inc. v. L.A. Gear California Inc., 670 F.Supp. 508, 4 USPQ2d 1192, 1197 (S.D.N.Y. 1987), vacated in part, dismissed, 13 USPQ2d 1655 (S.D.N.Y. 1989) 1
In re Analog Devices Inc., 6 USPQ2d 1808, 1810 (TTAB 1988), aff'd 871 F.2d 1097, 10 USPQ2d 1879 (Fed. Cir. 1989) 5
In re Consolidated Cigar Corp., 13 USPQ2d 1481 (TTAB 1989) 1
In re Montrachet S.A., 878 F.2d 375, 11 USPQ 1393 (Fed. Cir. 1989) 3
Murrin v. Midco Communications Inc., 726 F. Supp. 1195, 13 USPQ2d 1815 (D. Minn. 1989) 1
In re Paint Products Co., 8 USPQ2d 1863 (TTAB 1988) 6
Yamaha Int'l Corp. v. Hoshino Gakki Co. Ltd., 840 F.2d 1572, 6 USPQ2d 1001 (Fed. Cir. 1988) 2
Christian Science Board of Directors v. Evans, 105 N.J. 297, 520 A.2d 1347, 2 USPQ2d 1093 (N.J.S.Ct. 1987) 1
In re Bonni Keller Collections Ltd., 6 USPQ2d 1224 (TTAB 1987) 3
In re Gould Paper Corp., 834 F.2d 1017, 5 USPQ2d 1110 (Fed. Cir. 1987) 12
In re Gyulay, 820 F.2d 1216, 3 USPQ2d 1009 (Fed. Cir. 1987) 1
In re Hubbard Milling Co., 6 USPQ2d 1239 (TTAB 1987) 2
In re Merrill Lynch, Pierce, Fenner & Smith Inc., 828 F.2d 1567, 4 USPQ2d 1141 (Fed. Cir. 1987) 17
Sweats Fashions Inc. v. Pannill Knitting Co. Inc., 833 F.2d 1560, 4 USPQ2d 1793 (Fed. Cir. 1987) 1
In re Appetito Provisions Co., 3 USPQ2d 1553 (TTAB 1987) 1
A.J. Canfield Co. v. Honickman, 808 F.2d 291, 1 USPQ2d 1364 (3d Cir. 1986) 1
H. Marvin Ginn Corp. v. Int'l Ass'n of Fire Chiefs Inc., 782 F.2d 987, 228 USPQ 528 (Fed. Cir. 1986) 23
In re Men's International Professional Tennis Council, 1 USPQ2d 1917 (TTAB 1986) 1
In re Oriental Daily News, Inc., 230 USPQ 637 (TTAB 1986) 1
In re Northland Aluminum Products, 777 F.2d 1556, 227 USPQ 961 (Fed. Cir. 1985) 16
In re Wickerware Inc., 227 USPQ 970 (TTAB 1985) 2
In re BOC Group Inc., 223 USPQ 462 (TTAB 1984) 1
In re Chopper Industries, 222 USPQ 258 (TTAB 1984) 1
In re E.I. Kane Inc., 221 USPQ 1203 (TTAB 1984) 3
In re Half Price Books, Records, Magazines, Incorporated, 225 USPQ 219 (TTAB 1984) 4
In re Harcourt Brace Jovanovich Inc., 222 USPQ 820 (TTAB 1984) 3
In re Packaging Specialists Inc., 221 USPQ 917 (TTAB 1984) 1
In re R. M. Smith Inc., 734 F.2d 1482, 222 USPQ 1 (Fed. Cir. 1984) 1
In re The Phone Company Inc., 218 USPQ 1027 (TTAB 1983) 1
In re National Shooting Sports Foundation Inc., 219 USPQ 1019 (TTAB 1983) 2
In re Teledyne Indus. Inc., 696 F.2d 986, 217 USPQ 9, (Fed. Cir. 1982) 1
In re Quik- Print Copy Shop Inc., 616 F.2d 523, 205 USPQ 505 (CCPA 1980) 1
Keebler Co. v. Rovira Biscuit Corp., 624 F.2d 366, 374, 207 USPQ 465 (1st Cir. 1980) 1
Reese Publishing v. Hampton International Communication, 620 F.2d 7, 205 USPQ 585 (2d Cir. 1980) 1
Dan Robbins & Associates Inc. v. Questor Corporation, 599 F.2d 1009, 202 USPQ 100 (CCPA 1979) 1
In re Datatime Corporation, 203 USPQ 878 (TTAB 1979) 1
Surgicenters of America Inc. v. Medical Dental Surgeries, Co., 601 F.2d 1011, 202 USPQ 401 (9th Cir. 1979)  1
In re Abcor Development Corp., 588 F.2d 811, 200 USPQ 215 (CCPA 1978) 1
In re Orleans Wines, Ltd., 196 USPQ 516 (TTAB 1977) 1
Southwire Co. v. Kaiser Aluminum 7 Chemical Corp., 196 USPQ 566 (TTAB 1977) 1
Abercrombie & Fitch Co. v. Hunting World Inc., 537 F.2d 4, 189 USPQ 759 (2d Cir. 1976) 3
In re Richardson Ink Co., 511 F.2d 559, 185 USPQ 46 (CCPA 1975) 2
Intel Corp. v. Radiation Inc., 184 USPQ 54 (TTAB 1974) 1
In re Allen Electric and Equipment Co., 458 F.2d 1404, 173 USPQ 689 (CCPA 1972) 3
In re Perkin-Elmer Corp., 174 USPQ 57 (TTAB 1972) 1
In re Sun Oil Co., 426 F.2d 401, 165 USPQ 718 (CCPA 1970) 3
In re Helena Rubinstein Inc., 410 F.2d 438, 161 USPQ 606 (CCPA 1969) 1
In re Colonial Stores Inc., 394 F.3d 549, 157 USPQ 382 (CCPA 1968) 1
In re Initial Teaching Alphabet Publications Inc., 153 USPQ 684 (TTAB 1967) 1
In re Wyandotte Chemicals Corporation, 155 USPQ 100 (TTAB 1967) 1
King-Seeley Thermos Co. v. Aladdin Industries, 321 F.2d 577, 138 USPQ 349 (2d Cir. 1963) 1
Roselux Chemical Co. v. Parsons Ammonia Co., 299 F.2d 855, 132 USPQ 627 (CCPA 1962) 2
DeWalt Inc. v. Magna Power Tool Corp. 289 F.2d 656, 129 USPQ 275 (CCPA 1961 1
Blisscraft of Hollywood v. United Plastics Co., 294 F.2d 694, 131 USPQ 55 (2d Cir. 1961) 1
Modern Optics Inc. v. Univis Lens Co., 234 F.2d 504, 110 USPQ 293 (CCPA 1956) 1
Bayer Co. v. United Drug Co., 272 F 505 (SDNY 1921) 1
Estate of P.D. Beckwith Inc. v. Commissioner, 252 U.S. 538, 543 (1920) 1
Goodyear's India Rubber Glove Mfg. Co. v. Goodyear Rubber Co., 128 US 598 (1888) 2
Grand Total 20 27 15 1 10 10 16 7 2 15 4 9 7 17 13 17 14 9 6 2 9 10 3 20 4 20 10 13 3 313

Sec. 1064. Cancellation of registration

A petition to cancel a registration of a mark, stating the grounds relied upon, may, upon payment of the prescribed fee, be filed as follows by any person who believes that he is or will be damaged, including as a result of a likelihood of dilution by blurring or dilution by tarnishment under section 1125(c) of this title, by the registration of a mark on the principal register established by this chapter, or under the Act of March 3, 1881, or the Act of February 20, 1905:
    1. (1) Within five years from the date of the registration of the mark under this chapter.
    2. (2) Within five years from the date of publication under section 1062(c) of this title of a mark registered under the Act of March 3, 1881, or the Act of February 20, 1905.
    3. (3) At any time if the registered mark becomes the generic name for the goods or services, or a portion thereof, for which it is registered, or is functional, or has been abandoned, or its registration was obtained fraudulently or contrary to the provisions of section 1054 of this title or of subsection (a), (b), or (c) of section 1052 of this title for a registration under this chapter, or contrary to similar prohibitory provisions of such prior Acts for a registration under such Acts, or if the registered mark is being used by, or with the permission of, the registrant so as to misrepresent the source of the goods or services on or in connection with which the mark is used. If the registered mark becomes the generic name for less than all of the goods or services for which it is registered, a petition to cancel the registration for only those goods or services may be filed. A registered mark shall not be deemed to be the generic name of goods or services solely because such mark is also used as a name of or to identify a unique product or service. The primary significance of the registered mark to the relevant public rather than purchaser motivation shall be the test for determining whether the registered mark has become the generic name of goods or services on or in connection with which it has been used.
    4. (4) At any time if the mark is registered under the Act of March 3, 1881, or the Act of February 20, 1905, and has not been published under the provisions of subsection (c) of section 1062 of this title.
    5. (5) At any time in the case of a certification mark on the ground that the registrant (A) does not control, or is not able legitimately to exercise control over, the use of such mark, or (B) engages in the production or marketing of any goods or services to which the certification mark is applied, or (C) permits the use of the certification mark for purposes other than to certify, or (D) discriminately refuses to certify or to continue to certify the goods or services of any person who maintains the standards or conditions which such mark certifies:
Provided, That the Federal Trade Commission may apply to cancel on the grounds specified in paragraphs (3) and (5) of this section any mark registered on the principal register established by this chapter, and the prescribed fee shall not be required. Nothing in paragraph (5) shall be deemed to prohibit the registrant from using its certification mark in advertising or promoting recognition of the certification program or of the goods or services meeting the certification standards of the registrant. Such uses of the certification mark shall not be grounds for cancellation under paragraph (5), so long as the registrant does not itself produce, manufacture, or sell any of the certified goods or services to which its identical certification mark is applied.

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