Friday, October 24, 2014

Test Your TTAB Judge-Ability: Which Of These 4 Section 2(d) Refusals Was Reversed?

I once heard a TTAB judge state that the outcomes of most Section 2(d) likelihood of confusion cases can be predicted just by looking at the marks and the identified goods/services, without more. Try your adjudicatory skills on these four recently-decided appeals, keeping in mind that, by my estimate, about 85% of Section 2(d) refusals are affirmed by the Board. [Answer in first comment].

In re Flatiron Partners, LLC, Serial No. 85699903 (October 22, 2014) [not precedential]. [Section 2(d) refusal to register FLATIRON PARTNERS for "managing hedge fund portfolios directed to high wealth, sophisticated individual investors and to sophisticated non-hedge fund corporate entities" in view of the registered mark FLATIRON CAPITAL (standard characters) for"financing and loan services"].

In re Tezio LLC, Serial No. 85769474 (October 22, 2014) [not precedential]. [Refusal to register LOLA for "plastic containers for organizing and storing cosmetic" in view of the registered mark CHARLIE & LOLA and Design for, inter alia, "containers for household and kitchen use"].

In re Citizens Disability, LLC, Serial No. 85887875 (October 22, 2014) [not precedential]. [Refusal to register CITIZENS DISABILITY HELPLINE for "Counseling and assisting others in obtaining medical or disability related benefits, namely, Social Security Disability and Supplemental Security Income benefits" and for "Representing others in obtaining medical or disability related benefits, namely Social Security Disability and Supplemental Security Income benefits" [DISABILITY HELPLINE disclaimed] in view of the mark DISABILITY HELPLINE, registered on the Supplemental Register for "Advertising services; Attorney referrals, namely, forwarding inquiries by potential clients to social security lawyers and advocates"].

In re Mannatech, Incorporated, Serial No. 85558774 (October 22, 2014) [not precedential]. [Section 2(d) refusal to register NUTRIVERUS for dietary and nutritional supplements, on the ground of likelihood of confusion with the registered mark NU VERUS & Design (in the colors shown below) for "liquid nutritional supplement; nutritional supplements; vitamin and mineral supplements"].

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TTABlog Comment: See any WYHAs here?

Text Copyright John L. Welch 2014.

Thursday, October 23, 2014

TTAB TEST: Is "BLENDS" Merely Descriptive of Wine Marketing Services?

The USPTO refused registration of the marks BLENDS and BLENDS, INC., in standard character form, for "marketing, advertising and promoting the sale of wine." The word "blends" is descriptive of wine, but does it describe applicant's services? Applicant contended that "blends" has many different meanings. How do you think this came out? In re Ren Acquisition, Inc., Serial Nos. 85787527 and 85787531 (October 3, 2014) [not precedential].

The evidence showed that the term "blend" is used to identify wine made from two or more varieties of grapes. Applicant maintained that "blends" is not descriptive of marketing, selling and promoting wines. It asserted that the PTO's evidence dealt with wine as a product, or with the act of selling wine, but not with marketing services: "Marketing, advertising, and promoting the 'sale' of wine is considerably different than the act of selling wine or producing wine."

The Board found that "the word 'Blends' describes the products that Applicant is marketing, advertising and/or promoting and, as such, it should remain available to any company rendering these services."

Applicant argued that when used in connection with marketing services, the word "blends" could refer to many things, not just wine. However, as the Board has repeatedly pointed out, "the determination of whether a mark is merely descriptive is not considered in the abstract but in connection with the services at issue." Applicant itself stated that it could market, advertise, and promote blended wines. The fact that "blends" may have different meanings in other contexts is simply irrelevant. [Applicant's out-of-context argument is, in my view, one of the Top Ten Losing TTAB Arguments].

And so the Board affirmed both refusals.

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TTABlog comment: Was this a WYHA?

Text Copyright John L. Welch 2014.

Wednesday, October 22, 2014

Test Your TTAB Judge-Ability on these Four Mere Descriptiveness Appeals

Here are four recent appeals from mere descriptiveness refusals under Section 2(e)(1). Let's see how you do with them, keeping in mind that, by my estimation, the Board affirms more than 80% of these refusals. [Answers in first comment].

In re Starkist Co,, Serial No. 85765644 (September 23, 2014) [not precedential]. [Mere descriptiveness refusal of INTERNATIONAL SELECTS for "seafood"].

In re Internet Promise Group LLC, Serial No. 85637772 (October 9, 2014) [not precedential]. [Mere descriptiveness refusal of STEP BREATHING for "Instructing others in a specific breathing technique, specifically, instructions in successive short inhalation and holding breath steps and then exhalation to enhance life force energy in the human body as part of teaching Yoga practice"].

In re Birds Eye Foods LLC, Serial Nos. 85729804 and 85729823 (October 14, 2014) [not precedential]. [Mere descriptiveness refusal of SAVORY SKILLETS and requirement for disclaimer of SAVORY SKILLETS in the mark BIRDS EYE SAVORY SKILLETS, both for frozen entrees].

In re DM CTW, LLC, Serial No. 85746575 (October 16, 2014) [not precedential]. [Mere descriptiveness refusal of THE BEST APP TO DATE for "Downloadable software applications for mobile telecommunications devices and handheld computing devices for organizing personal relationships and dating, for providing coupons, rebates, discounts, vouchers or special offerings on goods and services from participating merchants and for receiving information on events, activities and attractions"].

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TTABlog note: See any WYHAs here?

Text Copyright John L. Welch 2014.

Tuesday, October 21, 2014

TTAB TEST: Are AirREX and AIRTECH Confusable for Vehicle Suspension Springs?

Turkish company Aktas opposed Taiwan's Pin Hsiu Rubber's application to register the mark AirREX in the design form shown below, for, inter alia, "air springs for vehicle suspension components for cushioning driver's seats and cabs," claiming a likelihood of confusion with its registered mark AIRTECH for "air springs for vehicle suspension and for cushioning driver's seats and cabs." The Board found the goods to be, in part, legally identical. But what about the marks? Isn't AIR a rather weak formative in this field? How do you think this came out? Aktas Hava Suspansiyon Sistemleri Sanayi Ve Ticaret AS v. Pin Hsiu Rubber Co., Ltd., Opposition No. 91204375 (September 26, 2014) [not precedential].

Applicant pointed to ten prior registration for AIR-containing marks for goods related to vehicle suspension - AIR LIFT, AIR RUNNER, AZ AIR-ZENITH, AIRCRUSE, SIMILAIR, AIRPOD, AIRPLOW, AIRHAWK, AIR FORCE, and AIR CHASSIS - but it provided no direct evidence of actual use of these marks. With that lack of proof, the Board could not conclude that the field is so crowded with AIR-formative marks that consumers would distinguish the two marks in question based on small differences in the marks. In other words, the Board could not make any conclusion as to the commercial strength of opposer's mark.

However, as to the conceptual strength of opposer's mark, the third-party registrations, along with the dictionary definition of "air," led the Board to the conclusion that the word AIR "certainly has suggestive significance with respect to both Opposer's, Applicant's, and these third-party goods, namely suspension, cushioning, and wind-protection devices." The third-party registrations "serve as a reference source (much like a dictionary) for the usual connotation of the word 'Air' with respect to the goods in this field."

Because the word "Air" has suggestive significance and the word "Tech" is also suggestive ("of the level of technology incorporated into Opposer's suspension and cushioning components"), opposer's mark is not a strong one. Moreover, "Air" cannot be considered the dominant portion of AIRTECH.

The Board found that, visually and orally, the dissimilarities in the marks outweigh the differences. More importantly, the connotations are quite different. The parties "seem to agree" that applicant's mark connotes "king of the air," or something like that, whereas AIRTECH connotes air springs employing the latest technology.

In view of the relative weakness of opposer's mark, the Board concluded that the dissimilarity of the marks was the decisive factor.

And so the Board dismissed the opposition.

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TTABlog note: Well, what do you think?

Text Copyright John L. Welch 2014.

Monday, October 20, 2014

Cheryl S. Goodman Appointed as TTAB Judge

The USPTO has announced the selection of Cheryl S. Goodman as an Administrative Trademark Judge at the Trademark Trial and Appeal Board:

  • Cheryl Goodman has been an Interlocutory Attorney for the TTAB for over fourteen years. Her tenure as an Interlocutory Attorney included a six-month detail with the Office of the USPTO Solicitor, yielding Ms. Goodman additional insight into the USPTO’s interaction with the Court of Appeals for the Federal Circuit and the U.S. District Courts, which handle appeals seeking review of TTAB decisions. Before joining the TTAB as an Interlocutory Attorney, Ms. Goodman served the USPTO for more than five years as an Attorney-Advisor in the USPTO’s Trademark Examining Operation. During her tenure as an Examining Attorney, Ms. Goodman completed a work detail as a Staff Attorney at the Department of Commerce, assisting the Department in its preparation of a voluminous response to a Freedom of Information Act request on the Department’s trade missions.

    Ms. Goodman began her lifelong commitment to public service as a Trial Attorney in the Department of the Treasury’s Office of Thrift Supervision. A Magna Cum Laude graduate of the Florida State College of Law, Ms. Goodman earned her bachelor’s degree, Cum Laude, from the University of Illinois.

The complete roster of TTAB judges, now numbering 23, may be found here.

Test Your TTAB Judge-Ability On These Four Section 2(d) Appeals

I once heard a TTAB judge state that the outcomes of most Section 2(d) likelihood of confusion cases can be predicted just by looking at the marks and the identified goods/services, without more. Try your adjudicatory skills on these four appeals, keeping in mind that, by my estimate, about 85% of Section 2(d) refusals are affirmed by the Board.

In re Holland & Hart LLP, Serial No. 85709248 (October 16, 2014) [not precedential]. [Refusal to register BEYOND THE OBVIOUS for legal services, in view of the registered mark THINKING BEYOND THE OBVIOUS for business consultation services].

In re Joy Industrial Co., Ltd., Serial No. 85677182 (October 16, 2014) [not precedential]. [Refusal to register N NOVATEK & Design for bicycles and bicycle and motorcycle parts and accessories, in view of the registered mark NOVATECK for "tires, pneumatic, semi-pneumatic and solid tires for vehicle wheels, wheels for vehicles, inner tubes, wheel rims, and structural parts for all the aforesaid goods"].

In re Cardeologie, Inc., Serial No. 85826725 (October 16, 2014) [not precedential]. [Refusal to register CARDEOLOGIE for greeting cards, invitation cards, notecards, postcards, etc., and for related retail store services, in view of the registered mark CARDOLOGISTS for, inter alia, greeting cards and invitation cards]. 

In re The Rock Creek Group, LP, Serial No. 85595470 (October 6, 2014) [not precedential]. [Refusal to register THE ROCK CREEK GROUP for, inter alia, "individualized and personalized financial services provided to institutional investors, namely, sovereign wealth funds, state and local pension plans, multinational corporations, foundations and endowments," in view of the registered marks ROCK CREEK PROPERTY GROUP, LLC, in standard character and design form, for "real estate investment, management, and brokerage services" [PROPERTY GROUP, LLC disclaimed]].

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TTABlog Big Hint: They all came out the same way. See any WYHA's here?

Text Copyright John L. Welch 2014.

Friday, October 17, 2014

TTAB Finds ARCATA Not Primarily Geographically Deceptively Misdescriptive of Wine

The Board reversed a Section 2(e)(3) refusal of ARCATA for wine, finding the mark not primarily geographically deceptively midescriptive of the goods. The evidence established that Arcata is a city in California that is neither obscure nor remote, and is the locus of several wineries. The question was whether "a consumer's misimpression that Applicant's goods originate in Arcata would be a material factor in his or her decision to purchase the goods." In re D’Andrea Family Limited Partnership, Serial No. 85834204 (October 15, 2014) [not precedential].

A mark is primarily geographically deceptively misdescriptive if:

(1) the primary significance of the mark is a generally known geographic location;

(2) the consuming public is likely to believe the place identified indicates the origin of the goods, when in fact the goods do not come from that place; and

(3) the misrepresentation would be a material factor in a consumer's decision to purchase the goods.

Here, the key issue was the third one: materiality. In order to establish materiality, the USPTO must show that "a substantial portion of the relevant consumers would be materially influenced in the decision to purchase the product or service by the geographic meaning of the mark."

Reviewing relevant precedents, the Board considered whether the PTO has shown "that Arcata is 'noted for' wine; that wine is a 'principal product' of Arcata; that wine is a product 'traditionally originating' in Arcada; or that for, any other reason, a substantial portion of customers for wine would be materially influenced in the decision to purchase wine by a misrepresentation that the goods originate in Arcata."

Arcata is a city of 16,000 persons, located in Humboldt County in Northwestern California. It is a college town, the home of Humboldt State University. For many years, timber dominated the economy; today a cannabis economy employs many in the area.

The Examining Attorney contended that Humboldt County is known for its distinctive wine, and that the characteristics of Humboldt County wine would be attributed to wines from Arcata. The Board observed, however, that the evidence did not support the Examining Attorney's argument. Humboldt County is not known for its wine; at most it has one viticultural area where a few dozen wineries are struggling for recognition. The three wineries located in Arcata obtain their grapes from other places. Customers would therefore not be induced to purchase applicant's wine in the belief that it was made with grapes grown in Arcata.

The Board declined to decide whether the name "Humboldt" would induce consumers to purchase wine. But the fact that Arcata is located in Humboldt County "is insufficient to persuade us that the name ARCATA would induce customers to purchase wine."

Having carefully reviewed the record, we see no indication that Arcata is "noted for" wine, that wine is a "principal product" of Arcata, or that wine is a product that customers perceive as “traditionally originating” in Arcata. Arcata does not appear to be a suitable place for growing wine grapes. Although there are three wineries located in Arcata, they acknowledge to the market (or the marketplace takes note) that their wine is made from grapes that are grown elsewhere. Although Arcata is located in Humboldt County, a place with a developing viticultural industry, Arcata itself is known as a university town.

And so the Board reversed the refusal.

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TTABlog comment: For a through discussion of Section 2(e)(3), see Anne Gilson LaLonde's article entitle "You Are Not Going to Believe This! Deception, Misdescription and Materiality in Trademark Law," 102 TMR 883 (May-June 2012) [pdf here].

Text Copyright John L. Welch 2014.

Thursday, October 16, 2014

LA BOMBA and LA BAMBA Confusable for Cigars, Says TTAB

The Board affirmed a refusal to register the mark LA BOMBA, finding it likely to cause confusion with the registered mark LA BAMBA (Stylized), both for cigars. The Board took judicial notice of certain information from the Encyclopedia Britannica regarding "LA BAMBA" as the title of a Ritchie Valens song, but refused to do so with regarding to applicant's proffered entries from Wikipedia and from the Internet Movie Database (IMDb). In re Espinosa Cigars, LLC Serial No. 85772938 (October 3, 2014) [not precedential].

In its appeal brief, applicant asked the Board to take judicial notice of three references to the song "La Bamba," a traditional Mexican wedding song re-worked by Richie Valens into his "best remembered recording." As mentioned, the Board agreed to take judicial notice with regard to the Encyclopedia Brittanica entry. However, applicant did not establish that the IMDb is a standard reference worth or otherwise considered authoritative. As to the Wikipedia entry, that would have been acceptable had applicant offered it into the record at a time when the other party had an opportunity to rebut the evidence.

Ritchie Valens

Because the goods are identical, the Board presumed that they travel in the same, normal channels of trade to the same classes of consumers. Applicant argued that the relevant purchasers are "the most discriminating consumers" but offered no evidence to support that assertion. The Board observed that cigars "are not so expensive that we can assume consumers would necessarily exercise a higher level of care in purchasing."

The Board found the marks to be "extremely similar in sound and appearance." The stylization of the cited mark was of little significance, since the Board must assume that the applied-for mark could be depicted in the same stylization. As to pronunciation, there is no correct pronunciation of trademarks that are not easily recognizable English works. The two marks at issue would be verbalized in a similar manner.

Applicant maintained that the marks are distinguishable because of their different meanings. As translated from the Spanish. LA BOMBA means "the bomb." The Encyclopedia entry, as mentioned above, showed that LA BAMBA was a traditional Mexican wedding song that was popularized by Ritchie Valens decades ago. The Board was not impressed:

Although Spanish is commonly spoken language in the United States, this does not mean that cigar purchasers, or even a substantial composite of the consuming public, will understand the difference and distinguish the two marks based on their translated meanings. We keep in mind that the spellings of the two marks do not differ greatly and it is thus possible that a purchaser, who is unfamiliar with their Spanish meanings or who inadvertently does not notice the "O/A" letter difference, may mistakenly believe that Applicant’s mark is a reference to the Mexican folk song (or rock-and-roll song). Again, we must consider the possibility of word of mouth referrals such that, given the faint, if any, aural difference in the marks pronunciations, there may be confusion even if the connotations of the actual marks are different.

And so the Board affirmed the refusal.

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TTABlog comment: Rock on!

Text Copyright John L. Welch 2014.

Wednesday, October 15, 2014

Test Your TTAB Judge-Ability: Is KETOSIS ESSENTIALS Merely Descriptive of Nutritional Supplements?

The USPTO refused registration of the mark KETOSIS ESSENTIALS, deeming it merely descriptive of nutritional supplements [KETOSIS disclaimed], under Section 2(e)(1). The examining attorney asserted that the constituent words describe the goods, and that the combination adds no new meaning. Applicant pointed out that it owns ten existing registrations for marks containing the word ESSENTIALS for nutritional supplements. How do you think this came out? In re Healthy Directions, LLC, Serial No. 85485512 (September 23, 2014) [not precedential].

Ketosis is a condition characterized by an elevated concentration of ketone bodies in the body's tissues and fluids, and is often a complication of diabetes. Applicant, by its disclaimer, acknowledged that KETOSIS is descriptive of the goods.

The examining attorney provided dictionary definitions of "essential," as well as nine third-party registrations for ESSENTIALS-formative marks and one ESSENTIAL-FORMATIVE mark, either on the Supplemental Register or with a disclaimer of ESSENTIALS, all for supplements.

The Trademark Examining Attorney argues that inasmuch as Applicant is providing supplements that contain essential vitamins, minerals and/or other nutrients for individuals dealing with elevated ketone levels, or ketosis, no imagination is required to understand the nature of the goods, and hence, the mark is merely descriptive.

Applicant's ten registered marks included JOINT ESSENTIALS [JOINT disclaimed], CRANBERRY ESSENTIALS [CRANBERRY disclaimed], and CHOLESTEROL ESSENTIALS [CHOLESTEROL disclaimed]. It argued that its ten registrations were more probative than those cited by the examining attorney because its marks were in the same form as the applied-for mark.

The Board noted that one dictionary definition of "essential," in adjectival form, referred to a substance that is not synthesized by the body in a quantity sufficient for normal health and growth
(e.g., essential amino acids). But it observed that when the word "essential" is used as a plural noun and as the second component of KETOSIS ESSENTIALS, "the information conveyed is not so immediate."

The registrations made of record indicated that the USPTO has not been consistent in its treatment of the word "essentials" for vitamins and supplements. Having a "not insignificant level of residual doubt" regarding the descriptiveness of the applied-for mark, the Board resolved that doubt in favor of applicant, and it reversed the refusal to register.

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Text Copyright John L. Welch 2014.

Friday, October 10, 2014

TTAB Reverses Refusal of "ZOMBIE CINDERELLA" over "WALT DISNEY'S CINDERELLA & Design" for Dolls

The Board reversed a Section 2(d) refusal to register the mark ZOMBIE CINDERELLA for dolls, finding the mark not likely to cause confusion with the registered mark WALT DISNEY’S CINDERELLA & Design, shown below, also for dolls. Marketplace evidence of third-party "Cinderella" dolls, as well as the long history of the fairy tale, demonstrated that CINDERELLA is a weak formative. The Board concluded that the combination of ZOMBIE with CINDERELLA creates an incongruous impression that results in a significant difference between the marks. In re United Trademark Holdings, Inc., Serial No. 85706113 (October 9, 2014) [not precedential].

Judicial Notice: The examining attorney struck out twice in his requests that the Board take judicial notice of certain matters. First, as to several specimens of use submitted by applicant in other applications, the Board pointed out that it does not take judicial notice of USPTO records. Second, regarding the fame of "Walt Disney" and the Disney Company, the Board observed that, because fame is a dominant factor in the duPont analysis and must be clearly proven, it is "generally an unsuitable subject for judicial notice."

Cinderella's Weakness The story of Cinderella has been known to the public since at least 1697. The evidence showed that the Cinderella "is an established part of our cultural fabric and enjoys extremely widespread public recognition." Moreover, Aapplicant provided nine examples of dolls that depict the fairy tale character Cinderella. This evidence of marketplace use of CINDERELLA in connection with dolls further underscored the weakness of the term as a source identifier.

The record also shows, as we discuss further below, that this cultural figure has had an impact in the commercial field of dolls, and that many dolls that depict the character Cinderella have been offered in the market by unrelated businesses. We find that, for a doll that depicts the fairytale character Cinderella, the term "Cinderella" is, at a minimum, highly suggestive of the doll in that it names the fairytale character depicted. As such, it has limited power to function as a source indicator.

The Board concluded that the term CINDERELLA, as it appears in the cited mark, is entitled to a limited scope of protection.

Comparing the Marks: The examining attorney contended that the term ZOMBIE is not arbitrary with respect to dolls that depict zombies, but is descriptive thereof. Applicant, on the other hand, maintained that the combination of CINDERELLA and ZOMBIE has a "transformative effect":

Applicant’s mark juxtaposes the grotesqueness of a monster commonly portrayed in horror films with the beauty and innocence of a classic fairytale princess, giving it a unique and incongruous meaning and overall commercial impression. This odd combination of horror and fantasy creates a cognitive dissonance in the minds of consumers and results in a feeling of disequilibrium
The Board found that the designation WALT DISNEY’S is "inherently distinctive and its possessive form emphasizes the weakness of the term CINDERELLA, indicating it is Registrant’s version of the character as opposed to another’s version." Furthermore, the design element "may function, for juvenile customers, as a stronger source indicator than the term CINDERELLA, because it depicts a specific version of Cinderella that is associated with the Walt Disney animated film 'Cinderella.'"

The Board also found that  ZOMBIE and CINDERELLA each have little distinctiveness for dolls that depict zombies. But the Board agreed with applicant that "the combination of ZOMBIE with CINDERELLA creates a unitary mark with an incongruous impression."

Because of the differences in connotation and commercial impression, the Board found the marks not confusingly similar:

We are persuaded by Applicant’s contention that the mark ZOMBIE CINDERELLA creates a "cognitive dissonance," involving an uneasy mixture of innocence and horror. By contrast, the registered mark creates an impression of prettiness and goodness. Even if such marks were used on identical goods, these distinct commercial impressions would be distinguishable.

And so the Board reversed the refusal.

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TTABlog comment: Hat tip to fellow blogger Erik Pelton for this victory!

Text Copyright John L. Welch 2014.

Thursday, October 09, 2014

Test Your TTAB Judge-Ability: Is THE VINTNER GROUP Generic for a Wine Distributorship?

The USPTO refused registration on the Supplemental Register, of the designation THE VINTNER GROUP for "Import agency and wholesale distributorship featuring wine," on the ground of genericness. Is THE VINTNER GROUP a compound word (e.g., Gould's SCREENWIPE) or a phrase (American Fertility's AMERICAN SOCIETY FOR REPRODUCTIVE MEDICINE )? Does the relevant public include general consumers, or only winemakers and retailers? How do you think this came out? In re The Country Vintner, Serial No. 85567206 (October 8, 2014) [not precedential].

Both applicant and the examining attorney agreed that the genus of the services at issue is "wholesale distributorship featuring wine." Because "wholesale" refers to sale of goods to retailers, the Board agreed with applicant that sale of wine to the public is not included in the genus.

The Board found THE VINTNER GROUP to be a phrase rather than a compound word. "'Gould is limited, on its facts, language, and holding, to compound terms formed by the union of words.' In re American Fertility Society, 51USPQ2d at 1837. Here, there is no union of THE, VINTNER and/or GROUP into a compound term, nor is there a joinder (as described in American Fertility) of the 'most pertinent and individually generic terms applicable' to Applicant’s services.'"

Under American Fertility, dictionary definitions of the constituent words are not sufficient to establish genericness. The evidence must show that the relevant public refers to wholesale distributorship services featuring wine as THE VINTNER GROUP. The examining attorney bears the burden to prove genericness by a "strong" showing, with "clear evidence."

Dictionary definitions, third-party registrations, website evidence, and applicant’s own specimen of use established that THE VINTNER GROUP is merely descriptive of applicant’s services." It is also quite apt for wholesale distributorship services featuring wine," but aptness is not the test for genericness.

The evidence submitted by the examining attorney did not show use of the exact phrase THE VINTNER GROUP. Thirteen items showed "vintner group" in connection with association services, not distributorship services. The closest item,, was not used in this country. In fact, the only evidence of use THE VINTNER GROUP in the United States referred to applicant.

In sum, clear evidence of genericness was lacking. "'Much of the Examining Attorney’s evidence appears to illustrate little more than 'the thoroughness with which NEXIS [and the Internet] can regurgitate a [term] casually mentioned in the news.'"

The Board observed that this is a "close and difficult case," and it acknowledged that on a different record (e.g., in an inter partes proceeding) it might well reach a different conclusion. But on the current record, it reversed the refusal to register.

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Text Copyright John L. Welch 2014.