Wednesday, November 24, 2004

TTAB Says "WAREHOUSE" Generic for Retail Store Services

In In re Warehouse Fashion Limited, Serial No. 76048329 (October 19, 2004) [not citable], the TTAB affirmed a genericness refusal of the term WAREHOUSE for retail store and mail order services in the field of clothing, footwear, and other personal consumer goods.

NEXIS and Internet evidence clearly demonstrated that "warehouse retailing" is the "generic designation of a genus of retailing," in which goods are sold "in a superstore type of warehouse atmosphere where a premium is placed on speeding up the transactions. The facilities are typically in warehouse-sized structures with a minimum of services offered, and the consumer forms the bulk of the functions in a self-service mode."

Applicant contended, however, that although the evidence may show that "warehouse retailing" is generic, WAREHOUSE by itself is not. The Board shelved that argument with a citation to In re Central Sprinkler Co., 49 USPQ2d 1194 (TTAB 1998), in which the term ATTIC was held to be generic for sprinklers:
". . . we recognize that applicant's mark does not present the classic case of a generic noun, but rather a generic adjective. In this case, because the term ATTIC directly names the most important or central aspect or purpose of applicant's goods, that is, that the sprinklers are used in attics, this term is generic and should be freely available for use by competitors." 49 USPQ2d at 1199
In Warehouse Fashion the Board ruled that "the mere fact that applicant herein has chosen to not include the term 'retailing' in the mark sought to be registered should not lead to the registrability of the word WAREHOUSE standing alone."

The Board's approach regarding the genericness of this word mark is in rather stark contrast with its treatment of phrases. In considering the genericness of a phrase, the TTAB follows In re American Fertility Society, 51 USPQ2d 1832 (Fed. Cir. 1999), which requires (1) evidence of the genus of goods or services at issue and (2) proof that the general public understands the phrase as a whole to refer to the genus. 51 USPQ2d at 1836. In American Fertility, the TTAB had affirmed a refusal to register AMERICAN SOCIETY FOR REPRODUCTIVE MEDICINE on the Supplemental Register absent a disclaimer of SOCIETY FOR REPRODUCTIVE MEDICINE. The CAFC reversed because the PTO failed to provide any evidence of the public'’s understanding of the phrase as a whole.

In Warehouse Fashion, the Board affirmed the genericness refusal despite the absence of evidence that WAREHOUSE alone is perceived as a genus designation for retail store services. I wonder what the result would have been had Applicant presented the proposed mark as a two-word phrase: WARE HOUSE?

Text Copyright John L. Welch 2005.


Post a Comment

<< Home