Tuesday, September 13, 2005

"SYNTHETEK" Not Generic for Synthetic Paper, Says TTAB

The Board reached the right result (but for the wrong reason?) in reversing a refusal to register the mark SYNTHETEK for "synthetic paper" on the Supplemental Register. In re Rocheux Int'l of New Jersey, Inc., Serial No. 78262721 (August 18, 2005) [not citable].


The Examining Attorney relied on a dictionary definition of "synthetic" and on NEXIS and Internet evidence referring to "synthetic paper." She contended that consumers would understand that Applicant's paper is synthetic, that the evidence show that "synthetic paper" is a type of paper, and that Applicant's misspelling of a generic term is still generic.

Rocheux International argued that the PTO may have established that "synthetic paper" is generic, but not that SYNTHETEK is a generic term. Moreover, Applicant pointed out, the suffix "TEK" is the phonetic equivalent of "tech" and could refer to "technical."

The Board sided with Rocheux. noting that the NEXIS and Internet materials submitted by the PTO do not show any use of SYNTHETEK:

"while there is clear evidence that the phase 'synthetic paper' is generic for a particular type of plastic film used for a wide variety of products, there is no evidence that the word SYNTHETEK is the name of the genus for 'synthetic paper."

Even assuming that SYNTHETEK is a phonetic misspelling of "synthetic," the Board went on, the mark is still not generic. The Board distinguished cases involving the generic terms ICE PAK and MINERAL-LYX, because those are misspellings of generic terms, while SYNTHETEK is a misspelling of a word that is not generic.

TTABlog comment: It seems to me that if the term SYNTHETEK were the phonetic equivalent of "synthetic," then SYNTHETEK might well be generic. Wouldn't it be similar to the term ATTIC, held to be generic for sprinklers in In re Central Sprinkler Co., 49 USPQ2d 1194 (TTAB 1998)?

". . . 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

See also the Warehouse Fashion decision from last October (TTABlogged here), in which the Board found the term WAREHOUSE to be generic for retail store and mail order services in the field of clothing, footwear, and other personal consumer goods.

Perhaps the better approach for the Board would have been to say that, while "synthetic" may be generic for Rocheux's goods, SYNTHETEK is not clearly the phonetic equivalent of "synthetic." The syllable "TEK" is pronounced differently that "tic," and in fact may result in the three syllables being accentuated differently.

Text Copyright 2005 John L. Welch.


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