Friday, December 23, 2005

"POLITICAL COMPLIANCE SERVICES, INC." Descriptive but not Generic, Says TTAB

The Board reversed a genericness refusal of POLITICAL COMPLIANCE SERVICES, INC. ("SERVICES, INC" disclaimed) for "election law compliance services, and related consultation services," but affirmed a mere descriptiveness refusal, paving the way for registration on the Supplemental Register. In re Political Compliance Services, Inc., Serial No. 76286430 (December 5, 2005) [not citable].

The Board found the genus of services to be adequately defined by Applicant's recitation.

As to the relevant public's understanding of the phrase, the Board deemed the relevant public to include "non-connected PACs, party committees, candidate committees, political campaign managers, and candidates." The Examining Attorney submitted relevant Nexis articles in which the term "political compliance" is used in various contexts, third party websites displaying that term, and dictionary definitions of "political" and "compliance." However, she did not provide any examples of the phrase POLITICAL COMPLIANCE SERVICES, INC. in its entirety.

Photograph from Applicant's specimen of use

The Board noted that, to prove a term generic, the PTO "may not simply cite definitions and generic uses of the constituent terms of a mark, but must consider the meaning of the disputed phrase as a whole." In re Dial-A-Mattress Operating Corp., 57 USPQ2d 1807 (Fed. Cir. 2001); In re The American Fertility Society, 51 USPQ2d 1832 (Fed. Cir. 1999).

The PTO failed to provide the "clear evidence" required to prove genericness:

"The record before us does not contain a single example of use of 'POLITICAL COMPLIANCE SERVICES, INC.' (other than applicant's service mark use). In addition, even taking the constituent parts separately, both the number and nature of the uses of 'political compliance' in the record are not sufficient to establish by clear evidence that 'political compliance' is currently generic for the identified services."

Turning to the Section 2(e)(1)issue, the Board found Applicant's mark to be merely descriptive of a "significant feature of applicant's services, specifically that its services involve consultation regarding compliance with regulation in the political field, specifically election laws." The PTO's Nexis and Internet evidence showed use of the term "political compliance" to describe services in the field of election law. Coupling that term with the non-distinctive phrase "SERVICES, INC" does not yield a "new and unique commercial impression. "

In sum, the Section 2(e)(1) refusal to register on the Principal Register was affirmed, but the refusal to register on the Supplemental Register on the ground of genericness was reversed.

TTABlog comment: Suppose the PTO's proofs had been sufficient to establish that "Political Compliance" is generic for Applicant's services. The genericness refusal would still have failed because of lack of proof that the entire phrase is in use, as required by American Fertility. Proof of genericness of the constituent terms is not sufficient; it must be shown that the entire phrase is in use as a generic designation.

Text Copyright John L. Welch 2005.


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