Thursday, April 27, 2006

Sidestepping American Fertility, TTAB Affirms Genericness Refusal of "WELDING, CUTTING, TOOLS & ACCESSORIES"

Judge Bucher has again planted a seed of doubt regarding the CAFC's seminal ruling in In re American Fertility Society, 51 USPQ2d 1832 (Fed. Cir. 1999). He recently plowed this same furrow in the FRESH ORGANICS case, TTABlogged here. Now he has authored the Board's opinion in In re Welding, Cutting, Tools & Accessories, LLC, Serial No. 78212695 (April 20, 2006) [not citable], affirming a genericness refusal of the term WELDING, CUTTING, TOOLS & ACCESSORIES for "Retail stores, on-line retail stores and mail order catalog services in the field of welding equipment."

Examining Attorney Angela M. Micheli maintained that a single third-party webpage and a letter and catalogue produced by Applicant, "when combined with the plain meaning of the proposed mark," established the genericness of the phrase. Applicant WCTA argued that the PTO had failed to prove genericness by the required "clear evidence."

The Board found that Applicant indeed sells welding equipment, cutting equipment, tools for welding and cutting, and accessories for welding and cutting. It agreed with the Examining Attorney, citing In re Gould Paper Corp., 5 USPQ2d 1110 (Fed. Cir. 1987) [SCREENWIPE], in ruling that the subject phrase is:

"merely a combination of generic terms that has no separate or distinct commercial impression apart from what one who understands the individual meanings of the terms would expect the terms to signify."

Hold it right there! What about American Fertility, which requires that, for a phrase as opposed to a compound word, more than mere dictionary definitions are required to prove genericness? Where's the proof that Applicant's phrase as a whole is used as a generic designation? Not to worry. The Board pointed to the "only third party website having this exact combination of terms that the Trademark Examining Attorney found ... the now-inactive single website of Auto Body Bargains."

Understandably, Applicant WCTA asserted that this single, now defunct webpage failed to meet the "clear evidence" standard for proof of genericness of a phrase. (It also, rather feebly, pointed to the differing punctuation in its phrase from that used in the webpage.) The Board was unmoved:

"We cannot so easily disregard a substantially-exact formulation used by a one-time competitor. We find a continuing interest in securing for all competitors the unencumbered right to use generic terms for goods and services."

Despite the teaching of American Fertility, the Board, or at least this panel, was determined to hold Applicant's phrase to be generic. It explained that it refused to "countenance the following scenario:"
  • Any manufacturer or merchant could select four, non-distinctive words from its industry, and combine these words into a word string, possibly sprinkling in appropriate commas, slashes, ampersands, etc.
  • Each individual word is by definition generic, answering the question "what-are-you?"
  • It is most unlikely that anyone else in the field will be using that exact permutation of items in a single four-word string.
  • Hence, neither a Trademark Examining Attorney nor any competitor will be able to locate that exact phraseology when doing a database search, or may find only applicant's precise usages.
  • For example, one could posit a hypothetical stationery store named "Binders, pencils, paper and school supplies."
  • If this exact combination is not found anywhere on the Internet when conducting a search on Google, or using any other search engine, any tribunal must then take the position that this four-word string is capable of acquiring distinctiveness as a source indicator in this field.
The Board therefore affirmed the refusal to register.

TTABlog comment: Bravo, Judge Bucher! The American Fertility test doesn't work. Until the CAFC gets a chance to re-think Marvin Ginn and its progeny, the TTAB should follow Judge Bucher's lead and apply some common sense in these "phrase" genericness cases.

Copyright John L. Welch 2006.


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