Tuesday, August 15, 2006

TTAB Citable No. 39: "NUTRITION BULLETIN" Generic for ... Guess What?

In its 39th citable decision of 2006, the TTAB affirmed a refusal to register NUTRITION BULLETIN on the Supplemental Register, for "providing information in the field of health and diet via a web site on the Internet," finding the term to be generic and therefore incapable of functioning as a service mark for the recited services. In re Rodale Inc., 80 USPQ2d 1696 (TTAB 2006).

Examining Attorney Mrs. A.D. Saunders relied on a page from Applicant Rodale's menshealth.com website, dictionary definitions of "nutrition" and "bulletin," NEXIS excerpts showing use of "nutrition bulletin," and Internet web pages showing use of "nutrition bulletin."

Applicant Rodale pointed out that it already owns Supplemental Registrations for WEIGHT-LOSS BULLETIN, SEX BULLETIN, and MUSCLE BULLETIN for magazine features and sections, for WEIGHT LOSS BULLETIN for electronic newsletters, and for MUSCLE BULLETIN for providing information in the field of fitness, exercise, and lifestyle. Most particularly, it noted its Supplemental Registration for NUTRITION BULLETIN for "magazine column and sections in the fields of health, fitness, diet, exercise, and lifestyle."

The Board first found (once again, without explanation) that the genus of services at issue is "commensurate with applicant's recitation of services." Turning to the relevant public's understanding of the term, the Board found that the submitted definitions of "nutrition" and "bulletin" directly apply to those services, but noting the following wrinkle as to the word "bulletin:"

"Although the dictionary definition does not specifically mention the Internet as a medium through which 'bulletins' may be disseminated, we see no reason to exclude it as such a medium; indeed the evidence of record ... shows that the Internet in fact is such a medium through which bulletins are disseminated."

Applying the CAFC's American Fertility test for the genericness of phrases, the Board recognized that a finding of genericness requires a showing that the subject phrase "as a whole" is generic (and not just the constituent words). It found that the PTO's evidence sufficed to establish that "NUTRITION BULLETIN, as a whole, is and would be understood by purchasers to refer to the genus of services at issue here."

Although the Board admitted that is was "troubled" by Rodale's previously-acquired Supplemental Registrations, it was nonetheless convinced by the "clear evidence of genericness" present in this case.

"Although consistency in examination is a goal of the Office, the decisions of previous Trademark Examining Attorneys are not binding on us, and we must decide each case based on the evidence presented in the record before us. In re Nett Designs Inc. 57 USPQ2d 164 (Fed. Cir. 2001)."

The Board therefore affirmed the refusal to register.

Text Copyright John L. Welch 2006.


Post a Comment

<< Home