Tuesday, October 24, 2006

TTAB Finds "THE PRODUCT DEVELOPMENT COMPANY" Generic for Services But Not for Software

Applying the CAFC's American Fertility test for genericness, the Board found the term THE PRODUCT DEVELOPMENT COMPANY to be generic for product development services, but not for computer software. In re Parametric Technology Corp., Serial No. 78040702 (September 12, 2006) [not citable].

The Examining Attorney refused registration on the Supplemental Register, relying on a dictionary definition of "product development" and on GOOGLE search results and NEXIS excerpts showing use of that term. Some of the PTO's materials showed use of the phrase "product development software." Applicant's own website also used the terms "product development" ["We eat, drink and sleep product development."] and "product development software" ["PTC product development software takes good to best"].

Because the Board understandably considered THE PRODUCT SOFTWARE COMPANY to be a phrase rather than a compound word, dictionary definitions alone could not support the genericness refusal. Under American Fertility, the PTO "must produce evidence of the meaning the relevant purchasing public accords" to the mark "as a whole." As to Applicant's product development software, the evidence fell short:

"While the record is clear, indeed, applicant has conceded, that it sells product development software, it is not applying to register either that phrase or THE PRODUCE DEVELOPMENT SOFTWARE COMPANY. Thus, the record does not show that the relevant public would view THE PRODUCT DEVELOPMENT COMPANY as the name of a class of products known as product development software."

However, as to product development services, the record was sufficient "to establish that the relevant public would find THE PRODUCT DEVELOPMENT COMPANY a generic term indicating a company that provides product development services." The term THE "is of no consequence," and the term COMPANY, "although not defined in the record, is merely a generic term for a business entity."

"Indeed, applicant acknowledges that there are product development businesses providing product development services and A PRODUCT DEVELOPMENT COMPANY would be a generic name for any such business. Applicant's use of THE instead of A cannot render the composite non-generic."

Consequently the Board affirmed the Section 23 refusal for the class 42 services, but reversed the refusal as to the class 9 software.

Text Copyright John L. Welch 2006.


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