Monday, August 25, 2008

TTAB Deems "Ultra Violet Devices" Generic for ... Guess What?

Not surprisingly, the Board affirmed a genericness refusal of the term Ultra Violet Devices for "air and water purification units utilizing ultraviolet technology," and in the alternative affirmed the PTO's conclusion that the term, even if merely descriptive, lacks secondary meaning. In re Ultra Violet Devices, Inc., Serial No. 78589646 (August 5, 2008) [not precedential].


Applying the two-part Marvin Ginn test, the Board first addressed "the genus question" by rejecting Applicant's contention that the genus is "air and water purifiers" and accepting Examining Attorney Ronald McMorrow's view that the genus is the same as Applicant's identification of goods. The Board noted that here, unlike in Marvin Ginn [FIRE CHIEF not generic for magazines], "the evidence does establish that the Ultra Violet Devices mark identifies a class of goods."

In any case, the Board observed, even if it adopted Applicant's genus, Ultra Violet Devices would still be generic: "The fact that the genus is conceptually broader than the identification of goods does not inexorably lead to the conclusion that Ultra Violet Devices is not generic." See, e.g., In re Central Sprinkler Co., 49 USPQ2d 1194 (TTAB 1998) [ATTIC generic for automatic fire sprinklers].

Turning to the second prong of the Marvin Ginn test, the Board found that the "voluminous evidence" submitted by the Examining Attorney was "more that sufficient" to prove that Ultra Violet Devices is generic for Applicant's goods. The Board rejected various feeble contentions made by Applicant, including its assertion that "devices" is a broad term that somehow negates the generic character of Ultra Violet Devices.

The Board then chose to consider the issue of acquired distinctiveness, assuming arguendo that Ultra Violet Devices is not generic but highly descriptive. Applicant pointed to its use of the term for fourteen years, to five examples of its advertisements in journals, and to installation of one million of its systems around the world. However, the Board concluded that fourteen years of use is insufficient proof in view of the highly descriptive nature of the term. As to the advertisements, there was no evidence as to frequency, names of publication, or number of potential purchasers reached. The reference to one million installations appears in an advertisement, with no confirmation that those sales took place in the United States. Even if the sales were in the United States, however, the evidence would still be insufficient.

"Conspicuous by its absence is any evidence showing the recognition of Ultra Violet Devices as a mark by relevant consumers. Considering how highly descriptive applicant's mark is, direct evidence that the use and promotion of the mark has had an impact resulting in consumer recognition of the mark would have been far more probative than a mere declaration of 14 years of use and copies of some advertisements which merely report sales/installations."

And so, the Board ruled that Applicant's evidence of secondary meaning "falls far short of what would be required to show acquired distinctiveness in this case."

Text Copyright John L. Welch 2008.


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