Friday, April 02, 2010

TTAB Finds "ToeSox" Generic for ... Guess What?

The Board affirmed a refusal to register the term ToeSox on the Supplemental Register, finding it to be generic for "socks." Applicant floated a few feeble arguments to fend off the refusal, but all were futile. In re ToeSox, Inc., Serial No. 77109709 (March 26, 2010) [not precedential].

The Board first deemed the genus of goods at issue to be "socks," a genus that includes "toe-fitting socks (i.e., socks that delineate the individual toes)." The relevant public "consists of the ordinary consumer interested in purchasing socks, including toe-fitting socks."

Examining Attorney Leigh A. Lowry provided the clear evidence needed to establish a prima facie case of genericness: a Wikipedia entry for "toe socks"; a bunch of Internet website pages and blog entries using the term generically; three registrations using "toe socks" in their identifications of goods; 440 LexisNexis articles referencing "toe socks"; and a Walgreens advertisement for "Super Soft Toe Socks and Glove Set."

The use of the term "toe socks" by competitors was "persuasive evidence" that the term is generic. In fact, even Applicant calls its products "toe sox."

The compression of "toe sox" into ToeSox does not avoid the genericness problem. See, e.g., In re Gould Paper Corp., 5 USPQ2d 811 (CCPA 1978) [SCREENWIPE generic for computer screen wipes]. Nor does the misspelling of the word "socks." See, e.g., In re Hubbard Milling Co., 6 USPQ2d 1239 (TTAB 1987) [MINERAL-LYX generic for livestock mineral licks]. [As a White Sox fan, I must protest. I spell "socks," s-o-x].

Applicant lamely asserted that the relevant customers are limited to people who practice yoga and pilates. [Not "pirates." They would never wear toe socks - ed.]. But the application at issue has no such limitation, and in any case, these yoga and pilates practitioners are members of the general public, and would buy socks for regular use as well.

Next, Applicant pointed out that ToeSox does not appear in any dictionary. However, it is "well settled that the fact that a term is not found in a dictionary is not controlling" on the genericness issue, and here the Examining Attorney established that ToeSox has a well understood and recognized meaning.

Applicant then argued that its extensive advertising and promotional efforts rebut any genericness finding, pointing to In re America Online, Inc., 77 USPQ2d 1618 (TTAB 2006) [TTABlogged here] for the proposition that "[s]ignificant amounts of marketing and advertising, and adequate policing of a mark negate a finding of genericness." But the Board countered that, although such evidence must be considered on the genericness issue, Applicant had failed to submit evidence of significant marketing, advertising, and policing.

And finally, Applicant contended that "yoga socks" is the generic name for socks with toes. The Board, however, observed that a product may have more than one generic name, and all of them are unregistrable.

And so the Board affirmed the refusal to register.

Text Copyright John L. Welch 2010.


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