Thursday, June 10, 2010

TTAB Finds "THREE-STRAND FLOSS" Generic for ... Guess What?

The Board granted a petition for cancellation of a Supplemental Registration for THREE-STRAND FLOSS [with FLOSS disclaimed], finding it to be generic for "cotton thread and yarn." It concluded that "it is common practice in the industry to refer to the genus of 'cotton thread and yarn' by the number of strands in the product in the format with the number first followed by the words 'strand' and 'floss.' Therefore the Board ruled that "respondent may not lay claim to that particular arrangement of words." Weeks Dye Works, Inc. v. Valdani, Inc., Cancellation No. 92049174 (May 11, 2010) [not precedential].

The Board noted that, because the registration at issue is a Supplemental Register, Petitioner's assertion that the phrase is merely descriptive is irrelevant. "[T]he only issue to be decided is whether respondent’s mark THREE-STRAND FLOSS is generic for floss made of three strands and as such unregistrable on the Supplemental Register."

The board, as usual, found the genus of goods to be those set forth in the identification of good, namely, “cotton thread and yarn” which includes “floss.” The question, then, was whether the relevant purchasers (here, the general public) would understand THREE-STRAND FLOSS to refer to the genus.

Petitioner relied on dictionary definitions, letters from industry experts, and website evidence in arguing that it is “the industry’s common practice of stating the number of strands when referencing floss, whether in conjunction with the sale of floss, kits that use floss, or needles used with floss.”

Respondent contended that THREE-STRAND FLOSS is a new term, and further that competitors have no need to use the term since the word PLY means the same as STRAND.

The Board was unpersuaded, observing that "[t]he fact that the three-strand floss is a new product and respondent is the first to use 'three-strand floss' in connection with floss is not dispositive." Furthermore, the fact that another term is available for use does not turn a generic term into a protectable one.

Despite Respondent's efforts regarding promotion and use of THREE-STRAND FLOSS, it remains generic:

“While it is always distressing to contemplate a situation in which money has been invested in a promotion in the mistaken belief that trademark rights of value are being created, merchants act at their peril in attempting, by advertising, to convert common descriptive names, which belong to the public, to their own exclusive use. Even though they succeed in the creation of de facto secondary meaning, due to lack of competition or other happenstance, the law respecting registration will not give it any effect.” Weiss Noodle Co. v. Golden Cracknel & Specialty Co., 290 F.2d 845, 129 USPQ 411, 414 (CCPA 1961)."

Agreeing with Petitioner's argument about the industry's naming convention, the Board sustained the petition and cancelled the registration.

TTABlog comment: Note that the Board didn't even mention In re American Fertility Society, 51 USPQ2d 1832 (Fed. Cir. 1999), which requires proof that the general public understands the phrase as a whole to refer to the genus. Usually that means evidence showing that the phrase itself has been in use by others to refer to the genus. See, for example, the Board's reluctant reversal in In re American Food Co., Serial Number 76101362 (September 29, 2004) [not citable] [Applying American Fertility in finding THE BEEF JERKY OUTLET not generic for retail stores featuring meat products]. [TTABlogged here].

In a number of genericness cases, however, the Board has side-stepped that test, as it did in the recent ELECTRIC CANDLE COMPANY case (TTABlogger here). I'm not complaining. I think that's a good thing.

Text Copyright John L. Welch 2010.


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