Sidestepping American Fertility, TTAB Finds "PAO DOCE WRAPS" Generic for Bakery Products

Once again taking a tough stance regarding genericness, the Board rejected Applicant's American Fertility-based argument in affirming a refusal to register PAO DOCE WRAPS on the Supplemental Register, finding the term to be generic for "bakery products." In re Leonard’s Bakery, Ltd., Serial No. 77556405 (June 28, 2010) [not precedential].


The Board began by observing that the PTO's evidentiary burden in establishing genericness "is different depending on the type of mark an applicant seeks to register." For compound terms, it is sufficient to produce evidence "that each of the constituent words is generic, and that the separate words retain their generic significance when joined to form a compound that has 'a meaning identical to the meaning common usage would ascribe to those words as a compound.'" In re Gould Paper Corp., 5 USPQ2d 1110, 1111-1112 (Fed. Cir. 1987) (SCREENWIPE held generic as applied to premoistened antistatic cloths for cleaning computer and television screens). However, when a mark is "more in the nature of a phrase, the PTO "must provide evidence of the meaning of the composite mark as a whole." In re American Fertility Society, 51 USPQ2d 1832, 1837 (Fed. Cir. 1999) (SOCIETY FOR REPRODUCTIVE MEDICINE not generic for association services in the field of reproductive medicine because where the mark is a phrase evidence that each separate term is generic is not sufficient).

Examining Attorney Brian P. Callaghan relied on websites using "pao doce" and "wraps" generically for various bakery products [Apparently, Pao Doce is a Portuguese holiday bread.], analyzing the evidence under the Gould standard. Applicant did not dispute the meanings of "pao doce" and "wrap," but it contended that PAO DOCE WRAPS is a phrase, not a compound word, and therefore that the Gould standard does not apply. It argued that American Fertility requires a reversal because there was no evidence that others use the entire phrase PAO DOCE WRAPS.

The Board found "clear evidence of record" that the relevant public would understand the term PAO DOCE WRAPS to identify a a type of bakery product, "namely, pao doce wraps."

The record shows that “pao doce” is a unitary generic term for a type of bakery product. The record also establishes that the term “wraps” is a generic term for goods within the genus bakery products. Therefore, PAO DOCE WRAPS is the combination of two generic terms joined to create a compound.

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The record shows that “pao doce” is a unitary generic term for a type of bakery product. The record also establishes that the term “wraps” is a generic term for goods within the genus bakery products. Therefore, PAO DOCE WRAPS is the combination of two generic terms joined to create a compound.

The space between the generic terms “pao doce” and “wraps” does not disqualify this type of proposed mark from the Gould analysis. If anything, the terms appearing as they should in normal usage make it even more common. There is no logical basis upon which to conclude that Gould would have yielded a different result if the mark had been SCREEN WIPE rather than SCREENWIPE.

And so the Board affirmed the refusal.

TTABlog comment: The Board continues to cite Gould and American Fertility, and then to proceed with its own analysis. See, e.g., the recent precedential decision in In Re Wm. B. Coleman Co., 93 USPQ2d 3019 (TTAB 2010) (ELECTRIC CANDLE COMPANY generic for light bulbs). [TTABlogged here].

Here's a question: Is American Fertility honored more in the breach by the TTAB, than in the observance?

Text Copyright John L. Welch 2010.