Wednesday, August 11, 2010

TTAB Finds "THE FLYER" Not Generic for Advertising Shopper Services

In this yawner, Applicant Harte-Hanks convinced the TTAB that a "shopper" is not a "flyer," and so the Board reversed a genericness refusal of the mark THE FLYER for advertising services relating to shoppers. In re Harte-Hanks, Inc., Serial No. 77017666 (June 30, 2010) [not precedential].

As we know, the test for determining genericness involves two questions: what is the genus of the services? And is the applied-for term understood by the relevant public primarily to refer to that genus? See H. Marvin Ginn Corporation v. International Association of Fire Chiefs, Inc., 782 F.2d 987, 228 USPQ 528 (Fed. Cir. 1986).

The Examining Attorney contended that the genus of the services is advertising flyer services, and that the relevant public understands the term "flyer" to refer to this type of advertising circular. Applicant argued that a flyer and a shopper are two different things.

The Board reviewed various dictionary definitions of "flyer," and agreed with Applicant that these definitions "fairly consistently refer to an advertising flyer as something 'small' or 'one-page' in length." The Examining Attorney's website evidence corroborated the Board's conclusion that a flyer is generally a single sheet.

Applicant provided dictionary definitions of "shopper that" made clear that an advertising shopper is a "newspaper." Those definitions were consistent with Applicant's website evidence. Moreover, past USPTO practice revealed that the terms "flyer" is, "at worst, merely descriptive of some publications and related services, but definitely not generic for shopper newspapers."

And so, the Board found the genus of services to be "creating advertising publications," or "providing direct mail advertising," or "publishing free family/community newspapers," or even just "publishing shoppers."

The Board then agreed with Applicant that "flyer" is not understood by the relevant public as primarily referring to the genus of services.

Rather, we find that even the evidence placed into the record by the Trademark Examining Attorney consistently describes publications that are named "flyers/fliers" as relatively simple, small leaflets, often handed-out, posted or inserted into a newspaper. By contrast, applicant is involved in providing direct mail advertising by publishing a much more complicated but free publication in the nature of a community newspaper containing substantially all advertisements with some limited news or editorial content – a publication known generically in the trade as a "shopper."

And so the Board reversed the refusal. Moreover, the Examining Attorney agreed that the mark, if not generic, had acquired distinctiveness, and so a registration will issue on the Principal Register.

Text Copyright John L. Welch.


At 9:25 AM, Blogger sfriends said...

A no-brainer for sure but the Examining Attorney dug in her heels on this one! I am now an expert on marketing materials and publications of all types!


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