Thursday, December 09, 2010

"FIRSTAIDE" Generic for Bandages and Kits, Says TTAB, Affirmingly

Perhaps Dr. Joseph Smith would like a second opinion, after the Board affirmed a genericness refusal of the term FIRSTAIDE for adhesive bandages, first aid kits, and various medical items. Alternatively, the Board found the term to be merely descriptiveness and lacking in acquired distinctiveness. In re Dr. Joseph Smith, Serial No. 77378967 (November 15, 2010) [not precedential].

The Doctor feebly argued that FIRSTAIDE is not a generic term for his goods because "first aid" is a service in the form of medical treatment, not a product. Moreover, he urged that a "first aide" may be an individual who provides first aid. And he asserted that FIRSTAIDE does not describe the goods but merely suggests a quality thereof.

Examining Attorney Barbara Gaynor argued that Applicant's goods include "first aid kits," and thus FIRSTAIDE is generic for such goods, in spite of its novel spelling. Moreover, even if it is not, Applicant's 2(f) evidence is insufficient. She relied on various website evidence regarding "first aid kits" and fourteen registration for marks that identify goods including first aid kits, and in which the term "first aid" is disclaimed.

The Board found "first aid" to be "a term of art with a clearly and widely understood meaning related to applicant's goods," and further that "first aid" is generic as applied to Applicant's goods. Furthermore, the term FIRSTAIDE, the phonetic equivalent of "first aid," is likewise generic. Applicant provided no evidence that the term FIRSTAIDE would be perceived as an assistant who performs emergency wound care, or seen as anything other than a slight misspelling of "first aid."

The Board acknowledged that FIRSTAIDE is used as an adjective rather than a noun in connection with Applicant's goods, but it is the generic name of a category or class of kits (like ATTIC for automatic sprinklers).

As to the issue of acquired distinctiveness (and assuming arguendo that FIRSTAIDE is not generic), Applicant submitted advertising and packaging for his goods and claimed substantially exclusive and continuous use of FIRSTAIDE in commerce for more than five years. The Board, however, found Applicant's evidence insufficient: "given the highly descriptive nature of the designation FIRSTAIDE, we would need a great deal more evidence (especially in the form of direct evidence from customers) than what applicant has submitted."

And so the Board affirmed the genericness refusal, and alternatively the mere descriptiveness refusal.

TTABlog comment: The Doctor's proof of acquired distinctiveness was quite lame. As to genericness, I haven't checked at my local drug store, but I seem to recall a sign saying "first aid" above the aisle where bandages and that stuff are displayed. Seems generic to me.

Joke: Guy sees his doctor, who tells him "you're way overweight." Guy says, "I want a second opinion." Doctor replies, "Ok, you're ugly too."

Text Copyright John L. Welch 2010.


Post a Comment

<< Home