Tuesday, June 07, 2011

"LOCKBACK" Generic for Foldable Utility Knives, Says TTAB

Although Applicant Great Neck owns a Supplemental Registration for LOCK BACK for folding utility knives, and although a federal court entered a consent judgment holding that LOCK BACK is a valid trademark, the Board affirmed a refusal to register the term LOCKBACK for "[a] foldable utility knife comprising a handle and a blade holder with the blade holder having a removable blade and being foldable within the handle," on the ground of genericness. In re Great Neck Saw Manufacturers, Inc., Serial No. 76679933 (June 2, 2011) [not precedential].

Great Neck argued that registration of its mark on the Supplemental Register is "a precedent set by the United States Patent and Trademark Office which the Examiner cannot ignore and abrogate." The Board pointed out, however, that a Supplemental Registration is not entitled to any of the presumptions of Section 7(b) of the Trademark Act: i.e., it is not prima facie evidence of anything. The Board must decide each case on its own merits, and is not bound by decisions of Examining Attorneys in other cases.

As to the consent decree, no issues were actually litigated or judicially resolved in that litigation, which was settled. "Thus, it cannot be said that a court of competent jurisdiction made a finding of fact that [Supplemental] Registration No. 2980151 is valid and enforceable." The Board observed that "a consent decree cannot dictate the decision of the PTO."

Turning to the issue of genericness, the Board found the genus of goods to be adequately defined by Applicant's original identification of goods: a folding utility knife and a folding carpet knife. The relevant public consists of "the ordinary consumer interested in purchasing a folding utility knife."

The Board found clear evidence that LOCKBACK is generic because it identifies "a type of folding utility knife." Applicant stabbed itself in the foot with its specimen packaging, which uses the term "Lockback" to describe the type of folding utility knife: "Folding Lockback Utility Knife." [The use of the R symbol adjacent the word "Lockback" was of no import.] Additionally, in its advertising, Applicant uses "Lockback" to describe the type of utility knife.

Examining Attorney Melissa Vallillo website evidence identifying "lockback knives" as a category of product, nine third-party registrations and one application using "lockback" in the identification of goods, and a U.S. patent for a "Bolster-actuated lockback knife." In view of this evidence, the Board found that the PTO had met its burden of establishing genericness.

For the sake of completeness, the Board considered whether, assuming arguendo, that LOCKBACK is not generic, Great Neck had established acquired distinctiveness. Applicant submitted evidence that it has used the term since 2003, has sold 6 million LOCKBACK knives for $25 million, and has spent more than $175,000 on advertising.

However, the Board noted that Applicant's use of LOCKBACK is not substantially exclusive, since 22 third parties use "Lockback" to describe a type of knife. Moreover its advertising expenditures are not impressive, and its sales figures are without any context, such as market share, to allow proper assessment. Notably, Applicant did not provide any direct evidence of consumer recognition of LOCKBACK as a trademark.

"To put the matter simply, a good deal more evidence than that offered here is necessary to establish that applicant's mark LOCKBACK has acquired distinctiveness."

And so the Board affirmed the refusal to register.

TTABlog query: Will Great Neck look back on LOCKBACK, and hope to get its luck back?

Text Copyright John L. Welch 2011.


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