TTAB Affirms Genericness Refusal of TREERADAR for ... Guess What?
Three years ago, Applicant TreeRadar, Inc. lost an appeal from a Section 2(e)(1) mere descriptiveness refusal of TREERADAR [opinion here], but it filed a new application and sought registration under Section 2(f). It lost again. This time, the Board affirmed a genericness refusal, finding TREERADAR to be generic for radar imaging systems for trees and for related services. In re TreeRadar, Inc., Serial No. 77579817 (July 15, 2011) [not precedential].
Res judicata: In light of this Applicant's prior unsuccessful appeal, the Board agreed with Examining Attorney Kristina Morris that Applicant was barred from re-litigating the issue of mere descriptiveness (i.e., inherent distinctiveness).
Genericness: Applying the In re Gould approach to the compound word TREERADAR, the Board first looked to dictionary definitions of "tree" and "radar." Applicant's own use of these two terms confirmed the generic meaning of those two words. Moreover, the compound term TREERADAR has no meaning apart from the meaning of the individual terms combined. "TREERADAR 'immediately and unequivocally describes the purpose, function and nature of the goods' and services."
The evidence also showed use of "tree radar" generically by others to refer to the same type of goods and services. Applicant argued that these references were actually to its mark "without capitalization," but the Board noted that these materials "still provide evidence of the context of use, the exposure of the term in a generic manner to the relevant public, and the meaning the public is likely to associate with the term as a result of such use."
Moreover, the Board found it not surprising that these uses of the term refer to Applicant and its product because Applicant "apparently holds a patent for its particular use of GPR technology ... and appears to be one of the only producers of this type of radar device." In any case, the term "tree radar" is used generically and not as a source indicator. And even if the record showed no third-party use of the term, it would still be generic because "the term clearly would be understood as having a generic meaning."
Applicant submitted evidence arguably showing that third-parties use TREERADAR as a trademark for its goods, but the Board found the evidence to be "ambiguous, at best." The "clear and unambiguous meaning of the term 'TREERADAR' as well as the generic manner of use of the term by others is far more convincing."
For the sake of completeness (and assuming arguendo that TREERADAR is not generic), the Board considered Applicant's evidence of acquired distinctiveness. Here, strong proof is required, and Applicant did not provide it. Applicant submitted a 5-year claim of continuous and substantially exclusive use, but such a claim is not sufficient by itself when the term sought to be registered is highly descriptive. Applicant did not submit sales or advertising figures, or other evidence. The Board therefore rejected the 2(f) claim.
TTABlog comment: The "g" key on my keyboard doesn't want to work, so I may have to skip enericness cases for a while.
The Board affirmed the refusal "under 2(e)(1) of the Act on the grounds that the mark is generic ...." What, pray tell, does Section 2(e)(1) have to do with genericness? Isn't the correct refusal under Sections 1, 2, and 45 on the ground that TREERADAR is simply not a mark?
Text Copyright John L. Welch 2011.