Tuesday, August 02, 2011

TTAB Affirms Genericness Refusal of CONSUMERAFFAIRS.COM for ... Guess What?

Here's one for all of you consumers out there who have an interest in affairs. The Board affirmed a refusal to register the term CONSUMERAFFAIRS.COM [.COM disclaimed] as a service mark for "business investigations and business information services in the field of business and trade practices for protecting responsible business and the public against abusive business practices and for establishing and maintaining legitimate advertising and merchandising practices," on the ground of genericness. In re Oakton Press, Inc., Serial No. 77221836 (July 19, 2011) [not precedential].

The Board began by finding that "the genus of the services at issue in this case is adequately defined by applicant’s description of services." Examining Attorney Steven W. Jackson submitted dictionary definitions, website evidence, and excerpts from Applicant's own website, in support of the refusal.

Applicant relied on In re Steelbuilding.com in contending that "in determining the genus of applicant’s services, the examining attorney did not consider all of the activities encompassed by applicant’s services and, therefore, improperly identified the genus of the services." The Board observed, however, that in Steelbuilding, the CAFC "found that there was an ambiguity in the description of services and it looked to applicant’s website for clarification." Here the Board found no such ambiguity. Moreover, the Board adopted Applicant's recitation of services as the applicable genus, and so Applicant cannot complain that the genus does not cover all the services that it sought to cover. In any event, the supposedly additional services fall within the broader language of the recitation of services.

Turning to the question of the public's understanding of the term, the Board found that there was the requisite "clear evidence" to support a finding that "the relevant public, when it considers CONSUMERAFFAIRS.COM, readily understands that term as identifying a category of business investigation and information service to prevent abusive practices and to promote legitimate business practices; in short, consumer business trade practices."

The PTO's evidence established that the "consumer affairs" is a recognized term meaning "consumer business practices" or "public matters of business." The Board noted that Applicant displays the term in a manner (shown below) that "highlights the combination of two separate and distinct words: 'consumer' and 'affairs.'"

In any case, many government agencies use the compounded term "consumeraffairs" as part of their URL path [e.g., www.njconsumeraffairs.com].

Finally, the Board found that "[t]he addition of “.com” does not make the entire mark incongruous, nor does it change the meaning of the entire mark." The telescoping of the phrase "consumer affairs" and ".com" into a compound word does not change the meaning of the generic terms, as would be readily apparent to the purchaser.

And so the Board affirmed the genericness refusal.

Applicant further claimed that the term had acquired distinctiveness based on more than five years of continuous and substantially exclusive use. Assuming arguendo that the term is not generic, the Board ruled that, given the highly descriptive nature of the term, the five-year presumption was not enough to establish that this term serves as a source indicator.

Text Copyright John L. Welch 2011.


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