Tuesday, November 22, 2011

TTAB Affirms Genericness Refusal of "GRIND N BREW" for ... Guess What?

A beer hall featuring dancing girls? No. An orthodontist office that serves espresso? Don't be absurd! What then? How about "electric coffee makers for commercial use?" Bingo! Examining Attorney Simon Teng refused registration of GRIND N BREW on the grounds of genericness, and in the alternative, mere descriptiveness and lack of acquired distinctiveness. The Board affirmed. In re Grindmaster Corporation, Serial No. 77834762 (October 28, 2011) [not precedential].

Genericness: The Board, as usual, found the genus of goods to be adequately described by Applicant's identification of goods. Examining Attorney Simon Teng submitted Internet excerpts "showing that various manufacturers sell electric coffee makers and use 'grind and brew' as part of the name of their coffee makers." Newspaper stories also demonstrated the generic use of "grind and brew" for coffee makers. And consumer reviews showed that "the public considers the term to be generic for a type of electric coffee maker."

Applicant argued that the relevant public "is not the average retail consumer, but rather a more sophisticated buyer, such as would be found in a restaurant or hotel." The Examining Attorney contended that both commercial and home coffee makers "produce coffee for human consumption," and that commercial establishments can use consumer coffee makers.

The Board observed that the evidence showed "a cross-over in the market." Furthermore, restaurant and hotel purchasing agents "comprise members of the public who would be likely to purchase household electric appliances, such as grind-and-brew
coffee makers for home use."

The language “for commercial use” in applicant’s identification of goods may limit the market for applicant’s coffee maker and perhaps affect the size, capacity and/or the price of the coffee maker, but it does not change the fundamental nature of applicant’s product as a coffee maker. Simply put, the distinction between “domestic” and “commercial,” when essentially the same product is involved, is insignificant. The many examples of generic use by producers of coffee makers is strong evidence of the need by others in the trade to use the term generically and that it would be perceived as a generic term by consumers and commercial users alike.

Mere descriptiveness and acquired distinctiveness: For the sake of completeness, the Board next considered the 2(e)(1) and 2(f) issues. Not surprisingly, it found that the evidence supportsed a mere descriptiveness refusal.

We again refer to the meanings of the words “grind” and “brew.” Each word adequately describes a function of a coffee maker that acts on coffee beans by first crushing them into very small pieces (grinding) and then infusing them with water (brewing) to make coffee.

In view of the highly descriptive nature of GRIND N BREW, Applicant faced a heavy burden to prove acquired distinctiveness. Although Applicant has used the designation since 1995 and registered sales of some $20 million, there was no indication of whether sales have fluctuated over time and no context was provided for the sales figures. Moreover, the prevalence of third-party use "indicates that applicant’s has not been substantially exclusive as required by the statute."

In sum, Applicant evidence of acquired distinctiveness was insufficient.

TTABlog comment: Compare this case with the recent PICROSS decision (here), where the Board found acquired distinctiveness despite considerable third-party descriptive use of the word "picross."

Text Copyright John L. Welch 2011.


At 9:00 AM, Anonymous Anonymous said...

I shudder to think the trolling that would have gone on if the registration had been granted.

At 2:53 PM, Anonymous Fred said...

Picross, exactly....really, the more you read these decisions the more confused one becomes as to what will and will not be approved

At 2:14 PM, Anonymous Reid said...

Generally, ortho offices do very little grinding. You should have gone with OMS or prosthodontics. Thanks, as always, for the post, though!


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