Thursday, December 22, 2011

TTAB Finds HANGBOARD Not Generic for ... Guess What?

Okay, that's an unfair question. HANGBOARD could be "not generic" for a roast beef sandwich, or most anything. But what about "winter sports and recreation equipment, namely, snowboards, sleds?" Applying the In re Gould test for compound words, the Board concluded that the PTO had failed to meet its burden to prove genericness by clear evidence, and so the Board reversed the refusal to register the mark on the Supplemental Register. In re SEI Manufacturing, Inc., Serial No. 78648865 (December 5, 2011) [not precedential].

The Board began by finding HANGBOARD more analogous to a compound word (as in Gould) than a phrase (as in American Fertility). Therefore dictionary definitions of the constituents words may suffice to prove genericness, provided that the words when joined in the compound retain their meaning.

The Board found the genus to be adequately defined by the identification of goods. The question, then, was whether the relevant public understands the term HANGBOARD to refer primarily to that genus.

The Examining Attorney submitted definitions of HANG and BOARD, which would lead one to conclude that a "hangboard" is a "board that hangs," or "a board from which one hangs." Our Board concluded, however, that these definitions do not adequately establish that HANGBOARD is generic for the identified goods, since Applicant's product is neither. Internet excerpts submitted by the Examining Attorney used the terms "hangboard" and "hangboarding," sometimes with initial caps on the two words, but this mixed evidence was insufficient to prove of genericness.

In sum, the Board found that the PTO's evidence "falls somewhat short" of proving genericness:

This is not a case where the Office has clearly proven that the designation as a whole is no less generic than its constituents. Indeed, the dictionary definitions fail to clearly support a finding of genericness, and the Internet vidence shows mixed usage of HANGBOARD as a mark and as a descriptive term for an apparatus that allows the user to ride a snowboard while hanging from above as opposed to being attached at the feet.

The Board noted that, on a different record, such as one that might be provided by a competitor in an opposition proceeding, the result might be different. Noting that any doubt must be resolved in Applicant's favor, the Board reversed the refusal.

TTABlog comment: Well, what would you call this contraption? How about a "snow sling?" The inventor called it a HANGBOARD. Maybe if and when the thing becomes popular, evidence of genericness will be easier to amass. But so far, this Applicant has survived on that slippery slope.

Text Copyright John L. Welch 2011.


At 1:40 AM, Anonymous Anonymous said...

Isn't the term TTABlog merely descriptive of a blog about the TTAB? How did you get that term trademarked? Like could I not trademark the words phrase "sports blog" because it is merely descriptive but could trademark "sportsblog." Or is this different because you cut out a B? Future law student here trying to figure out this complicated field. Thank you for a genuine answer.

At 1:58 AM, Anonymous Anonymous said...

What compound word is Gould?

At 6:47 AM, Blogger John L. Welch said...

In Gould, the compound word was SCREENWIPE.

At 6:48 AM, Blogger John L. Welch said...

The registration for THE TTABLOG issued under Section 2(f), meaning it has acquired distinctiveness.


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