TTAB Affirms Genericness Refusal of "BABY GUIDE" for ... Guess What?
Noting that the issue of genericness must be determined at the time registration is sought, regardless of whether the applied-for term was once merely suggestive, the Board affirmed a genericness refusal of BABY GUIDE for "Printed guides for new or expectant parents featuring a directory of third-party retailers and entities offering products or services related to pregnancy and parenting" and "Hosting an online website for new or expectant parents featuring a directory of third-party retailers and entities offering products or services related to pregnancy and parenting." In re Bliss Publications, LLC, Serial No. 77779284 (July 23, 2012) [not precedential].
As usual, the Board found the genus to be "appropriately defined by the description of goods and services recited in the application." It then found, without any guidance from Applicant or the PTO, that the relevant public is ...... [wait for it!] ...... "new or expectant parents seeking products or services related to pregnancy and parenting."
Examining Attorney Doritt Carroll relied on dictionary definitions of "baby" [an extremely young child; especially: infant] and "guide" [something that provides a person with guiding information], leading the Board to perceptively conclude that "BABY GUIDE merely refers to something that provides a person with guiding information about babies." It noted that under In re Gould, dictionary definitions alone may support a genericness refusal, and it cited In re Wm. B. Coleman Co. for the proposition that the space between generic terms does not disqualify a proposed mark from the Gould analysis.[In other words, the Board did not have to consider the more difficult American Fertility test that applies to phrases. -ed.].
Moreover, a number of third-party web sites displayed the term "baby guide" in connection with online and printed guides, demonstrating that "baby guide" is "commonly used, not only by consumers but also by competitors, to refer to printed or electronic publications or directories containing information for new and expectant parents about babies and products for babies."
Applicant Bliss asserted that these third-party uses occurred long after its first use of BABY GUIDE, but the Board pointed out that, even if the term were at one time entitled to registration, the issue of registrability must be determined at the time registration is sought: "a term that was once suggestive may later become merely descriptive or even generic."
Bliss feebly contended that BABY GUIDE is a double entendre because "the term does not suggest products which may only be used by a baby." The Board found no evidentiary support for that argument.
Finally, Bliss hopelessly pointed to third-party registrations for marks containing the words BABY or GUIDE, without disclaimer, but the Board found them to be non-probative, in part because the Board must decide each case on its own merits and "a mark that is merely
descriptive or generic must not be registered on the Principal Register simply because other marks with common terms appear on the register."
And so the Board affirmed the refusal.
TTABlog comment: It looks like the evidence would have satisfied American Fertility as well, since it included uses of the entire phrase.
Text Copyright John L. Welch 2012.