Wednesday, February 20, 2013

TTAB Finds MECHANIC to be Generic for ... Guess What?

The TTAB affirmed a refusal to register the term MECHANIC on the Supplemental Register, finding it to be generic for "maintenance and installation of waste handling equipment in the nature of compactors, pre-crushers and hoppers; repair and maintenance of waste handling equipment in the nature of refuse and waste handling trucks, compactors, pre-crushers and hoppers." In re Waste-Away Group, Ltd., Serial No. 77887354 (February 5, 2013) [non precedential].

Examining Attorney Benji Paradewelai relied on dictionary definitions and on third-party websites in contending that the term "mechanic" identifies a type of repair and maintenance services. Applicant argued that the PTO's evidence uses the term "mechanic" to refer to a person, not to services.

The Board first determined the genus of services to be "repair and maintenance services for refuse and waste handling trucks and equipment, such as compactors, pre-crushers and hoppers."

The relevant public for the Board's consideration comprised "waste handling companies that are in need of repair and maintenance services for their machinery and vehicles."

Turning to the record evidence, the Board noted that "mechanic" is defined as "a person who repairs and maintains machinery, motors, etc." However, the "central focus" of applicant's activities consists of the offering of the services of a mechanic. Members of the relevant public, the Board observed, would "readily understand the proposed mark MECHANIC to identify repair and maintenance services which, by necessity, are rendered by a mechanic." [What about a robotic vacuum cleaner? - ed.]

The Board has held that a term that names the provider of goods or services is also generic for those goods or services: e.g., OFFICE MOVERS, INC. for office moving services; THE PROFESSIONAL HEALTH CARE PEOPLE for temporary employment services; THE COMPUTER STORE for computers and computer book outlet services.

Here, given the widespread use of "mechanic" in connection with repair and maintenance services, the Board concluded that the term is incapable of distinguishing the source of applicant's services. And so it found the proposed mark MECHANIC to be generic for applicant's services.

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Text Copyright John L. Welch 2013.


At 5:51 AM, Anonymous Anonymous said...

Mr. Welch. I had a question about proving genericness. Can a borderline generic term be even more susceptible to a cancellation if it does not employ the "tm" and "r" characters with its trademarks? Is there any requirement to using these marks and if so, can you pont me to any relevant cases before the ttab? Thank you so much. HUUGE fan of your work.

At 10:16 AM, Blogger John L. Welch said...

I don't think the TM or R helps in genericness or descriptiveness cases. They help when the issue is whether the term is functioning as a trademark: e.g., are the words appearing merely as part of the text or are they set off in such a way that the consumer would recognize the use as a source-identifying use.


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