Thursday, September 19, 2013

TTAB Denies Petition to Cancel MUMBO Registration for Barbeque Sauce

Capital City, LLC provided evidence of some generic use of the mark MUMBO for barbeque sauce, but not enough to show that the relevant consuming public recognizes the term as a generic reference for a type of barbeque sauce. The Board therefore denied its petition for cancellation of the MUMBO registration. Capital City, LLC v. Select Brands LLC , Cancellation No. 92054587 (August 26, 2013) [not precedential].


Petitioner Capital City asserted that "mumbo" is a term used in the Washington, D.C. area since a least the early 1960's, to identify a type of condiment. After it adopted the term to describe a type of sauce, Capital City received a cease-and-desist letter from Respondent Select Brands, based in Chicago.

There was no real dispute that the genus of good at issue is barbeque sauce, and the relevant public consists of "consumers and potential consumers of barbeque sauce."

Petitioner's evidence consisted of printouts from six different retail websites, one Facebook page, and a website called "The Sauces." These materials evidenced use of a half-dozen different sauces called "mumbo sauce." One website stated that Mumbo Sauce is a "very popular sauce in the DC area." [Hearsay! - ed]. The Board was not impressed.

Although the aforementioned evidence indicates some generic use of the term “Mumbo” in connection with sauces, this evidence is of limited probative value for several reasons. First, the number of uses by third parties may be considered minimal inasmuch as the materials are drawn from seven different websites and one Facebook page. Second, there is no evidence showing the extent of exposure to these uses, i.e., there is no indication whether these are relatively obscure websites nor is there any way to determine the number of bottles, if any, of “Mumbo” sauce that have been sold by third parties. That is, there is no testimony or corroborating evidence showing that the aforementioned third-party use of the term “Mumbo” is so extensive such that we can conclude that the relevant consuming public recognizes “Mumbo” primarily as a generic reference for a type of barbeque sauce.

Respondent's evidence established its "serious efforts" to police improper uses of its MUMBO mark. [What does that have to do with genericness? - ed.].

The Board concluded that petitioner had failed to meet its burden to prove genericness by a preponderance of the evidence.

Read comments and post your comment here.

TTABlog note: Some of petitioner's proposed evidence was excluded for procedural reasons. What vehicle might petitioner employ to appeal from this decision and at the same time have the opportunity to submit additional evidence?

Text Copyright John L. Welch 2013.

6 Comments:

At 8:57 AM, Blogger Robert Frank said...

The petitioner failed for two reasons. First, they did not have enough specimens of third party use (of which there are plenty as well as plenty of generic uses if you look in the right places) and second, the examples of third party use need to be submitted through an expert's report.

 
At 9:27 AM, Anonymous Orrin A. Falby said...

Do I get another TTABLOG keychain or stress ball? If so, see my answer the last time you asked this question.:-)

 
At 11:06 AM, Anonymous Mark L. Donahey said...

If they appeal to Federal District Court, I'll be happy to testify that Chinito's Burritos, an excellent establishment down the street from me in Northeast DC, provides a generic bottle of mumbo sauce for use by its patrons. Not sure that I'm an expert on the subject though.

 
At 11:50 AM, Blogger William Maguire said...

I'm not sure of the type of vehicle that should be used to appeal this decision but it better not be more Mumbo Jumbo evidence...

 
At 12:05 PM, Anonymous Orrin A. Falby said...

Robert - as far as I know, evidence of third-party use is "usually" submitted via a Notice of Reliance. The probative value would depend on where such evidence is obtained. For example, evidence from publications (maybe an advertisement) that contains enough information to authenticate the evidence is given greater weight than evidence taken from the Internet, which is also admissible via Notice of Reliance. If some kind of survey concerning third-party use was conducted by an investigator (not sure I would consider that an expert report), that evidence might be admissible in a number of ways, including, but not limited to, testimony or notice of reliance assuming it was disclosed during the discovery period. Each piece of evidence should be carefully reviewed to determine which rule applies to getting it admitted.

 
At 7:02 PM, Anonymous Anonymous said...

What they really need to do is a get the expert opinion of DC-based trademark attorneys. It is possible to get fried fish in DC without being offered mumbo sauce. I decline because mumbo sauce is disgusting...but it is as generic as "furlough" and "clean CR" in these parts.

 

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