Friday, May 29, 2015

TTAB Test: Is "ALOE BIOSCIENCE" Generic for Aloe-Containing Personal Products?

The USPTO refused registration on the Supplemental Register, of the applied-for mark ALOE BIOSCIENCE, deeming it generic for, inter alia, dietary drinks, lotions, creams, toothpaste, and other aloe-containing products (in International Class 5). The examining attorney maintained that "bioscience" is used as an entity designator by companies involved in the bioscience industry, and fails to function as source indicator for applicant's goods. Applicant contended that "[w]hen ALOE and BIOSCIENCE come together to form the composite mark, they create a bizarre or incongruous meaning and evoke a new commercial impression." How do you think this came out? In re Aloe Bioscience, LLC, Serial No. 85531266 (May 12, 2015) [not precedential].

The Board observed that, although "Bioscience" is used in company names, that does not mean that the word is necessarily being used generically or that it is an entity designator. In several instances, "Bioscience" was being used as part of product brand names or as part of company names preceding the entity designator "Inc."

The fact that companies have utilized "Bioscience" in their names to describe the nature of their business does not render "Bioscience" generic for the goods at issue in this application. Taken in its entirety, the evidence establishes that "Bioscience" is merely descriptive term for a company involved with goods such as Applicant’s goods....

Applicant offered several feeble arguments: that aloe has many different meanings (but, as the Board noted, not when considered in the context of the identified goods); that the term ALOE BIOSCIENCE is not found in the dictionary (irrelevant); that consumers would not immediately understand from the term ALOE BIOSCENCE that the goods sold under the mark are those identified in the application (this is not a guessing game); and that eleven marks containing the word ALOE are already registered (but in 10 of them, "aloe" was either disclaimed or was combined in single word mark).

As to the argument that the combination of ALOE and BIOSCIENCE is incongruous, Applicant did not provide any factual support or explanation of either the supposed "bizarre or incongruous meaning," or the new commercial impression supposedly created by ALOE BIOSCIENCE.

The Board pointed out that the USPTO must prove genericness by clear evidence, and it concluded that the evidence here failed to meet that standard.

While “aloe” may be a generic term for the goods which contain "aloe," "bioscience" merely describes a feature or characteristic of the goods. The internet evidence also does not show the genericness of ALOE BIOSCIENCE or of "Bioscience." *** Even if we treat ALOE BIOSCIENCE as a phrase, rather than a compound term, the record supports the finding that ALOE BIOSCIENCE is not generic when used in connection with Applicant’s goods even in the absence of evidence that Applicant’s competitors use the term ALOE BIOSCIENCE.

And so the Board reversed the refusal.

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TTABlog note: Three days after this decision was issued, the CAFC pointed out in the PRETZEL CRISPS case that there is no dichotomy between compound words and phrases when assessing genericness. The Board here conducted the type of analysis that was criticized by the CAFC, but since the refusal was reversed, no harm was done.

Text Copyright John L. Welch 2015.


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