Tuesday, February 05, 2019

TTAB Finds COMBAT ROSARY Generic for . . . Guess What?

[This guest post was written by Kira-Khanh McCarthy, a 2L at University of Notre Dame Law School]. The TTAB affirmed a refusal to register COMBAT ROSARY (in standard characters, “Rosary” disclaimed) for “rosaries” on the ground of genericness. Applicant conceded that the term is merely descriptive by amending its initial application to seek registration on the Supplemental Register, but insisted that the mark is not generic after Examining Attorney Sophia S. Kim refused registration under Section 23(c) and Section 45. In re Deus Vult, LLC, Serial No. 87186211 (January 30, 2019, corrected February 11, 2019) [not precedential] (Opinion by Judge Frances Wolfson).

The Board sought to determine what is the genus of the goods at issue and whether relevant purchasers understand the designation primarily to refer to that genus of goods.

Genus of the Goods at Issue: The Examining Attorney asserted that the proper genus of the goods, as identified in the application, is “rosaries.” Applicant contended that the proper genus is “prayer beads” because “a rosary is a specific type of prayer bead (a species within the genus ‘prayer beads’).” The Board reviewed Applicant’s website and found that “Applicant’s specimen of use shows that Applicant identifies its product as a rosary, not as ‘prayer beads.’” Therefore, the Board found that there “is no need to broaden the genus to include all types of chains of beads or knots used for counting prayers.”

The Relevant Purchasers Understanding of “Combat Rosary”: Next, the Board needed to determine who are the relevant purchasers and how would those purchasers understand “combat rosary?” The Board found that dictionary definitions of “combat” and “rosary” exemplify that both words are “common English terms whose meanings would be grasped by all relevant purchasers.” Accordingly, any consumer who purchases rosaries is considered a member of the relevant public regardless of religious affiliation.

Then, to establish how the relevant public would understand the term, the Board turned to printouts from websites submitted by the Examining Attorney. While Applicant claimed that “all of the hits showing ‘COMBAT ROSARY’ branded rosaries are Applicant’s own goods,” it failed to submit any record evidence, declarations, or affidavits. Instead:

Several of the sites describe the combat rosary as a “pull chain rosary that was commissioned and procured by, believe it or not, the U.S. government and issued by the military, upon request, to soldiers serving in World War I. Some of these rosaries were also seen in WWII.” The majority of the websites are selling replicas of the originals.

The website evidence demonstrated that the public is likely to view the term “combat rosary” as generic and as “a military-issued rosary given to soldiers in combat during World Wars I and II, as well as replicas of these originals.” And so, the Board affirmed the refusal to register Applicant’s mark on the Supplemental Register.

Read comments and post your comment here.

TTABlog comment:  Is this a WYHA?, pray tell.

Text Copyright Kira-Khanh McCarthy and John L. Welch 2019.


At 10:01 AM, Anonymous Jason Blair said...

Hey John, where did you get that Jason Paul Blair was the examining attorney on this one? Since I AM Jason Paul Blair, and I don't remember this file, I checked the record.... Samir Patel was the examining attorney.

I thought I was suffering some SERIOUS dementia for a minute! (Thanks for the random shout out, though! PS... I'm no longer at the USPTO after 13 years.)


At 7:36 AM, Blogger John L. Welch said...

Hello, Jason.
You are named as the examining attorney on the first page of the opinion.
Did you change your name from Samir Patel at some point?

At 12:08 PM, Anonymous Jason Blair said...

That is so odd! Looks like the TTAB copied and pasted the wrong attorneys in there. The prosecution history and brief were clearly written and filed by Law Office 106... But yet here the decision is, listing Law Office 104 as the attorneys!

At 7:16 PM, Anonymous Anonymous said...

Could the refusal have anything to do with the fact that about 4 companies are making these types of rosaries? I am currently researching "combat rosaries".

This rosary style is a reproduction of a historical design that the US Government issued in WWI. All 4 companies making them call them generically "combat rosary". Only one company has an actual registered trademark for them and that mark is "WWI Battle Beads". The company is Cordbands LLC and they sell these at https://www.cordbands.com/collections/battle-beads. They also refer to them generically as service combat rosaries. I believe the original WWI versions were also called service combat rosaries back in 1916.

I also notice that the company that was trying to get a trademark on "Combat Rosary" actually is selling these on their website, romancatholicgear.com and displaying the registered trademark symbol all over their website, even though they were unable to get the registration. Is that even legal?

So I wonder if all this was taken into account, if the USPTO does their own research, or if they only look strictly at the legal docs sent to them from the lawyers.

--- A rosary collector.


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