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 In re Deus Vult, LLC, Serial No. 87186211 (January 30, 2019, corrected February 11, 2019) [not precedential] (Opinion by Judge Frances Wolfson).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.

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

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