TTAB Deems STUDENT ALLY Generic for . . . . Guess What?

You probably guessed it, didn't you? I once knew a student named Ally, so that threw me off. The Board, in a 35-page opinion, upheld a refusal to register, on the Supplemental Register, the proposed mark STUDENT ALLY, finding the term to be generic for "Providing training for University administration on compliance with governmental regulations, claims investigations, evidence collection and location-based student safety emergency alert systems." It concluded that "STUDENT ALLY would be understood by the relevant consumers to refer a key aspect of Applicant’s services: that is, training to foster support for students, particularly those who are targets of discrimination or are otherwise marginalized." In re Student Ally, Inc., Serial No. 90046632 (June 5, 2024) [not precedential] (Opinion by Judge Jennifer L. Elgin).

Examining Attorney Michael Eisnach submitted dictionary definitions and a raft of examples of Applicant’s own use and of third-party use. The Board found that “[n]othing is left for speculation or conjecture in the alleged trademark,” because the phrase “immediately and unequivocally describes the purpose, function and nature” of Applicant’s services.

Applicant argued that these materials show use of the phrase STUDENT ALLY in a “trademark sense.” The Board observed, however, that such use does not render the phrase non-generic. "Applicant’s intent to exclusively appropriate the phrase as its trademark is not at issue. The issue is whether STUDENT ALLY is recognized as a trademark for the identified training services by the relevant public."

Applicant’s generic uses strongly imbue its trademark uses with an overall generic meaning, and are strong evidence that the relevant public of university administrators views STUDENT ALLY, as a whole, to refer to a key aspect or function of Applicant’s services.

Applicant also attempted to distinguish its services from those reflected in the USPTO's evidence, asserting that "[t]he term 'Student Ally' and 'student ally' as cited are used for very different student programs by universities and colleges, and have no common meaning." It pointed out that “there is no competition between the various cited ‘Student Ally’ programs and Applicant’s services of providing training for university administration in the specified areas.”

The Board was not moved, noting that applicant's services are identified broadly, and include training on "governmental regulations, claims investigations, evidence collection and location-based student safety emergency alert systems.” 

The evidence indicates that at least six of these universities offered training on governmental legislation and regulations as part of their services.  The evidence also shows that Title IX investigators may be known as “student allies.” And almost all of the third party university evidence, broadly speaking, concerns student safety and well-being.

The Board pointed out that the “fact that there is no evidence of third-party use of the precise term” STUDENT ALLY for applicant’s precise training services “is not, by itself, necessarily fatal to a finding of genericness.” Mecca Grade Growers, 2018 TTAB LEXIS 64, at *24; see also In re Empire Tech. Dev. LLC, 2017 TTAB LEXIS 232, at *60 (TTAB 2017) (it is a “well-settled principle that being the first and only user of a generic term even if the public associates it with the first user does not make an otherwise generic term non-generic.”).

“To allow trademark protection for generic terms, i.e., names which describe the genus of goods [or services] being sold, even when these have become identified with a first user, would grant the owner of the mark a monopoly, since a competitor could not describe his goods [or services] as what they are.” In re Pennington Seed, Inc., 466 F.3d 1053, 1058 (Fed. Cir. 2006) (quoting Merrill Lynch, 1828 F.2d at 1569).

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TTABlogger comment: The Board declined to address the USPTO's failure-to-function refusal, but then genericness is a type of failure-to-function, isn't it?

Text Copyright John L. Welch 2024.