CAFC Affirms TTAB in Genericness Refusal of MODULAR GABION SYSTEMS for . . . . Guess What?

In a nonprecedential decision, the CAFC upheld the Board's affirmance [pdf here] of a refusal to register the proposed mark MODULAR GABION SYSTEMS for "Gabions of steel wire" on the grounds of genericness or, alternatively, mere descriptiveness and lack of acquired distinctiveness. In re C.E. Shepherd Company, LLC, Appeal No. 2023-1308 (Fed. Cir. August 1, 2024) [not precedential].

The appellate court noted that a gabion is a metal cage that may be filled with rocks and used in constructing dams, embankments, and other structures.

“Genericness and acquired distinctiveness are factual determinations that we review for substantial evidence.” In re Louisiana Fish Fry Prods., Ltd., 797 F.3d 1332, 1335 (Fed. Cir. 2015). Substantial evidence “means such relevant evidence as a reasonable mind might accept as adequate to support a conclusion.” Consol. Edison Co. of New York v. NLRB, 305 U.S. 197, 229 (1938).

In its genericness analysis the Board relied on dictionary definitions, on third-party usage, and on Shepherd's own use of the proposed mark to refer to a type of product rather than a source. Its finding that the public used the proposed mark generically was supported by substantial evidence.

Contrary to C.E. Shepherd’s contention, the Board did not err in crediting evidence from international websites, given its finding that they were in English and were directed to the United States market. See In re Bayer AG, 488 F.3d 960, 966, 969 (Fed. Cir. 2007) (explaining potential relevance of foreign internet evidence).

As to the mere descriptiveness refusal, Shepherd challenged only the Board's finding regarding acquired distinctiveness. The court ruled that the Board "reasonably concluded that C.E. Shepherd did not meet its burden [of proof]."

For example, the Board found that the customer affidavits submitted by C.E. Shepherd had little probative value because the affiants were not necessarily representative of the market. The Board also put little weight on C.E. Shepherd’s advertising expenditures because the figures seemed modest and there was no evidence about what C.E. Shepherd’s competitors spent on advertising. C.E. Shepherd takes issue with these findings, but “[w]e may not reweigh this evidence on appeal.” In re Warsaw Orthopedic, Inc., 832 F.3d 1327, 1333 (Fed. Cir. 2016). The Board reasonably assessed the evidence, and substantial evidence supports its conclusion.

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Text Copyright John L. Welch 2024.