Friday, November 26, 2004

"THE BEEF JERKY OUTLET" Not Generic For Beef Jerky Outlets

In In re American Food Co., Serial Number 76101362 (September 29, 2004) [not citable], the Board reversed a genericness refusal of the mark THE BEEF JERKY OUTLET for "retail services featuring meat products," even though "beef jerky" and "outlet" were recognized as generic for, respectively, a type of beef snack and a commercial market.

The Board first ruled that the genus of services may be identified as "retail store services featuring beef snacks." Turning to the phrase in question, it applied In re American Fertility Society, 51 USPQ2d 1832 (Fed. Cir. 1999), which holds that, in determining the genericness of a phrase, "the board cannot simply cite definitions and generic uses of the constituent terms of a mark. . . . in lieu of conducting an inquiry into the meaning of the disputed phrase as a whole." 51 USPQ2d at 1836 (emphasis added).

The record evidence, limited to two definitions and Applicant's own brochure, "pertains only to the constituent terms of the mark, BEEF JERKY and OUTLET." Thus the Board was "constrained" to find that "[w]hile THE BEEF JERKY OUTLET is certainly an apt name for a retail establishment that sells strips of dried beef, the evidence does not show that it is used as a generic name for such services. Aptness is insufficient to prove genericness."

The Board, however, expressed some uneasiness with the result:

"Although we have concerns here about the genericness of applicant’s designation, it is the record evidence bearing on purchasers’ perceptions that controls the determination, not general legal rules or our own subjective opinions. Any doubts raised by the lack of evidence must be resolved in applicant’s favor. * * * On a different and more complete record, such as might be adduced by a competitor in an opposition proceeding, we might arrive at a different result on the issue of genericness."

My own uneasiness with the result stems from the fact that the CAFC and the Board apply different tests to the genericness of a phrase and to the genericness of a compound word. In the latter case, dictionary definitions of the constituent words in a mark (like the term SCREENWIPE in In re Gould Paper Corp., 5 USPQ2d 1110 (Fed. Cir. 1987)) may alone be sufficient to establish genericness.

Thus under current genericness principles, the Board may well have found the compound word THEBEEFJERKYOUTLET to be generic. That is something to chew on over the holiday.


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