Monday, February 14, 2005

TTAB Reverses Genericness Refusal of "VIRUSSCAN"

Genericness refusals are not often overcome, but Applicant Network Associates accomplished not only that feat, but it also established the acquired distinctiveness of its mark VIRUSSCAN for computer utility software. In re Network Associates Technology, Inc., Serial No. 76426050 (January 25, 2005) [not citable]. [Applicant markets the popular VIRUSSCAN product through its business affiliate, McAfee, Inc.]

Both the Examining Attorney and Network Associates introduced "significant evidence" in support of their respective positions. The former contended that the term "virus scan software" is "commonly used as an alternative generic form of 'antivirus software.'" She provided numerous LEXIS/NEXIS printouts showing use of the phrase "virus scan" in connection with utility software, as well as dictionary and Internet evidence defining the phrases "virus scan" and "virus scanner" and the individual words "virus" and "scan."

Network Associates countered with "examples of how anti-virus software is marketed, advertised, and displayed without using the term VIRUSSCAN except as a trademark of applicant," with excerpts from on-line and print dictionaries that do not list the term "virus scan," and with NEXIS search results in which 96% of the hits for the term VIRUSSCAN referred to Applicant. It introduced the results of a survey directed to some 150 persons responsible for making software purchases for their companies; when asked what they would call "the type or category of computer software that is designed to protect and secure computer data, software, and computer communications networks," only one person responded "virus scan," and one said "virus protection scan."

Network Associates also proved that it spends $2 million annually for advertising, that 40,000 businesses are customers, that its VIRUSSCAN online software subscription services have nearly 2 million subscribers, and that more than 20 million persons visited its website in one particular month.

The Examining Attorney challenged Applicant's survey as being "limited to a small, non-random sample." Network Associates argued that the PTO gave insufficient weight to its evidence that its "principal competitors in the marketplace do not use the word 'SCAN' to identify their anti-virus products."

The TTAB noted that the key issue in genericness cases is "whether members of the relevant public primarily use or understand the term sought to be protected to refer to the genus of goods or services in question." H. Marvin Ginn Corp. v. Int'l Assn. of Fire Chiefs, Inc., 228 USPQ 528, 530 (Fed. Cir. 1986). It found that the Examining Attorney had met her initial burden of establishing a prima facie case of genericness.

The question then became whether Network Associates had overcome that prima facie case. The Board noted Applicant's evidence of its extensive sales and marketing, and of its competitors' business practices. As to Applicant's survey evidence, however, the Board found it "less impressive" on closer analysis. "Applicant's survey questions are more like a guessing game. The questions provide just enough information so that participants can guess about applicant's product but not enough information to understand what the specific product is." Nonetheless, the Board did give the survey evidence some weight, because "[v]irtually no respondent identified 'virus scan' as the name of the software."

In view of all the evidence, the Board concluded that the PTO did not meet its ultimate burden to clearly show that the term VIRUSSCAN is understood by the relevant public to refer to the genus of Applicant's goods.

McAfee Coliseum -- Oakland, California

Turning to the issue of secondary meaning, the Board ruled, with little analysis or discussion, that Network Associates had met its burden under Section 2(f).

Text ©John L. Welch 2005. All Rights Reserved.


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