Thursday, May 12, 2005

In A Non-Precedential Opinion, CAFC Affirms Genericness Of "PRECISION CUTS"

Precision Cuts, Inc. of Bend, Oregon, lost its appeal to the CAFC from the TTAB's ruling that PRECISION CUTS is generic for barbershop services. In re Precision Cuts, Inc., Appeal No. 05-1024 (May 11, 2005). PCI sought, under Section 2(f), to register the stylized mark shown immediately below, for "barbershop and tanning salon services," but the Examining Attorney required a disclaimer of the words "PRECISION CUTS."

The TTAB affirmed the refusal to register (link), relying on some 60 NEXIS excerpts showing that "the term 'precision cut(s)' has been used to identify a type or style of haircut." The Board brushed aside PCI's argument that 60 articles out of millions of articles in the database is an insufficient basis on which to conclude that "these words are or will be recognized by at least a majority of the relevant purchasing public, that is, barbershop customers, to primarily signify the name of applicant's services."

On appeal, PCI contended that the requisite "substantial evidence" was not of record to support the genericness finding, but the CAFC disagreed:

"The quantum of evidence required is 'such relevant evidence as a reasonable mind might accept as adequate to support a conclusion.' A reasonable person's credulity would be satiated by the hundreds of NEXIS search returns that the examiner, and the Board, relied upon to establish a prima facie case that the terms are generic."

Noting that "[a]ny competent source suffices to show the relevant purchasing public's understanding of a contested term," the court ruled that the 60 "representative" articles submitted by the PTO were enough. There is no requirement that the PTO "administer consumer surveys to discharge its burden, and the absence of survey results from this record does not alter the sufficiency of the evidence."

Thus the CAFC concluded that the Board's decision is supported by substantial evidence, and it affirmed.

TTABlog comment: In the Board's decision, PCI was given thirty days to file a disclaimer of "PRECISION CUTS," in which case the refusal to register would be set aside and the mark would be registered under Section 2(f) (based on PCI's 15 years of use of the stylized mark).

However, as the CAFC noted, the acceptance of the Section 2(f) declaration establishing secondary meaning for the mark as a whole has no effect on the requirement that the generic phrase be disclaimed.

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


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