Monday, May 09, 2005


Despite some recognition as the source of the involved services, Applicant Direct Response failed to overcome the PTO's refusal to register TEACHERS' INSURANCE PLAN on the Supplemental Register (INSURANCE PLAN disclaimed). The Board agreed that the term is generic for "Insurance services, namely underwriting insurance in the fields of property, casualty and automobile insurance; Insurance claims administration and processing; insurance consultation and insurance brokerage services." In re Direct Response Corp., Serial No. 76121702 (March 8, 2005).

Applying the CAFC's two-step genericness analysis set forth in H. Marvin Ginn Corp. v. Int'l Assn. of Fire Chiefs, Inc., 228 USPQ 528, 530 (Fed. Cir. 1986), the Board, as if often does, found the identification of services in the application to be "an appropriate description of the class [or genus] of services." The Board also concluded that it must "review the evidence of record to determine what is the likely perception of TEACHERS' INSURANCE PLAN by a relatively broad 'relevant public.'"

The Board noted that Direct Response's web pages "do not contain any self-defeating uses of 'teachers' insurance plan,' i.e., use in a way that would be perceived as generic." More probative, however, were dictionary definitions and Nexis excerpts.

Although the three words in combination retain their ordinary dictionary meanings, under In re American Fertility Society, 51 USPQ2d 1832, 1836-7 (Fed. Cir. 1999), that is not enough:

"When, however, words are combined in a phrase, although we still consider dictionary definitions of the individual words as evidence of the likely perception of the whole phrase, the examining attorney must present additional evidence establishing generic use of the phrase."

The Nexis evidence submitted by the PTO and by Direct Response was a "“mixture"” of generic uses and references to Applicant. The Board observed that in In re Merrill, Lynch, Pierce, Fenner & Smith, Inc., 4 USPQ2d 1141, 1143 (Fed. Cir. 1987), a similar mixture of uses led to the conclusion that CASH MANAGEMENT ACCOUNT was not generic "because, inter alia, there was 'recognition in a substantial number of publications that the source of the CASH MANAGEMENT ACCOUNT was [Merrill, Lynch].'" However, the Board distinguished that case:

"we find that 'teachers' insurance plan' has been a name for insurance plans for teachers since well prior to applicant's first use of the proposed mark in October 2000, in conjunction with applicant's attempts to expand what was a business conducted in a limited area under a composite word and design mark that included a disclaimer of the words now proposed to be separately registered as a mark. *** Unlike Merrill Lynch, this is not a case in which applicant has pioneered a product or service and only later has had to deal with generic uses of its proposed mark by others."

The Board concluded that, although Direct Response may have developed "some recognition ... as a source of the identified services," when the phrase is used by others it "could not be perceived as anything but the name of insurance plans for teachers."

TTABlog comment: For a discussion of the CAFC's current tests for genericness, which differ for compound words as opposed to phrases, see Section IIB of my recent article, "The TTAB in 2004: What Was Hot, What Was Not."

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


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