Wednesday, June 29, 2005

TTAB Reverses Poorly Supported PTO Genericness Refusal Of "ENGINEERED PRODUCTS"

The PTO didn't come close to providing the "clear evidence" required to prove the mark ENGINEERED PRODUCTS generic for "storage and materials handling systems, namely, metal racks, metal pallets, conveyors and conveyor controls sold as a unit." Ergo, the Board reversed the genericness refusal, but it affirmed the PTO's Section 2(e)(1) refusal and its rejection of Applicant's 2(f) claim of acquired distinctiveness. In re Engineered Products, Inc., Serial No. 76511361 (June 3, 2005) [not citable].

engineered products

The Examining Attorney feebly contended that ENGINEERED PRODUCTS "aptly and commonly describes a salient feature of the system .... [I]t tells the public that said system was the result of scientific development and testing." In support, he provided dictionary definitions of the constituent words and excerpts of three items (a press release and two wire service stories) obtained from the NEXIS database, and he pointed to Applicant's specimen of use, which referred to the company as "engineers ... for warehousing, storage, and handling systems."

The Board was not impressed. It found no clear evidence "as to how ... purchasers would perceive ENGINEERED PRODUCTS in relation to the identified goods," and it found the NEXIS excerpts of no probative value.

"The press release describes a Commission report of the European Communities concerning 'human tissue engineering.' The wire service reports are directed to business, technology and environmental editors, not purchasers. Thus, the NEXIS evidence fails to reflect the relevant public's understanding of the term 'engineered products.'"

Moreover, it was not clear from the PTO's evidence that "'engineered products'" designates applicant's particular category of products."

Perhaps in exasperation at the PTO's failure of proof, the Board noted that "[a] different and more complete record, however, presented perhaps in the context of an inter partes proceeding, may produce a different result."

Human tissue engineering?

Turning to the question of distinctiveness, the Board first noted that Applicant had not reserved the question of inherent distinctiveness, and therefore its Section 2(f) claim was "tantamount to a concession that the mark is not inherently distinctive." In view of the "highly descriptive nature of ENGINEERED PRODUCTS," Applicant faced a heavier Section 2(f) burden of proof, a burden it failed to carry. It submitted a declaration attesting to five years of use (although it had claimed fifty), but no sales figures or advertising expenditures, and no evidence as to "how the purchasing public would view the designation."

Therefore, the Board affirmed the PTO's mere descriptiveness refusal.

TTABlog comment:The Board agreed with the PTO that ENGINEERED PRODUCTS is an "apt" name for the goods and thus would "without question" be considered highly descriptive of the product. But was the skimpy proof provided by the PTO sufficient to show the phrase to be "highly descriptive"? The Board noted the flimsiness of the NEXIS evidence, and so essentially the PTO's only sound proof consisted of the dictionary definitions. By declaring the mark "highly descriptive," the Board, of course, could apply a higher standard of proof for secondary meaning.

The TTABlog suggests that, once the PTO failed to prove its genericness case, this Board panel was determined not to let this mark be registered. So it jumped to the conclusion that a higher 2(f) standard of proof was applicable, and thus it was easier to find that the proof was inadequate. That conclusion seems to be the product of some bad human issue engineering.

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


Post a Comment

<< Home