Wednesday, July 06, 2005

TTAB Finds "STORAGE OUTLET" Generic for Self-Service Storage Facilities

Insomniacs will want to save this decision involving California-based CT Realty's failed attempt to overturn a genericness refusal of the mark STORAGE OUTLET for "providing self-service storage facilities for general consumer and business use." In re CT Realty Corp., Serial No. 75841424 (June 22, 2005) [not citable]

CT Realty sought registration on the Supplemental Register, but the Examining Attorney deemed the term incapable of distinguishing Applicant's services. (Section 23).

Under the Marvin Ginn test, the PTO was required to show by "clear evidence" that the relevant public understands the term STORAGE OUTLET primarily to refer to self-service storage facilities for general consumers and business use.

The Examining Attorney relied on NEXIS excerpts of newspaper and magazine articles using the terms "storage outlet" and "self-storage outlet" to refer to a type of self-storage facility. CT Realty argued that many of these excerpts were irrelevant, and that the evidence failed to show that a "majority" of the public regards STORAGE OUTLET as generic.

CT pointed to print outs from the websites of other companies and to newspaper articles in which the terms "self-storage facilities," "self-storage [mini] warehouses," and "self-storage centers" are used to refer to the same services, but not "storage outlet." It argued, based on dictionary definitions of the constituent words, that "storage" and "outlet," either alone or combined, are not generic for its services. And it noted that the industry trade association is called the "Self Storage Association," not the "Storage Outlet Association," and that local California yellow pages do not include a category for "storage outlets."

The Board, however, found "clear and sufficient" evidence in the record that STORAGE OUTLET is generic for Applicant's services. Contrary to Applicant's contention, it found the dictionary definitions of "storage" and "outlet" directly applicable: "applicant's service consists essentially of the retailing of storage space."

"The term 'STORAGE OUTLET' thus plainly designates a category or class of self-services storage facility services and ... the relevant examples of third-party use of such designation are sufficient to confirm that its primary significance to the purchasing public is that of a generic term."

The Board once again pointed out that a service may have more than one generic name, but all of them are in the public domain.

The Board conceded that the NEXIS excerpts offered by the PTO were not "numerous." Moreover, it agreed that the articles from foreign websites are irrelevant (although in several recent cases the TTAB has "liberalized its practice" in this regard when highly sophisticated scientific or technical fields are involved). However, "the relevant excerpts furnished by the Examining Attorney are unambiguous." Moreover, nearly all of the excerpts pre-date Applicant's filing date and first use date.

Therefore, the Board affirmed the PTO's refusal under Section 23.

TTABlog self-serving outlet: On the issue of the admissibility of foreign Internet evidence, see Part I.D. (pages 8-10) of "The TTAB in 2004: What Was Hot, What Was Not."

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


Post a Comment

<< Home