Thursday, November 10, 2005

TTAB Reverses Genericness Refusal, Deems "ACADEMIC DECATHLON" Registrable Under Section 2(f)

The Board not only reversed a PTO genericness refusal of the mark ACADEMIC DECATHLON for academic competitions and educational testing, but it also found the mark registrable under Section 2(f) in light of the mark's acquired distinctiveness. In re United States Academic Decathlon Assn., Serial No. 76343540 (October 24, 2005) [not citable].

The Examining Attorney relied on Nexis stories, pages from third-party websites, and Applicant's own website in contending that ACADEMIC DECATHLON has become "a generic term in relation to a class of competition along the lines of spelling bees, chess tournaments and science competitions."

Applicant USAD argued that its mark is a coined term, not a generic term, that much of the PTO's evidence actually refers to Applicant's services, that some of the items are merely misuses by news reporters who failed to use initial capital letters when referring to Applicant's services, that the PTO failed to submit the requisite "clear evidence" of genericness, and that any doubt on the issue must be resolved in Applicant's favor.

With regard to acquired distinctiveness, Applicant averred that it originated its "Academic Decathlon" in 1968 in California and conducted its first national competition in 1981, that its 23rd competition was held in 2004 and was covered by all three major TV networks, that 20,000 students from 1,800 high schools in 40 states participated, that its competitions have received substantial press coverage, and that none of 80 or so other academic competitions uses the phrase "Academic Decathlon."

The Board found "insufficient clear evidence" to establish genericness because "the record ... shows varied uses of the phrase 'ACADEMIC DECATHLON.'" Some of the PTO evidence showed generic use of the phrase, but "many of the examples (even if in lower case letters) are direct references to applicant and/or its licensees." Moreover, none of the PTO evidence predated applicant's first use dates.

The Board did find, however, that the evidence supported a Section 2(e)(1) refusal because the term ACADEMIC DECATHLON is merely descriptive of academic competitions involving ten scholastic events.

Turning to Section 2(f), the Board noted that the evaluation of this evidence requires "a subjective judgment as to its sufficiency based on the nature of the mark and the conditions surrounding it use." The more descriptive the term, the more evidence necessary. The Board found that here:

"there has been substantial exposure to the relevant public. Even though applicant has not supplied annual advertising or sales figures, we find that applicant has established a prima facie case that is [sic] mark has acquired distinctiveness."

The Board therefore reversed the genericness refusal and the Section 2(e)(1) refusal, deeming the mark registrable under Section 2(f).

TTABlog comment: The Board was rather loose with its statutory terminology in this decision. It referred to both the genericness refusal and the mere descriptiveness refusal as falling under Section 2(e)(1) of the Trademark Act. Of course, that is incorrect as to the first refusal. Section 2(e)(1) does not refer to genericness. See TMEP Section 1209.01(c)(ii).

The Board also stated that it reversed the "refusal to register under Section 2(f)." However, Section 2(f) does not provide a basis for refusal, but rather a means for overcoming a refusal. The Board was reversing the 2(e)(1) refusal in light of the evidence of acquired distinctiveness under Section 2(f).

Text Copyright John L. Welch 2005.


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