Tuesday, March 28, 2006

TTAB Says "BYK-RAK" Generic for Bus Bike Racks

Applicant Midwest Bus Corporation's "creative misspelling" argument ran into a major roadblock in the person of Examining Attorney Allison P. Schrody, who refused registration of the term BYK-RAK for ""a rack for a bus transporting bicycles." The Board affirmed, finding the term to be generic and therefore ineligible for the Supplemental Register. In re Midwest Bus Corp., Serial No. 76393583 (March 17, 2006) [not citable].

Applicant argued that the term "bike rack" is not generic but merely descriptive, and that BYK-RAK is "more than a mere misspelling, but a creative and distinguishing makeup of words that create a distinctive commercial impression." Examining Attorney Schrody contended the opposite. The Board agreed with her.

The Board began its analysis by noting that the relevant public for the subject goods would be a "more limited group than all ordinary consumers" -- namely, buyers for transit systems. The category of goods involved in this case is "bike racks," or "a bike rack that is attached to a bus."

The Examining Attorney submitted dictionary definitions of "bike" and "rack," and various NEXIS and Internet excerpts showing use of the composite term "bike rack" for a rack attached to the front of a bus for transporting bikes.

As to the understanding of the relevant public, the Board found that the PTO's evidence "demonstrates that members of the relevant public understands [sic] the term 'bike rack' to refer to a holder for a bicycle, whether attached to the ground, a building, or a vehicle, such as a bus." Citing McCarthy on Trademarks and Unfair Competition, the Board observed:

"In an oft-quoted analogy, a mark answers the question of 'Who are you?' or 'Where do you come from?' The name of the product answers the question of 'What are you?' If the question 'What are you' were to be put with respect to a rack for bicycles mounted on the front of a city bus, 'bike rack,' spelled correctly, clearly answers the query most succinctly."

As to Applicant's argument that the misspelling BYK-RAK creates a distinctive commercial impression, the Board, quoting extensively from the Examining Attorney's brief, concluded that "the question of whether the spelling or pronunciation of BYK-RAK is obvious must always be considered in relation to applicant's goods, bike racks for buses." Applicant's misspelling is not particularly creative, since "'bike rack' is the only plausible pronunciation of applicant's proposed mark." Finally, a hyphen is often used to link words that modify one another and is therefore not distinguishing.

Moreover, the Examining Attorney pointed out "how closely the alleged mark in the instant case tracks past cases of misspelled terms refused registration": C-THRU for transparent rulers, MINERAL-LYX for mineral licks for feeding livestock, and ICE PAK for ice packs. She also distinguished cases in which the alleged mark was presented in a distinctive appearance or design [e.g., the word BALSAM presented in a "stylized font featuring 'curlicues' on nearly every letter," allowed registration on the Supplemental Register for hair care products, but with the word BALSAM disclaimed].


The Board therefore, not surprisingly, affirmed the refusal to register.

Text Copyright John L. Welch 2006.


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