Monday, May 22, 2006

Massachusetts Federal Court Deems "WOOLFELT" Generic for Wool Felt

With the Board's decisional outflow reduced to a mere trickle these past few weeks, I decided to report on a D. Mass. case that just appeared in the USPQ2d. Judge Michael Ponsor (who sits in Springfield) ruled on summary judgment that the term WOOLFELT is generic for wool felt. National Nonwovens Inc. v. Consumer Products Enterprises Inc., 78 USPQ2d 1526 (D. Mass 2005).

Plaintiff National Nonwovens brought suit claiming, inter alia, that Consumer Products Enterprises (CPE) was infringing its registered WOOLFELT trademark. CPE successfully moved for summary judgment on all counts; in particular it challenged Nonwoven's alleged mark on the ground of genericness. The court found that:

"overwhelming evidence of use by Plaintiff and retaliers, in books and magazines, in government documents, and from the internet, shows that 'wool felt' is, and has long been, a common name for the product Plaintiff and Defendant sell. Based on this evidence, no reasonable factfinder could conclude that the term 'wool felt' is anything other than a generic term for the parties' merchandise."

The court noted that Nonwovens' use of the term in compound form rather than as "wool felt" does not avoid genericness, nor its presentation as WOOLFELT or WoolFelt change the outcome.

Nonwovens contended that survey evidence is required to assess the usage of the term "wool felt," but the court felt otherwise: "Survey evidence is appropriate in cases where the question is whether a coined product name has become generic." Here, however, neither party claimed that Plaintiff invented the term "wool felt" or that the term has become "genericized." Therefore, the "primary significance test" of Section 1064(3) of the Lanham Act is inapposite and survey evidence is unnecessary.

The court also tossed out Nonwovens' copyright infringement claims, its unfair competition claims, and its trade dress infringement claims. But Plaintiff did manage to avoid an award of attorney's fees, the court noting as to the trademark infringement claim that "Nonwovens' ownership of two registered trademarks suggests that, at a minimum, Plaintiff had a colorable claim for a trademark violation."

TTABlog note: A hat tip to Pamela Chestek, whose membership on the successful defense team is unacknowledged in the USPQ2d report.

Text Copyright John L. Welch 2006.


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