Wednesday, August 16, 2006

TTAB Finds "DOE IN ESTRUS" Generic for ... Guess What?

Well, that was kind of a trick question because DOE IN ESTRUS is a generic adjective and not a generic noun. It's like ATTIC for automatic sprinklers. Hence, the Board found DOE IN ESTRUS to be generic for "buck lures and doe scents used in hunting," and it affirmed a refusal to register on the Supplemental Register. In re Wildlife Research Center, Inc., Serial No. 78444661 (July 20, 2006) [not citable].

The first three pages of the decision read very much like the NUTRITION BULLETIN decision TTABlogged yesterday. That's not surprising, since both decisions were penned by Judge Grendel.

Examining Attorney Martha L. Fromm submitted numerous NEXIS excerpts establishing that "doe estrus" is a type of buck lure and doe scent used by deer hunters. Internet web page printouts showed generic use of "doe in estrus" to refer to a type of lure or scent. And at several of the Internet pages, Applicant Wildlife shot itself in the hoof (so to speak) by using the term "doe in estrus" generically in connection with its products.

Wildlife retorted feebly, arguing that the PTO examples demonstrated use of the term as an adjective modifying a noun, such as "scent" or "product" or "lure." Therefore, Applicant reasoned, the term "cannot possibly be the name of the product."

The Board, however, concluded that the evidence "clearly establishes that 'doe in estrus' would be recognized by the purchasing public as referring to a type or category of buck lure and doe scent, and that it is therefore generic for applicant's goods." As to Wildlife's adjective argument, the Board was not impressed:

"As noted by Professor McCarthy, '[a] rule of thumb sometimes forwarded as distinguishing a generic name from a descriptive term is that generic names are nouns and descriptive terms are adjectives. However, this 'part of speech' test does not accurately describe the case law results'. J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition Sec. 12:10 (4th ed. updated June 2006). See, e.g., In re Sun Oil Co., 426 F.2d 401, 165 USPQ 718 (CCPA 1970)(CUSTOMIZED generic for gasoline); In re Helena Rubenstein, Inc., 410 F.2d 438, 161 USPQ 606 (CCPA 1969)(PASTEURIZED generic for face cream); and In re Central Sprinkler Co., 49 USPQ2d 1194 (TTAB 1998)(ATTIC generic for automatic sprinklers for fire protection)."

The Board therefore affirmed the refusal to register.

Text Copyright John L. Welch 2006.


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