Tuesday, June 12, 2007

Precedential No. 40: Petition to Cancel Registration on Ground that Portion of Mark is Generic is Time-Barred by Section 14(3)

In a case of first impression, the TTAB ruled that a registration that is more than five years old may not be cancelled on the ground that a portion of the registered mark is generic. Section 14 of the Trademark Act provides for cancellation of such a registration when the registered mark is, as a whole, generic. It does not provide for cancellation in the circumstances presented here. Finanz St. Honore, B.V. v. Johnson & Johnson, 85 USPQ2d 1478 (TTAB 2007) [precedential].

Johnson & Johnson, by way of counterclaim, sought to cancel two registrations for the mark LOVE'S BABY SOFT for cologne, body wash, and other such products. As one of the grounds for cancellation, J&J contended that BABY SOFT is generic for Opposer/Respondent's goods and that the two challenged registrations "issued improperly without disclaimers of the term 'baby soft.'"

Opposer/Respondent Finanz moved to strike this ground on the basis that such a claim is time-barred by Section 14 because the two registrations were more than five years old.

Section 14(3), the Board observed, provides that after a registration's five-year anniversary, it may be cancelled only on certain specified grounds. More specifically, Section 14(3) says that a registration may be cancelled "if the registered mark becomes the generic name for the goods or services, or a portion thereof, for which it is registered." Also, "[i]f the registered mark becomes the generic name for less than all of the goods or services for which it is registered, a petition to cancel the registration for only those goods or services may be filed."

Section 14 does not provide for cancellation of a registration if a portion of the mark is generic, rather than the whole mark. Consequently, the Board granted the motion to strike.

TTABlog comment: I cannot fathom how the phrase BABY SOFT could be generic for cologne, body wash, body powder, deodorant, etc. Descriptive maybe, but generic? Gimme a break!

Text Copyright John L. Welch 2007.


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