Tuesday, June 19, 2007

TTAB Finds "THE MADELEINE COOKIE COMPANY" Generic, Ineligible for Supplemental Register

Ignoring the CAFC tests for genericness, the Board affirmed a refusal to register THE MADELEINE COOKIE COMPANY on the Supplemental Register, finding the mark to be generic for "bakery goods, namely, madeleines." In re Donsuemor, Inc., Serial No. 78393418 (June 7, 2007) [not precedential].

There was no real dispute that MADELEINE COOKIE is generic for Applicant's goods. The question was whether the additional words THE and COMPANY affect the generic meaning of MADELEINE COOKIE so that the entire phrase is not generic.

The Board reviewed several of its relevant precedents, focusing particularly on In re Paint Products Co., 8 USPQ2d 1863 (TTAB 1988). There, the Board rejected an attempt to register, under Section 2(f), the designation "PAINT PRODUCTS CO." for paints, deeming the phrase incapable of distinguishing the goods.

Here, the Board observed that "cookie company" is a phrase commonly used to refer to a company that makes cookies, and concluded that, as in the PAINT PRODUCTS CO. case, "the phrase should remain available to applicant's competitors."

"... as the Supreme Court has held, one cannot obtain the right to the use of the name of an article simply by including the word 'company' with that name. Finally, the inclusion of the word THE ... does not add any source-identifying significance."

The Board noted that the Examining Attorney and the Applicant disagreed as to whether the genericness issue should be analyzed according to In re American Fertility Society or In re Gould. The Board, however, was uninterested in that debate:

"... the real question here is whether the addition of the words THE and COMPANY, which have no source-identifying significance, to clearly generic terms, results in a term that has the capability of distinguishing applicant's goods from those of others."

Therefore, the Board affirmed the refusal to register on the Supplemental Register.

TTABlog comment: Undoubtedly, Applicant Donsuemor, Inc. wanted the Board to follow American Fertility, which held that, for a phrase, proof of genericness requires a showing that the phrase as a whole is used as a generic designation for the goods. Dictionary definitions of the constituent words are not sufficient. Under Gould, however, a compound word may be shown to be generic by submitting evidence that the constituent words are each generic.

I think the Board ignored this dispute over the proper test because THE MADELEINE COOKIE COMPANY is clearly a phrase, not a compound word, and in light of the absence of proof that the phrase as a whole is used as a generic term, American Fertility would have required reversal. See, for example, the Board's reluctant reversal in In re American Food Co., Serial Number 76101362 (September 29, 2004) [not citable] [Applying American Fertility in finding THE BEEF JERKY OUTLET not generic for retail stores featuring meat products]. [TTABlogged here].

I do think the Board reached the right result here. But those darn CAFC cases almost got in the way.

I would not be surprised to see an appeal of this one.

Text Copyright John L. Welch 2007.


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