Tuesday, October 16, 2007

TTAB Reverses Genericness Refusal of "PAYCLERK" for Payroll Services

Although it had "concerns" about the genericness of the mark PAYCLERK for "payroll preparation and payroll tax preparation services for others," the Board found that the PTO had failed to prove its case by clear and convincing evidence. The Board therefore reversed the refusal and ruled that the mark is eligible for registration on the Supplemental Register. In re PayClerk, Inc., Serial No. 76594440 (October 4, 2007) [not precedential].

Faced with a mere descriptiveness refusal, Applicant PayClerk, Inc. amended its application to seek registration on the Supplemental Register. The Examining Attorney countered with a genericness refusal. PayClerk appealed.

The Board not surprisingly found the term PAYCLERK to be "more analogous" to a compound word than a phrase, and therefore applied the test of In re Gould Paper Corp., 5 USPQ2d 1110 (Fed Cir. 1987). Under Gould, dictionary definitions of the constituent words may suffice to show genericness of the compound term, provided that the joining of the two words lends no additional meaning to the term.

The Board looked to dictionary definitions of "pay" and "clerk," concluding that "PAYCLERK may be defined as a person who works in an office keeping records, correspondence and filing relating to giving or receiving payments." Several Internet webpages and NEXIS excerpts showed use of the term "pay clerk" as a job description.

Nonetheless, the Board was "constrained to find that the examining attorney has failed to show that the designation PAYCLERK has acquired no additional meaning to consumers of payroll services than the terms 'PAY' and 'CLERK' have individually."

"While PAYCLERK may be an apt name for a person who works in an office performing various recordkeeping, filing and correspondence tasks that may include payroll services, the evidence does not show that it is used as a generic name for such services."

The Board noted that "on a different and more complete record, such as might be adduced in an opposition proceeding," it might arrive at a different conclusion.

TTABlog comment: The approach of the Board here is akin to that applied to the genericness of phrases: there must be proof that the entire phrase is used in a generic manner, despite the genericness of the individual words, in order for a genericness refusal to stand.

The Board might have said that, although the words "pay" and "clerk" are generic for certain purposes, the word "clerk" is not generic when used in connection with services.

Text Copyright John L. Welch 2007.


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