Friday, February 26, 2010

TTAB Finds "JOJOBA BUTTER BEADS" Generic for ... Guess What?

Yes, you got it! The Board found the term JOJOBA BUTTER BEADS to be generic for "semi-solid wax for use in the manufacturing of other products in the field of personal care, cosmetics and cosmeceutical formulations and preparations," and it therefore granted International Flora's petition for cancellation of Desert Whale's Supplemental Registration. International Flora Technologies, Ltd. v. Desert Whale Jojoba Company, Inc., Cancellation No. 92048102 (February 23, 2010) [not precedential]. [TTABlog note: I provided some assistance to Petitioner in this matter, and so I will keep my editorial comments to a minimum].

male jojoba flowers

The Board first noted that, by obtaining a Supplemental Registration, Desert Whale admitted that JOJOBA BUTTER BEADS is not inherently distinctive. Consequently, its arguments that the term is "an oxymoron or a play on words" cannot be considered.

The Board next ruled that the genus of goods is defined by Desert Whale's identification of goods, and includes semi-solid wax in bead form. The relevant purchasing public includes sophisticated purchasers (e.g., cosmetic formulators at large companies) and home "crafters" who make cosmetic products for themselves. Although Desert Whale does not in fact sell its product in the small quantities purchased by crafters, the genus of goods is not so limited.

The record included definitions of the individual words, industry ingredient listings, third-party generic uses of "jojoba butter," use of that term generically by Desert Whale, third-party generic uses of "beads," and third-party uses of "jojoba butter beads" as an ingredient name.

The Board took an interesting take on the current tests for genericness: In re Gould Paper Corp., 5 USPQ2d 1110 (Fed. Cir. 1987) says that for a compound word (like SCREENWIPE), dictionary definitions of each constituent word may alone suffice to proved genericness, but for a phrase (like SOCIETY FOR REPRODUCTIVE MEDICINE), In re American Fertility Society, 51 USPQ2d 1832 (Fed. Cir. 1999), requires proof that the phrase as a whole be used generically.

The Board agreed with Desert Whale that definitions of the individual words "jojoba," "butter," and "beads" would not be enough to prove genericness here. "However, the evidence shows that the term 'jojoba butter,' and not merely the individual words in that term, is generic as well."

We think that “jojoba butter beads” is analogous to “milk chocolate bar,” as combining the primary ingredient of the product with the shape, and that it is appropriate to treat it as a compound term. *** ... the combination of them lends no additional meaning to the term.*** The space between the generic terms “jojoba butter” and “beads” does not disqualify the mark from the Gould analysis. *** If anything, the terms appearing as they should in normal usage make it even more recognizable as a generic term.

In any case, the Board also found the mark generic under American Fertility, because the record showed that "third parties use the entire phrase 'jojoba butter beads' generically as well." [Then why the discussion about Gould, one might ask? Perhaps because the Board does not like the often senseless distinction between phrases and compound words when determining genericness. - ed.]

And so the Board granted the petition for cancellation.

Text Copyright John L. Welch 2010.


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