Monday, March 08, 2010

Precedential No. 9: TTAB Finds "ELECTRIC CANDLE COMPANY" Generic for Light Bulbs

Ruling that "the designation 'company' cannot transform the name of the goods for which registration is sought into a trademark," the TTAB found the term ELECTRIC CANDLE COMPANY to be generic for "light bulbs; lighting accessories, namely, candle sleeves; lighting fixtures." In addition to genericness, the Board also found the phrase to be "incapable of identifying source for electric candles" under Section 23 of the Trademark Act. In re Wm. B. Coleman Co., Inc., 93 USPQ2d 2019 (TTAB 2010) [precedential].

Applicant sought registration on the Supplemental Register, having failed to convince Examining Attorney Mark Sparacino that the phrase had acquired distinctiveness under Section 2(f). The Examining Attorney then refused registration on the ground of genericness.

The Examining Attorney relied on excerpts from Applicant's website, on third-party websites, and on dictionary definitions, to show that the term "electric candle" is generic. In fact, "electric candle" is an entry in the Trademark Manual of Acceptable Identifications of Goods and Services. He applied both the Gould (compound word) and the American Fertility (phrase) tests for genericness, arguing that under Gould, "electric candle" is a unitary generic term and the addition of 'company' creates a compound term," and that under American Fertility, the phrase is generic pursuant to In re Cell Therapeutics, 67 USPQ2d 1795 (TTAB 2003) [CELL THERAPEUTICS generic for pharmaceuticals].

Applicant argued that ELECTRIC CANDLE COMPANY is not a compound term, and there are no examples of third-party use of the entire phrase.

The Board observed that the dispute "centers on the effect of the addition of the word 'company' to the term 'electric' and the standard to be applied in analyzing the evidence." Under its reading of the two cases, it found ELECTRIC CANDLE COMPANY to be generic under both Gould and American Fertility. As to Gould:

The record shows that “electric candle” is a unitary generic term. *** The space between the generic terms “electric candle” and “company” does not disqualify this type of proposed mark from the Gould analysis. If anything, the terms appearing as they should in normal usage make it even more common. There is no logical basis upon which to conclude that Gould would have yielded a different result if the mark had been SCREEN WIPE rather than SCREENWIPE. Therefore, the Gould analysis applies under these circumstances.

As for American Fertility:

In American Fertility, the Court of Appeals for the Federal Circuit (Court) determined that the USPTO did not satisfy its “burden of showing that the phrase SOCIETY FOR REPRODUCTIVE MEDICINE is generic as applied to the Society’s’ services, namely, promoting the interests of the reproductive medicine profession.” American Fertility, 51 USPQ2d at 1836. However, we do not believe that American Fertility can be read such that an applicant could take a clearly generic term and add to it a non-source identifying word such as “company” and thereby create a trademark. This is true even in the absence of proof by the examining attorney that others have used “electric candle company.”

Finally, dealing with Applicant's contention that ELECTRIC CANDLE COMPANY is not the term that consumers would use to describe the genus, the Board ruled that "the relevant public would nonetheless understand ELECTRIC CANDLE COMPANY to refer to a company that offers electric candles, and public understanding is critical., 92 USPQ2d at 1685. It is, therefore, incapable of identifying source for electric candles because it is a term a purchaser would understand and could use to refer to the type of company that sells electric candles, and must be left available for use by other such companies selling electric candles."

As has been found in other cases, marks may not equate to the literal name of the goods or services for which registration is sought, but still be deemed to be “generic" or otherwise incapable of attaining source significance and thus unregistrable, even on the Supplemental register. See In re Boston Beer Co. Ltd. Partnership, 47 USPQ2d 1914 (TTAB 1998), aff’d, 198 F.3d 1370, 53 USPQ2d 1056 (Fed. Cir. 1999) (The Best Beer in America, although not the generic name of the goods, is such a commonly used laudatory phrase that it is incapable of registration as a trademark).

And so the Board ruled that ELECTRIC CANDLE COMPANY is both generic and incapable of serving as a source indicator for Applicant's goods.

TTABlog comment: Bravo to the Board for tackling head on the CAFC's goofy dichotomy between compounds words and phrases when it comes to genericness. Let's hope the CAFC sees the (candle)light one of these days and straightens out these two cases.

By the way, the Board took a similar approach in its recent, non-precedential ruling in the JOJOBA BUTTER BEADS case [TTABlogged here].

Text Copyright John L. Welch 2010.


At 3:57 PM, Anonymous Anonymous said...

Applying In re Gould to phrases (as opposed to two or more words joined together into one, unitary compound word) would seem to have been prohibited by In re Dial-A-Mattress, 240 F.3d 1341, 1345 (Fed. Cir. 2001). Goofy or not, that's the controlling precedent, and the TTAB is not permitted to say otherwise.


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