Tuesday, October 19, 2010

TTAB Cancels "EQUINE BODY WORKER" Registration For Lack of Acquired Distinctiveness

In a somewhat touching decision, for horses anyway, the Board granted a petition for cancellation of Equinology's Section 2(f) registration for the mark EQUINE BODY WORKER, finding that the mark lacks acquired distinctiveness for the services of "providing courses of instruction and educational testing in the field of equine massage." Registrant managed to fend off Petitioner Equine Touch Foundation's genericness claim, but its affirmative defense of unclean hands came up short. [One would hope that a horse would be massaged with clean hands! - ed.]. The Equine Touch Foundation, Inc. v. Equinology, Inc., Cancellation No. 92050044 (September 29, 2010) [not precedential].

Genericness: The Board observed that the term "equine bodywork" is "decidedly generic," but what about EQUINE BODY WORKER, which Respondent apparently coined? Although it might be an "apt" name for a person offering the recited services, the CAFC has stated that "aptness is insufficient to prove genericness." (In re American Fertility Society, 51 USPQ2d 1832, 1836 (Fed. Cir. 1999). There was no evidence that the three-word phrase was ever used by the relevant public to refer primarily "to refer to a similar class of services." The Board therefore concluded that Petitioner failed to show that the phrase is generic.

Acquired Distinctiveness: By asserting that its mark has acquired distinctiveness under Section 2(f), Respondent conceded that the mark is merely descriptive. Petitioner had the burden to prove, by a preponderance of the evidence, that the mark has not acquired distinctiveness. Once Petitioner makes a prima facie case, the burden of coming forward with evidence to overcome that case rests with Respondent.

Equinology has used of its "highly descriptive" mark since 1997, a "fairly lengthy period." More than 1,000 people have taken its course of instruction, and more than 500 have been certified as "Equine Body Workers." However, Respondent did not provide information as to its relative success in its field, nor information as to its market share. The sales figures, standing alone, are "not so impressive as to elevate respondent's designation to the status of a distinctive mark." Its advertising expenditures, almost $200k in 14 years, are "a moderate sum" and are not necessarily all attributable to the "Equine Body Worker"certification course. Dueling declarations submitted by the parties cancelled each other out. Media coverage has been minimal.

On the other hand, attempts by third-parties to use the phrase have been few: Equinology has issued two cease-and-desist letters. "[W]hat is more surprising ... is that respondent has not located more persons in the field of horse care and massage who had inadvertently used this highly descriptive designation."

The Board therefore concluded that Respondent failed to overcome Petitioner's prima facie case that the term EQUINE BODY WORKER has not acquired distinctiveness.

Unclean Hands: Respondent claimed that Petitioner's hands were unclean because it modified its website in 2005 and 209 to include the terms "bodywork" and "equine bodywork." However, as the Board pointed out, "equine bodywork" is a generic term and is not Respondent's mark. And so Petitioner's hands were clean.

TTABlog comment: Is the equitable defense of unclean hands available against a claim of mere descriptiveness? See The Loglan Institute Inc. v. The Logical Language Group Inc., 22 USPQ2d 1531 (Fed. Cir. 1992); Consolidated Foods Corp. v. Big Red, Inc., 226 USPQ 829 (TTAB 1985).

Text Copyright John L. Welch 2010.


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