Tuesday, April 19, 2011

Test Your TTAB Judge-Ability on These Two Genericness Cases: APPLICATIONSONLINE and BUBBLESEAL

Let’s see how well you do on these two appeals from PTO genericness refusals. In the first, the Examining Attorney refused registration of APPLICATIONSONLINE for "computer services, namely, development and creation of software for web based applications to allow prospective college students to submit admissions applications online via a global computer network.” In the second, the term BUBBLESEAL was refused registration for “non-metal seals for use in opening a package, sold as an integral component of plastic packaging for commercial use.” What do you think?

Remember that, under applicable law, for compound words, In re Gould Paper Corp., 5 USPQ2d 1110 (Fed. Cir. 1987), says that dictionary definitions alone may suffice to prove genericness, provided that the compounding of the constituent words does not yield a different meaning. For phrases, In re American Fertility Society, 51 USPQ2d 1832 (Fed. Cir. 1999), requires evidence of the meaning accorded to the phrase as a whole by the relevant purchasing public. But sometimes it seems that the Board will bend the tests like the proverbial nose of wax in order to reach what it considers the correct result. [See, for example, In re Wm. B. Coleman Co., Inc., 93 USPQ2d 2019 (TTAB 2010) [precedential] (ELECTRIC CANDLE COMPANY held to be generic under both tests)].

In re Applications Online, LLC, Serial No. 76684479 (March 28, 2011) [not precedential]. The Board found APPLICATIONSONLINE to be “more analogous to the phrase considered by the court in American Fertility than it is to the compound word considered in Gould. That is to say, unlike the term SCREENWIPE contemplated by the Federal Circuit in In re Gould, supra, APPLICATIONSONLINE appears to be a phrase comprising its constituent words, and not a compound word.”

The Board concluded that the Examining Attorney had failed to show genericness by the required clear evidence. The website evidence that she submitted, which used the term “application online” or “applications online” in several contexts did not establish that APPLICATIONSONLINE primarily refers to computer services of the type that Applicant provides.

And so the Board reversed the refusal.

In re PopPack LLC, Serial No. 77544768 (March 31, 2011) [not precedential]. The Examining Attorney submitted dictionary definitions of “bubble” and “seal” and pointed to Applicant’s patent application, where the term “bubble-wrap” is used generically.

The Board applied the Gould test to this compound term, ruling that: "The record establishes that the individual components of applicant’s mark are generic for the offered goods, specifically non-metal seals for use in opening a package, sold as an integral component of plastic packaging for commercial use, and their combination lends “no additional meaning to the term.”

And so the Board affirmed this refusal.

TTABlog comment: Well, how did you do? Do you think COLLEGEAPPLICATIONSONLINE would be found generic? Is it a phrase or a compound word?

Text Copyright John L. Welch 2011.


At 9:16 AM, Blogger Paul Keating said...

If not generic, the 1st is certainly descriptive.

At 12:34 PM, Anonymous Anonymous said...

I guessed wrong on both cases. Very strange decisions. I will have to read more closely.

Applications Online seems much more generic than Bubble Seal, but I guess that's just me.

At 10:02 AM, Blogger Vincent said...

This made me wonder if anyone tried to register "blister pack" and encountered the same problem. Seems a couple people have tried and have not hit the same difficulty - but then for some reason abandoned the application without using it.
I suspect if they tried again they'd fail for the same reasons as above.


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