Wednesday, July 27, 2011

TTAB Affirms Genericness Refusal of TREERADAR for ... Guess What?

Three years ago, Applicant TreeRadar, Inc. lost an appeal from a Section 2(e)(1) mere descriptiveness refusal of TREERADAR [opinion here], but it filed a new application and sought registration under Section 2(f). It lost again. This time, the Board affirmed a genericness refusal, finding TREERADAR to be generic for radar imaging systems for trees and for related services. In re TreeRadar, Inc., Serial No. 77579817 (July 15, 2011) [not precedential].

Res judicata: In light of this Applicant's prior unsuccessful appeal, the Board agreed with Examining Attorney Kristina Morris that Applicant was barred from re-litigating the issue of mere descriptiveness (i.e., inherent distinctiveness).

Genericness: Applying the In re Gould approach to the compound word TREERADAR, the Board first looked to dictionary definitions of "tree" and "radar." Applicant's own use of these two terms confirmed the generic meaning of those two words. Moreover, the compound term TREERADAR has no meaning apart from the meaning of the individual terms combined. "TREERADAR 'immediately and unequivocally describes the purpose, function and nature of the goods' and services."

The evidence also showed use of "tree radar" generically by others to refer to the same type of goods and services. Applicant argued that these references were actually to its mark "without capitalization," but the Board noted that these materials "still provide evidence of the context of use, the exposure of the term in a generic manner to the relevant public, and the meaning the public is likely to associate with the term as a result of such use."

Moreover, the Board found it not surprising that these uses of the term refer to Applicant and its product because Applicant "apparently holds a patent for its particular use of GPR technology ... and appears to be one of the only producers of this type of radar device." In any case, the term "tree radar" is used generically and not as a source indicator. And even if the record showed no third-party use of the term, it would still be generic because "the term clearly would be understood as having a generic meaning."

Applicant submitted evidence arguably showing that third-parties use TREERADAR as a trademark for its goods, but the Board found the evidence to be "ambiguous, at best." The "clear and unambiguous meaning of the term 'TREERADAR' as well as the generic manner of use of the term by others is far more convincing."

For the sake of completeness (and assuming arguendo that TREERADAR is not generic), the Board considered Applicant's evidence of acquired distinctiveness. Here, strong proof is required, and Applicant did not provide it. Applicant submitted a 5-year claim of continuous and substantially exclusive use, but such a claim is not sufficient by itself when the term sought to be registered is highly descriptive. Applicant did not submit sales or advertising figures, or other evidence. The Board therefore rejected the 2(f) claim.

TTABlog comment: The "g" key on my keyboard doesn't want to work, so I may have to skip enericness cases for a while.

The Board affirmed the refusal "under 2(e)(1) of the Act on the grounds that the mark is generic ...." What, pray tell, does Section 2(e)(1) have to do with genericness? Isn't the correct refusal under Sections 1, 2, and 45 on the ground that TREERADAR is simply not a mark?

Text Copyright John L. Welch 2011.


At 9:17 AM, Anonymous Anonymous said...

Agreed that the switching between 2(e)(1) and generic standards/discussion is clumsy. However, a refusal under 2(e)(1) can be based on the near-generic standard of "so highly descriptive that the mark fails to indicate source". This approach is largely abandoned these days. It seems that the judges simply wanted to end the 2(f) discussion in its tracks by finding genericness (or near-genericness).

At 9:40 AM, Anonymous Anonymous said...

Near-genericness... nearly pregnant?

How do you reconcile the TTAB's position with the Fed. Cir. precedent of In In re Merrill Lynch, Pierce, Fenner & Smith, Inc., 828 F.2d 1567, 4 USPQ 2d 1141 (Fed. Cir. 1987), where the Court disagreed with the PTO’s finding of genericness of CASH MANAGEMENT ACCOUNT for stock brokerage services, administration of money market fund services, and providing loans against securities services?

The Fed. Circuit says the analysis must include a determination of whether the term sought to be registered is understood by the relevant public primarily to refer to that genus of goods or services? Therefore, one must look at evidence of consumer understanding. The PTO has the burden of proving a term generic. In re American Fertility Society, 188 F.3d 1341 at 1345, 51 USPQ 2d 1832 at 1834 (Fed. Cir. 1999). The Trademark Manual of Examining Procedure 1209.01(c)(i) (4th ed) explains that the Examining Attorney has the burden of proving that a term is generic by clear evidence. That evidence is to be of the purchasing public's understanding of a term, and can be obtained from any competent source, including dictionary definitions, research databases, newspapers and other publications.

Where was there evidence of what the public thinks that TREERADAR is the generic name for the goods or services involved? The evidence of what the public thinks that the applicant submitted was that the TREERADAR signifies the source of goods.

By the way, I am not affiliated with the applicant. I only want the PTO to back away from finding genericness under every bush.

At 10:26 AM, Anonymous Orrin A. Falby said...

Anonymous, I am not sure what "highly descriptive" or "near genericness" means. Its either descriptive or generic. The 2(f) argument was dead once it was determined that res judicata applies on the issue of descriptiveness.

At 2:37 PM, Anonymous Anonymous said...

A good lesson of how a prior failed appeal can hurt you later.

I have not read all the papers in the two appeals, but I wonder if they were well drafted or just done on a low budget and the Applicant tossed up a ball and hoped for the best.

If you are going to try a second time it would seem like a good idea to get it right the second time.


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