Friday, September 02, 2011

TTAB Recasts Genericness Opposition, Finds CHI Merely Descriptive of Electric Massagers

Applicant Sound Vitality may have been shocked, or at least rubbed the wrong way, when the Board decided this opposition, originally based on genericness, on the unpleaded ground of mere descriptiveness under Section 2(e)(1). Sound Valley sought to register the mark CHI & Design for "electric massage apparatus for therapeutic use, and related replacement parts," but pro se Opposer East Health Development convinced the Board to pull the plug on the application. East Health Development Group, Inc. v. Sound Vitality, LLC, Opposition No. 91165143 (August 16, 2011) [not precedential].

Opposer alleged genericness in its notice of opposition, but in its brief it argued that "CHI" is both generic and merely descriptive. Applicant did not expressly consent to trial of the issue of mere descriptiveness, but the Board ruled that it had impliedly consented. The Board dubiously reasoned as follows: "Implicit in a finding that the evidence establishes that the word “Chi” is generic for applicant’s goods is a holding that that the word “Chi” is at least merely descriptive of applicant’s goods under Section 2(e)(1)."

The Board then found the evidence insufficient to establish the CHI is generic for electric massagers. "For example, there is nothing in the record that shows a consumer, or anyone else selling a competitive massager, referring to a massager as a “Chi” machine."

As to descriptiveness, however, excerpts from Applicant's own newsletters were decisive.

Applicant uses the word “Chi” descriptively to identify the purpose or function of its therapeutic massager (i.e., to improve chi). It is patently inconsistent for applicant to tout the purpose of its product as improving chi and, at the same time, claiming the exclusive right to use chi as its mark.

The Board therefore sustained the opposition but allowed Applicant thirty days to submit a disclaimer of CHI, in which case this decision will be set aside and the application cleared for registration. [Applicant filed the disclaimer on August 22nd, and so the Board dismissed this opposition on August 24th].

TTABlog comment: The Board's reasoning on the "tried-by-consent" issue was minimal and unconvincing. It seems to me that the defensive effort required for a party to ward off a genericness claim would be quite different from (less than?) the effort required to combat a mere descriptiveness claim. In theory, a genericness finding may encompass mere descriptiveness, but genericness was not established here. So how does a non-finding of genericness implicitly encompass a finding of mere descriptiveness?

One gets the feeling that the Board did not want the poor pleading by the pro se Opposer to open the door to registration of a descriptive term, so the Board massaged the law a bit.

Text Copyright John L. Welch 2011.


At 9:26 AM, Anonymous Anonymous said...

Changing the theory on the applicant from generic to mere descriptiveness also robs him of the opportunity to demonstrate secondary meaning.


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