Tuesday, March 27, 2012

Precedential No. 17: TTAB Reverses Genericness Refusal of TENNIS INDUSTRY ASSOCIATION

The PTO failed to provide the clear evidence necessary to support its genericness refusal of TENNIS INDUSTRY ASSOCIATION for association services related to tennis. Therefore the Board reversed, having "substantial doubt" as to whether the phrase is "perceived by the relevant public as a generic name for the recited services." Applicant also claimed that the phrase had acquired distinctiveness, but its evidence failed to clear the net. In re Tennis Industry Assn., 102 USPQ2d 1671 (TTAB 2012) [precedential].

Genericness: A term is generic if it refers to the class or category of goods or services. The Board first found that the genus of services is adequately defined by Applicant's recitation of services: "association services, namely, promoting the interests of tennis facilities, tennis manufacturers, tennis retailers and tennis court contractors; providing market research services to track the economic vitality of the tennis industry." The relevant purchasing public consists of those whose interests are promoted by the identified services.

The Board deemed TENNIS INDUSTRY ASSOCIATION to be a phrase that should be analyzed under the American Fertility approach: dictionary definitions of the constituent words are not enough to prove genericness; it must be shown that the phrase "as a whole" is used to refer to the genus of services.

The Examining Attorney submitted five examples from the Lexis/Nexis database and Internet websites, using the term "tennis industry association" in lower case letters in a manner that did not appear to indicate source in any particular entity. Applicant submitted a "voluminous" number of articles from the Westlaw database discussing Applicant and displaying the subject phrase in initial caps, thusly: Tennis Industry Association.

The Board found that, on balance, the PTO had failed to meet its "difficult burden of establishing by clear evidence" that TENNIS INDUSTRY ASSOCIATION, as a whole, is generic. Of the five examples submitted by the Examining Attorney, it was unclear in two that the phrase was being used generically. "A mere three unambiguous examples of generic usage ... simply is insufficient to support the genericness refusal."

The examining attorney’s remaining Lexis/Nexis and Internet evidence suggests that TENNIS INDUSTRY has a recognized meaning and that TENNIS INDUSTRY ASSOCIATION is an apt name for an association of tennis industry members, but not that the mark is generic for the recited association services.

The Board had substantial doubt whether TENNIS INDUSTRY ASSOCIATION is generic for the recited services, and it resolved that doubt, as it must, in Applicant's favor.

Acquired Distinctiveness: Because Applicant sought registration under Section 2(f), it conceded that the subject phrase is merely descriptive. The Board observed that highly descriptive marks are less likely to be perceived as trademarks, and therefore will require "more substantial evidence" to establish their distinctiveness.

Applicant relied on use of TENNIS INDUSTRY ASSOCIATION since 1974, a 2009 press release, a 2008 annual report, and 499 Westlaw articles (spanning 20 years) discussing Applicant and its programs. The Board found the Westlaw articles not to be compelling for various reasons, including the relative paucity of articles per year. Raw sales and advertising figures did not provide an explanation as to how they translated into recognition of TENNIS INDUSTRY ASSOCIATION as a mark. Notably, the record contained little direct evidence that relevant consumers view the phrase as a source indicator.

In short, the Board "would need to see a greater quantity of probative evidence than what Applicant has submitted."

And so the Board affirmed the PTO's mere descriptiveness refusal.

TTABlog comment: Tennis and genericness is a soporific combination.

Text Copyright John L. Welch 2012.


At 9:52 AM, Blogger Bob Klein @ AMS said...

But it is easy to envision a simple survey (my answer to all the worlds problems) that would overcome the "merely descriptive" hurdle.

At 1:51 PM, Anonymous Anonymous said...

It appears Response to the Final Action had over 1700 exhibit attachments. I guess that was still not enough evidence. Quality not quantity.


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