Tuesday, May 29, 2012

Test Your TTAB Judge-Ability: Is RECYCLED PAPER Generic for Greeting Cards?

PRGCO, LLC sought to register, on the Principal Register under Section 2(f), three marks containing the phrase RECYCLED PAPER for "greeting cards," but the USPTO refused registration without a disclaimer of that phrase. The PTO maintained that the genus of the goods is "recycled paper greetings cards." The Board, however, found no legal support for defining the genus more narrowly than Applicant's identification of goods: i.e., greeting cards. The PTO further contended that "recycled paper" is a sub-genus of greeting cards, but Applicant maintained that the phrase is merely descriptive of the type of paper used. How do you think this came out? In re PRGCO, LLC., Serial Nos. 77252690, 77252698 and 77252707 (May 4, 2012) [not precedential].

The Board began by observing that "terms may be generic if they serve to identify a principal ingredient or key characteristic of the genus of the goods." For example, HENNA 'N' PLACENTA for hair conditioner, or CHAMPAGNE for salad dressing.

Examining Attorney Gina Hayes relied on dictionary definitions of "recycled" and "paper," along with several items showing that Applicant uses recycled paper. She also submitted various media articles and third-party websites using the phrase "recycled paper" in connection with greeting cards. Finally, relying on other Internet evidence, she contended that "recycled paper" is a category of greeting card defined by its principal ingredient.

Applicant argued that the public understands "recycled paper" to mean paper that has been recycled, not greeting cards. It relied on certain Google search results, wherein "recycled paper" referred primarily to Applicant, and to a sample of ProQuest database hits showing the use of "recycled paper" without referring to greeting cards. The Board found this evidence of little value.

Applicant also relied on various third-party registrations in which the term "recycled paper" was disclaimed because it was deemed to be merely descriptive by the PTO. The Board pointed out, however, that an Examining Attorney, when requiring a disclaimed, must in the first instance hold a term to be merely descriptive. Only if a Section 2(f) claim is made may the Examining Attorney invoke genericness. Therefore it is not clear that the disclaimed terms were not generic for the goods.

As to the main point of contention, whether RECYCLED PAPER is a term that identifies a component or ingredient of the goods, and therefore is generic and unregistrable, the Board ruled against Applicant.

[T]he record demonstrates that “recycled paper” is a principal ingredient or component of the involved genus of goods, “greeting cards,” and applicant’s cards are known to feature this ingredient. Further, the evidence is clear that third parties use “recycled paper” to identify a particular type of greeting card, categorized according to this ingredient or component, namely, greeting cards that are printed on recycled paper. *** Thus, “recycled paper” identifies a sub-genus within the broader genus “greeting cards,” as readily as would the terms “birthday,” “anniversary,” “Christmas,” “get well” or even “blank” (to indicate all-purpose cards in which the sender writes the message or greeting).

Applicant asserted that the record evidence was "mixed," with "ample evidence" that Applicant is recognized as the source of the greeting cards offered under Applicant's marks. The Board was not convinced: the mere fact that there is some evidence of proper trademark use is not enough. "[I]t would be fairly easy for a well-healed applicant to ensure that there were at least some stories that would properly use an applicant's mark." Moreover, Applicant relied on mixed use of "Recycled Paper Greetings" as a whole, but the Examiner did not contend that the entire three-word phrase is generic.

And so the Board affirmed the disclaimer requirement, allowing Applicant thirty days to submit the required disclaimer.

Text Copyright John L. Welch 2012.


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