Friday, June 08, 2012

TTAB Dismisses Petition to Cancel BACKRACK for Truck Headache Racks Due to Insufficient Proof of Genericness

In a 55-page decision, the Board dismissed this petition for cancellation of a registration for the mark BACKRACK for "pick-up truck racks, namely, headache racks designed to protect the cab and mount a variety of accessories, namely, light, antenna and toolbox brackets." Petitioner claimed genericness but it failed to overcome the presumption of validity with a showing, by a preponderance of the evidence, that consumers use or understand the term "primarily refer to headache racks rather than a particular headache rack manufactured and sold by respondent." Professor Eric Goldman discusses (here) one aspect of the decision: the Board's ruling that, in view of the evolving status of the case law, "Respondent's failure to pursue purchasers of 'backrack' as a keyword is not evidence of failure to police its mark." Prof. Goldman opines that "this opinion reaches a sound result and provides some helpful insights for trademark owners wondering if they must chase off competitive keyword advertisers to satisfy their trademark policing 'duty.'" STK LLC v. Backrack, Inc., Cancellation No. 92049332 (May 21, 2012) [not precedential].

The Board first found the genus of the goods to include those identified in the challenged registration, plus synonymous names for headache racks (headache guards, cab guards, window guards, cab protectors, cab racks, truck racks, and cab protection). The relevant public includes distributors, retailers/jobbers, and commercial and non-commercial end users.

Petitioner STK asserted that this case is like In re Gould, where SCREENWIPE was held to be generic for ... guess what? - based on definitions of the constituent words. Here, however, the word "back" and "rack" have many meanings, and BACKRACK is registered and used for various goods completely unrelated to headache racks..

Although Respondent occasionally misuses the term BACKRACK, these misuses have not destroyed the mark. Based on the overall manner in which Respondent has marketed its products, the Board found it "more likely than not that the relevant public recognizes BACKRACK as a brand name."

The evidence did not show a competitive need to use the term "backrack," since there are a number of synonymous names available. As to third-party usage of the term, some used it as a trademark, others as a generic term. But the misuse was not so widespread and of such a duration as to deprive BACKRACK of all trademark significance.

As to consumer understanding of the term, there was no evidence establishing how end-customers use the term. Petitioner's "homemade" survey was flawed throughout and proved nothing. BACKRACK was not used generically in the printed publications placed in evidence.

Turning to Respondent's policing efforts, much of the activity occurred after this case began, but Respondent did in fact attempt to enforce its rights earlier, and many complied with Respondent's requests. Respondent has also recovered various domain name registrations that include the term "backrack."

Petitioner STK asserted that Respondent had failed to police keyword purchasing, but the Board found that argument not compelling:

Only recently has a federal court of appeals provided a plaintiff trademark owner with the opportunity to show that Google's keyword program creates a likelihood of confusion. In view of the evolving status of the case law in this area," respondent's failure to pursue purchasers of 'backrack' as a keyword is not evidence of a failure to police its mark.

Moreover, other parties may be purchasing "backrack" as a keyword because of its trademark significance and association with Respondent's products.In fact, the keyword l"backrack" leads to websites where competitive products are referred to by other names, not as "back racks."

On this mixed record, the Board concluded that the evidence of generic use was offset "by evidence of the overall context of respondent's trademark use of the term BACKRACK, a less than rigorous but sufficient level of policing and control over use of the mark by others, recognition of the trademark significance of the mark by competitors and sellers, and a lack of evidence that the primary understanding of the term BACKRACK to end-purchasers of headache rack is as a generic term."

And so the Board dismissed the petition for cancellation.

TTABlog comment: Why wasn't this opinion precedential?

Text Copyright John L. Welch 2012..


At 11:29 AM, Anonymous Erik Pelton said...

While I agree with the outcome, this case seems open and shut to me. The shame is the the registrant had to spend four years defending its registration (including several depositions and a Motion for Summary Judgment filed by Opposer) at a significant cost. Now that it won, the registrant is in the same position where it started - but is out of pocket tens of thousands of dollars (I'm guessing) along with all the time and hassle it spent defending the claim, and the potential detriment to its business in the interim.
In my opinion, the Board needs to provide more chances to dismiss proceedings early - substantive MSJ's are rarely granted these days and ADR is only a possibility if both parties consent to it.
Imagine how different (and how many fewer) Board proceedings would be if Plaintiffs who lost had to reimburse some portion of fees to Defendant. I'm not advocated that necessarily, but it is worth discussing.

At 7:26 PM, Anonymous Anonymous said...

What Erik said!!!

At 8:10 PM, Blogger John L. Welch said...

I think the Board should consider reigning in all discovery, both in terms of the length of the discovery period and the amount olfdiscovery allowed. Also shorten the period for answering the complaint, move up the discovery conference, and shorten the testimony periods.

At 11:56 AM, Anonymous David Hall said...

Texas now has a loser pays law, similar to that inexplicably left behind when the pilgrims brought English law to North America. Amen to E.P. and J.W. comments.


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