Tuesday, June 26, 2012

TTAB Finds "WHO'S WHO ONLINE" Generic for ... Guess What?

The Board affirmed a refusal to register the alleged mark WHO'S WHO ONLINE, finding it to be generic for "providing an online directory information service in the nature of biographical and professional data about individuals of accomplishment" [ONLINE disclaimed]. Applicant pointed to its prior ownership of a Supplemental Registration for the same mark, which registration Applicant had inadvertently allowed to lapse, but the Board was unmoved. In re 21st Century Communications SCP Serial No. 77650780 (June 11, 2012) [not precedential].

Examining Attorney Darryl M. Spruill relied on dictionary definitions of WHO'S WHO and ONLINE, on articles and Internet webpages displaying various forms of WHO'S WHO ONLINE, and on eight third-party Supplemental Registrations in which the term WHO'S WHO is disclaimed.

The Board found that the genus of services at issue was adequately defined by Applicant's recitation of services. The relevant public consists of "the ordinary consumer interested in viewing, posting or subscribing" to such services.

Observing that the PTO must support a genericness refusal with clear evidence, that Board found clear evidence that the relevant public "would readily understand the term [WHO'S WHO ONLINE] to identify a type of directory information service providing online information regarding biographical and professional data about individuals of accomplishment."

The evidence of record clearly establishes that the term WHO’S WHO is the name of a type of listing of biographical and professional data about individuals of note or accomplishment. Furthermore, the record clearly establishes that the term ONLINE is the name of a type of information that is available on the Internet. Thus, and contrary to applicant’s contention, the record in this case establishes that WHO’S WHO and ONLINE are generic for the recited services.

Combining the terms WHO'S WHO with ONLINE has "no significance," and the Board found the proposed mark to be generic. WHO'S WHO is a unitary generic term and ONLINE is also generic. "WHO'S WHO ONLINE is the combination of two generic terms to create a compound."

Thus, Gould-type evidence showing the generic nature of the two terms is sufficient to establish that the separate terms retain their generic significance when joined to form a compound that has “a meaning identical to the meaning common usage would ascribe to those words as a compound." quoting Gould, 5 USPQ2d at 1111-12.

Applicant's prior, cancelled Supplemental Registration for similar services did not compel a reversal of this refusal. There was no record evidence regarding that prior registration, and in any event a cancelled or expired registration has no probative value. The PTO must apply the same standard to the instant application as it applies to any other, and this applicant is not entitled to special treatment merely because it unfortunately allowed its prior registration to lapse.

And so the Board affirmed the refusal.

TTABlog note: Calling WHO'S WHO ONLINE a compound term is a bit of a stretch, I think, but it is necessary in order to avoid the "phrase" analysis of American Fertility. Under that case, dictionary definitions of the words in a phrase are not alone sufficient to support a genericness refusal. Under Gould, which involved the compound term SCREENWIPE, definitions are sufficient.

I think the Board reached the right result, and it is not the first time that the Board has ducked the American Fertility test in finding a phrase to be generic. See, e.g., In re Nutraceutical Corp., Serial No. 78975072 (March 13, 2006) [not citable] [affirming a genericness refusal of the term FRESH ORGANICS for fresh fruits and vegetables, unprocessed cereals, and the like, and for retail health food store services].

Text Copyright John L. Welch 2012.


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