Thursday, May 23, 2013

Test Your TTAB Judge-Ability on these Two Genericness Appeals

The Board decided two genericness cases in early May, one involving the designation DENIM & DENIM for "men's, women's, and children's clothing made from denim, namely, pants, shirts, hooded sweat shirts," and the other DOCTORS MAKING HOUSECALLS for "providing on-site medical services to patients at their homes, apartments, senior communities, offices, or other designated locations." How do you think they came out?

In re Fawad Motiwala dba California Hub, Serial No. 85108655 (May 1, 2013) [not precedential]. The Board began by ruling that the genus of the goods is adequately defined by Applicant's identification of goods. Applicant argued that the applied-for designation is a unitary phrase, requiring the PTO to provide evidence beyond mere definitions of the constituent words (see American Fertility Society, 51 USPQ2d at 1836). The Board, however, concluded that DENIM & DENIM is a "compound word term" which falls under In re Gould.. Therefore, if each of the words in the proposed mark retains its generic meaning when combined, the dictionary definitions are alone sufficient to establish genericness.

Applicant argued that "denim" might be generic for "bolts of twilled cloth." DENIMS or DENIM PANTS & DENIM PANTS would be generic for clothing, but not the applied-for mark. The Board was unmoved. Third-party website evidence showed that "denim" is used to describe clothing made from this type of fabric.

Applicant asserted that addition of the ampersand and repetition of the word 'denim' in the proposed mark signal "what it means to be an American." - i.e., that denim clothing represents a long American tradition. The Board disagreed. The repetition of the word "denim" does not provide a different meaning. The Board also rejected Applicant's comparison of its proposed mark to a catchy phrase like SUGAR & SPICE, or a pair of surnames like JOHNSON & JOHNSON;

And so the Board affirmed the refusal.

In re Doctors Making Housecalls, LLC, Serial No. 85324528 (May 2, 2013) [not precedential]. The Board again found the genus at issued to be adequately defined by the recitation of services in the subject application. The Board found that the PTO's evidence "clearly and convincingly shows that the public would understand DOCTORS MAKING HOUSECALLS to be the name used for the recited services."

Recognizing that the proposed mark is a phrase, the Board applied the American Fertility approach, which requires more than dictionary evidence regarding the constituent words. Instead the Board must conduct an inquiry into the meaning of the phrase as a whole.

The Examining Attorney submitted several media articles using the phrase "doctors making housecalls" to refer to the practice of doctors visiting patients in their homes. The Board pooh-poohed Applicant's submission of four third-party registrations for marks including the term "house calls" because the marks were quite different from the one at issue here; in any event each case must be decided on its own record.

And so the Board affirmed the refusal.

Read comments and post your comments here.

TTABlog comment: Any WYHA's here?

Text Copyright John L. Welch 2013.


At 10:23 AM, Anonymous Eric said...

They are both clearly WYHAs!

At 11:13 AM, Anonymous Paul Reidl said...

Both seem like good WYHA candidates. However, as we know, sometimes clients ask us to shoot from center court even though the likelihood of scoring is pretty darn low.


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