Wednesday, September 11, 2013

WORLD COIN NEWS Not Generic But Merely Descriptive for Coin-Related Magazines, Says TTAB

The Board reversed a genericness refusal of WORLD COIN NEWS for "magazines published periodically relating to collectible world coins," but found the term merely descriptive under Section 2(e)(1) and lacking in acquired distinctiveness. The Board noted that the PTO allows certain flexibility in the registration of marks for periodicals, because it is important that the title of a publication convey some idea of the subject matter of its contents. In re F+W Media, Inc., Serial No. 85223494 (August 13, 2013) [not precedential].

Genericness: The Examining Attorney argued that WORLD COIN NEWS is the apt name for applicant's goods, but Board pointed out that "aptness" is not enough. For example, AMERICAN BAR ASSOCIATION may be an apt name for a national association of lawyers, but it is not generic for all national bar associations.

The Board found the genus of goods to be adequately described by the application's identification of goods. The question then was "whether the term sought to be registered is understood by the relevant public primarily to refer to that class of magazines." {See Professor McCarthy's comment regarding the Board's use of the term "refer," below]. The relevant purchasing public, the Board found, comprises collectors of world coins.

The Board recognized WORLD COIN NEWS as a phrase, and therefore the In re American Fertility test applied: the Board cannot rely merely on definitions and generic uses of the constituent terms, but must explore the meaning of the phrase as a whole.

The record lacked any evidence of use of the phrase WORLD COIN NEWS in association with magazines, other than those of applicant. Third-party registrations for marks that include the word NEWS in connection with magazines (e.g., AMERICAN LAUNDRY NEWS) demonstrated that the USPTO treats such marks as not being generic. The Board noted that, for publication titles, "a certain degree of flexibility" is applied because it is important that consumers recognize the contents of a magazine from its title. On the other hand, the rights granted should be narrow in scope so that competitors may also employ titles that convey information about the publication's subject matter.

The Board concluded that the PTO had failed to provide the required clear evidence of genericness, and so it reversed this refusal.

Acquired Distinctiveness: Obviously, the applied-for mark is not a "coined" term. In fact, applicant invoked Section 2(f), thereby admitting that the mark is not inherently distinctive. And the Board deemed the mark "highly descriptive."

Applicant did not provide sales or advertising information, and its monthly circulation (3800) was not large. It claimed 40 years of use, but long use is not alone enough to establish acquired distinctiveness. There was no direct evidence of recognition of the mark as a source indicator.

And so the Board found that applicant had failed to prove acquired distinctiveness, and it affirmed the refusal under Section 2(e)(1).

Read comments and post your comment here.

TTABlog note: Professor McCarthy left the following comment regarding the FOOTLONG decision, TTABlogged on Friday:

Both the CAFC and the TTAB persist in using the vague language: “does the relevant public understand the designation primarily to refer to that genus of goods?” “Refer to” is an inapt and misleading phrase to use in this context. The proper question is whether the relevant public understands the designation as a name of that genus of goods. J. Thomas McCarthy

The TTABlogger notes that the Board reversed the genericness refusal "under Section 2(e)(1)" and affirmed the refusal "under Section 2(f)." Actually, I don't believe Section 2(f) is a ground for refusal, nor do I believe a genericness refusal falls under Section 2(e)(1). My understanding is that a genericness refusal is just that, while a mere descriptiveness refusal falls under 2(e)(1), the failure under 2(f) merely meaning that the 2(e)(1) refusal has not been overcome.

Text Copyright John L. Welch 2013.


At 10:00 AM, Anonymous Orrin A. Falby said...

@ John - Good point on the relevant section under which a genericness refusal is granted. I do not believe that the Lanham Act specifically states that a mark is barred from registration because its generic.

At 10:17 AM, Anonymous Anonymous said...

To the "relevant public" this is a bizzare outcome. To any and everyone associated with the world of numismatics, WORLD COIN NEWS is well known and absolutely a source identifier. What's the moral of this story? Perhaps not ever to treat "fame" with a light brush especially when a mark functions in a niche market. PROVE IT.

At 11:13 AM, Anonymous Orrin A. Falby said...

@ Anonymous - After a cursory review of the opinion, it seems to me that the 2(f) claim was refused because they could not prove "substantially exclusive use". That is the price you pay when you do not properly police the mark. If they had provided evidence of that they had an enforcement program in place, their 2(f) claim might have been acepted despite the third-party uses cited by the Examining Attorney.

At 12:09 PM, Blogger John L. Welch said...

No, I don't think exclusivity was the problem.


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