Thursday, May 19, 2016

"MAGNESITA" Generic for Refractory Bricks, Says TTAB

The Board affirmed refusals to register the mark MAGNESITA for refractory bricks and related products, on the ground of genericness, and for providing information via a global computer network regarding refractory products, on the ground of mere descriptiveness. The English translation of "magnesita" is "magnesia" or "magnesite." In re Magnesita Refractories Company, Serial Nos. 77873477 and 85834316 (May 17, 2016) [not precedential].

Genericness: As to the goods in Application Serial No. 77873477, the Board found the genus to be adequately defined by applicant's identification of goods. The relevant consumers are the public at large, namely, ordinary consumers who purchase refractory products, which include household, commercial, and industrial users.

The Board applied the doctrine of equivalents, noting translations of MAGNESITA in the record from the Italian, Spanish, and Portuguese, all modern languages. The ordinary American purchaser includes "all American purchasers, including those proficient in a non-English language who would ordinarily be expected to translate words into English." Purchasers are likely to "stop and translate" MAGNESITA when encountering it in connection with refractory products. The Board therefore found the mark to be equivalent to the English words "magnesite" and "magnesia."

Dictionary definitions and numerous website excerpts established that "magnesite and magnesia are the name of elements used in refractory products, including refractory bricks," and that they are significant aspects of the refractory products. The evidence indicated that magnesite and magnesia are used "to name or refer to a type of refractory brick (e.g., magnesite brick, magnesia-chrome brick).

Based on this evidence we have no doubt that potential purchasers familiar with Spanish, Portuguese or Italian would understand MAGNESITA to refer, at minimum, to a type of refractory brick, i.e., a magnesite brick. In re Central Sprinkler Co., 49 USPQ2d 1194 (TTAB 1998) (ATTIC generic for sprinklers because consumers would understand it to refer to a category of sprinklers). If the proposed mark is held generic for any of the goods identified in a class of an involved application, registration is properly refused. ***. See also Cordua, Rests, Inc., ___ USPQ2d ___ (“[A] term is generic of the relevant public understands the term to refer to part of the claimed genus of goods or services, even if the public does not understand the term to refer to the broad genus as a whole.”).

Acquired Distinctiveness: The Board considered, in the alternative, applicant's claim MAGNESITA has acquired distinctiveness for refractory bricks, and it also considered the Section 2(f) issue as to applicant's services. Applicant had the burden to prove acquired distinctiveness.

The Board found applicant's proposed mark to be highly descriptive, and therefore more evidence is required to establish acquired distinctiveness. Applicant submitted evidence of substantial gross annual sales and proof of use since 2008, but there was no evidence of the extent to which the public perceives MAGNESITA as a source indicator. The Board therefore found that applicant had failed to prove acquired distinctiveness, and so it affirmed the Section 2(e)(1) refusals to register.

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TTABlog comment: The Board stated that by making a Section 2(f) claim of acquired distinctiveness, applicant had conceded that the proposed mark is merely descriptive. I suggest that applicant conceded only that the mark is not inherently distinctive; it was contending that the mark was not merely descriptive because the mark had acquired distinctiveness.

Text Copyright John L. Welch 2016.


At 4:44 PM, Anonymous Anonymous said...

I hesitate to read the opinion for fear that it could be worse than the Attic opinion, for factual and legal foundation.


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