Friday, June 23, 2017

Two Genericness Cases: BAGCORP and PATINA - Can You Guess What Goods?

In two recent genericness cases, the Board affirmed a refusal to register BAGCORP and sustained a petition for cancellation of a registration for PATINA, both on the ground of genericness. Can you guess what the goods were in each case?

In re BAG Corp, LLC d/b/a BAGCORP, Serial No. 86438780 (June 21, 2017) [not precedential) (Opinion by Judge Adlin). This applicant sought to register BAGCORP for "flexible intermediate sacks or bags for storage and transportation of materials in bulk." [Did you guess that?] There was no dispute that the genus of the goods was as described in the identification of goods. But does the public understand BAGCORP to refer to that genus of goods?

The evidence showed that applicant sells its bags to a wide range of businesses in the agricultural, waste, construction, transportation, landscaping, and food industries, and other industries, all in need of bags for storage and transportation.

Obviously the word "bags" is generic because applicant uses the word in its identification of goods. Moreover, applicant prominently uses that word generically in selling its goods. [What a surprise! - ed.]. When the words "bag" and "corp" are combined the relevant public will understand the term to refer to a company that sells bags. There was no evidence that BAGCORP has any other meaning. On the other hand, Examining Attorney Won T. Oh provided evidence that others use the term "bag corp." or variations thereof, generically.

The Board found this case to be similar to the ELECTRIC CANDLE COMPANY case [TTABlogged here], where that term was found to be generic for light bulbs, light fixtures, and related goods. The Board there held that the addition of the company designation had no significance. There was no evidence that any other entity used the entire phrase.

Although applicant was correct that its goods are not referred to as BAGCORP, "the relevant public would nonetheless understand [BAGCORP] to refer to a company that offers [bags]."  The term must be "left available for other such companies selling [bags]."

And so the Board affirmed the genericness refusal.

Rheinzink GmbH & Co., KG v. Western States Decking, Inc., Cancellation No. 92059862 (June 21, 2017) [not precedential) (Opinion by Judge Pologeorgis). In a 32-page opinion, the Board found PATINA to be generic for "metal roofing; metal roofing panels; metal roofing tiles; metal tiles for walls; ceilings," and it ordered cancellation of respondent's Supplemental Registration. [Did you guess that?]

The Board again found that the identification of goods defines the applicable genus. Relevant consumers include both industry professionals and non-professionals. The question, then, was whether the primary significance of PATINA to the relevant purchasing public is the class or category of goods identified in the challenged registration.

"Patina" is defined as a thin coating or layer, specifically an incrustation layer resulting from an extended period of weathering or burial, or a green film produced by oxidation of bronze and copper.

Petitioner submitted a number of examples of use of PATINA in connection with tiles and roofing: e.g., "Patina Green" and "Tropical Patina" metal roofing; "Natural Patina painted metal architectural systems"; "Natural Patina," "Antique Patina" and "Bronze Patina" insulated roof and wall panels. Petitioner also provided a number of publications evidencing that "patina" is "widely understood and used by the relevant trade and public to identify architectural metals, including the metal goods identified in Respondent's registration, having a desirable, aged appearance ...."

Moreover, respondent itself uses "patina" in a generic manner, referring to one of its products as "Painted Panels That Look Like Patina'd Copper." One of petitioner's experts testified that "patina" refers to discoloration on the surface of metal, and that purchasers commonly use "patina" generically to reference the products they are seeking. A linguistic expert opined that the noun "patina" is used by the general public in a generic sense in connection with metal architectural elements rather than associating it with a single source.

Respondent offered no evidence that the relevant public ever uses PATINA to refer to goods from a single source.

The Board concluded that, at a minimum, PATINA is generic for a type of metal roofing or tile. See In re Central Sprinkler Co., where ATTIC was found to be generic for a category of fire sprinklers. The Board therefore granted the petition for cancellation.

Read comments and post your comment here.

TTABlog comment: The ATTIC case is a good one to remember. The term referred to a sub-genus of fire sprinklers. I think of goods displayed in a store, and whether there would be an aisle sign in the "sprinkler" section, pointing to the area of the store displaying "attic" sprinklers.

Text Copyright John L. Welch 2017.


At 9:21 AM, Anonymous Anonymous said...

Has the Board lost it's mind? Genericness means people actually use the term in a generic fashion, not that they might in some speculative scenario.

More examples of relishing the power to say NO!

At 7:48 PM, Anonymous Anonymous said...

The question "did you guess the goods" (and corollaries thereof) is a reasonable litmus test for genericness. Anon 9:21am responds similarly. It represents a real-world, common sense test for your case, or an Examiner's rejection, or a decision such as Patina (a nice restaurant in Los Angeles, a sign of a possibly classic car underneath, etc.), though admittedly it is not a "legal" test. With all due respect, moreover, the ATTIC case is the worst decision I have seen re genericness, and demonstrates the ease with which judges on the TTAB lose sight of the ball, and lapse into descriptiveness analysis (perhaps because the Examining Attorney's evidence is shallow/lacking?). It seems to me that genericness should be a rare sighting, and where a term is generic, there will no lack of evidence.


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