Monday, August 07, 2017

Precedential No. 21: TTAB Finds "COFFEE FLOUR" Generic for ...... Guess What?

Affirming a refusal to register COFFEE FLOUR on the Supplemental Register, the Board found the term to be generic for "flour made by processing and blending together coffee cherry skins, pulp, and pectin for use, alone or in combination with other plant and milk based products, as a dry ingredient in food and beverage products for consumer use." After an exhaustive review of the evidence, the Board concluded that relevant consumers understand the term to refer to flour made from the skin, pulp, and pectin of the coffee cherry portion of the coffee plant. "Applicant itself has communicated this meaning of the term 'coffee flour' to the public, and the articles in the record, from which we can infer the public's understanding of the term, show that this message has been received and understood." In re Empire Tech. Dev. LLC, 123 USPQ2 1453 (TTAB 2017) [precedential] (Opinion by Judge Christoper Larkin).

The test for determining whether a proposed mark is generic is its primary significance to the relevant public. Emergency Alert, 122 USPQ2d at 1089 (citing In re Am. Fertility Soc’y, 188 F.3d 1341, 51 USPQ2d 1832, 1837 (Fed. Cir. 1999)). “Making this determination ‘involves a two-step inquiry: First, what is the genus of goods or services at issue? Second, is the term sought to be registered . . . understood by the relevant public primarily to refer to that genus of goods or services?’” Id. (quoting Marvin Ginn, 228 USPQ at 530). The Examining Attorney must demonstrate that COFFEE FLOUR is generic by “clear evidence” of generic use. In re, L.P., 573 F.3d 1300, 87 USPQ2d 1100, 1104 (Fed. Cir. 2009); Emergency Alert, 122 USPQ2d at 1830 (citing cases).

Genus:The Board first determined that the genus of applicant's goods is adequately defined as "flour made from coffee cherry skins, pulp, and pectin," a definition that "captures the essence of the genus involved herein, using somewhat fewer words than [was] required by the Office in order for this Applicant to present a definite identification of goods...." Quoting Active Video, 111 USPQ3d at 1602.

Understanding of Relevant Consumers: The Board found that the relevant purchasing public consists of persons who use flour for baking, including retailers of food and beverages, restaurants, bakeries, food and beverage producers, and members of the general public who bake.

The Board noted that this appeal involves the rare situation in which an applicant has created a new genus of goods by being the first (and apparently the only) producer and seller of a new product. Professor McCarthy has noted the branding challenges involved: "If the public adopts as the generic name of the the thing the word that the seller thinks is a mark, then it is no longer a mark at all.... The critical period is when the product first hits the market." Prof. McCarthy suggests that the creator adopt two new words - the mark and the generic name. McCarthy on Trademarks and Unfair Competition, Secs. 12.25, 12.26 (4the ed. June 2017 update).

The Board particularly focused on "(1) whether Applicant has adopted an existing generic term, or developed a new one, and has used that generic term together with its proposed COFFEE FLOUR mark; (2) whether Applicant has promulgated to the relevant purchasing public a generic term other than "coffee flour" for its new product; and (3) whether Applicant has policed the misuse of "coffee flour" as the generic term for the new genus, and otherwise has taken steps "to educate the public to use some name other than the term [it] wants to call [its] mark." Id.

Applicant conceded that "flour" is a generic term as used in its proposed mark. The Board found this to be significant because the public is accustomed to seeing different types of flour identified by the name of the grain, fruit, etc., from which they are made: e.g., apple flour, corn flour. The Board agreed with Examining Attorney Yatsye I. Lee that the combination of "coffee" and "flour" yields "essentially the apt or common name for the genus of goods at issue." The aptness of the term is confirmed by applicant's use of "coffee flour" in its application to patent a process for making flour from coffee.

Aptness, however, is insufficient to establish genericness. While aptness makes it likely that consumers will understand the term as the generic name of the goods, the question was whether the public did so, or whether the public recognizes it as a trademark.

Applicant did not state what the generic term is for its product, nor has the public so used any other term. Applicant's label, promotional video, and website use of "coffee flour" in lower case lettering as a compound none, without an accompanying generic term constituted a "classic example of the use of a putative mark as a generic term." In short, applicant's own use of the term provided "damaging evidence that its alleged mark is generic." Gould, 5 USPQ2d at 1112.

Applicant maintained that media articles using the term "coffee flour" are all "about applicant and/or Applicant's products," and it asserted that no third party uses "coffee flour" as a generic term. However, the relevant question is how the public perceives the proposed mark.

The Board distinguished the THUMBDRIVE case (In re Trek 2000 Int'l Ltd., 97 USPQ2d 1106 (TTAB 2010), where applicant used other terminology to identify the goods ("external storage device") and successfully policed the mark, and the record showed no use of the term by competitors after ten years in the marketplace. Here there was no mixed record regarding use of the term, and the absence of competitive use was explained by the lack of any competitors.

Applicant acknowledged that consumers who see the term COFFEE FLOUR will likely recognize that applicant's product is "a coffee product ground up into a powder like flour." That, the Board found, is essentially a confirmation of genericness.

In sum, applicant failed to develop and promulgate a generic term other than "coffee flour," itself used the term generically, encouraged the public to use the term generically, and failed to take steps to correct media uses of the term in a generic manner.

[T]he record here shows that the relevant purchasing public understands "coffee flour" to refer specifically to flour made from the skin, pulp, and pectin of the coffee cherry portion of the coffee plant. Applicant itself has communicated this meaning of the term "coffee flour" to the public, and the articles in the record, from which we can infer the public’s understanding of the term, show that this message has been received and understood.

Therefore, finding that the USPTO established by clear evidence that "coffee flour" is generic for applicant's goods, the Board affirmed the refusal to register.

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TTABlog comment: WYHA?

Text Copyright John L. Welch 2017.


At 5:36 PM, Anonymous Anonymous said...

Definitely a WYHA.


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