Wednesday, March 14, 2018

Precedential No. 6: TTAB Finds MECHANICALLY FLOOR-MALTED Generic for ... Guess What?

The Board affirmed the USPTO's refusal to register the term MECHANICALLY FLOOR-MALTED, in standard characters, finding it to be generic for "malt for brewing and distilling" in International Class 31 and "processing of agricultural grain' in International Class 40. Applicant Mecca, relying primarily on the CAFC's Princeton Vanguard decision, contended that the Examining Attorney Dawn Feldman Lehker’s evidence did not include use of the exact term "mechanically floor-malted" as a generic designation for the identified goods or services. The Board pointed out, however, that Mecca was misreading the precedent. In re Mecca Grade Growers, LLC, 125 USPQ2d 1950 (TTAB 2018) [precedential] (Opinion by Judge Angela Lykos).

Mere Descriptiveness: Applicant Mecca first argued that the applied-for term is not merely descriptive of the goods or services, but the Board concluded that the term immediately conveys to prospective consumers characteristics of both the goods and the services.

The explanatory text from Applicant’s specimen of use states that it produces a specific type of malt known as “floor-malted” malt and that Applicant’s grain processing services substitute mechanization for traditional floor-malting techniques.

By combining the old world approach to floor-malting with today’s modern technology, we have designed a malting machine capable of producing the finest quality, consistent malt available. We call this proprietary process: “Mechanical Floor-Malting.”

Moreover, the record showed it is "not uncommon" for artisan brewers to market their beer as “floor malted”  or for malt producers to use a mechanized version of floor malting,

Applicant argued that the juxtaposition of "mechanical" with "floor malting" creates an incongruity, but the evidence showed that "that mechanical assistance has been used in the past for some time in order to facilitate the floor malting process."

And so the Board affirmed the Section 2(e)(1) mere descriptiveness refusal.

Genericness: Applicant Mecca argued in the alternative that its proposed mark was registrable on the Supplemental Register. “In order to qualify for registration on the Supplemental Register, a proposed mark ‘must be capable of distinguishing the applicant’s goods or services.’” In re Emergency Alert Sols. Grp., LLC, 122 USPQ2d 1088, 1089 (TTAB 2017) (quoting 15 U.S.C. § 1091(c)). “Generic terms do not so qualify.” Id.

“The critical issue in genericness cases is whether members of the relevant public primarily use or understand the term sought to be protected to refer to the genus of goods or services in question.” Princeton Vanguard, 114 USPQ2d at 1830 (quoting Marvin Ginn, 228 USPQ at 530).

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?” Marvin Ginn, 228 USPQ at 530. See also Princeton Vanguard, 114 USPQ2d at 1829 (“there is only one legal standard for genericness: the two-part test set forth in Marvin Ginn”).

The USPTO has the burden of proving genericness by “clear and convincing evidence." In re Cordua, 118 USPQ2d at 1635.

The Board agreed with the Examining Attorney that the genus of goods and services is defined by applicant's identification of goods and services. See Magic Wand Inc. v. RDB Inc., 940 F.2d 638, 19 USPQ2d 1551, 1552 (Fed. Cir. 1991) (“[A] proper genericness inquiry focuses on the description of [goods or] services set forth in the [application or] certificate of registration.”). The relevant purchasing public comprises purchasers and users of malt for brewing and distilling, and persons and
entities that have or obtain grain and need to have it malted.

The Board explained that Applicant's reliance on Princeton Vanguard was misplaced. "The fact that there is no evidence of third-party use of the precise term 'mechanically floor-malted' is not, by itself, necessarily fatal to a finding of genericness."

According to Princeton Vanguard, "[T]here is only one legal standard for genericness: the two-part test set forth in Marvin Ginn. … Regardless of whether the mark is a compound term or a phrase, the applicable test is the same and the Board must consider the record evidence of the public’s understanding of the mark as a whole. Am. Fertility, 188 F.3d at 1348-49."

Princeton Vanguard explicitly did not overturn In re Gould, in which dictionary definitions and explanatory text in the applicant's specimen sufficed to establish genericness. By remanding the Princeton Vanguard case to the Board for full consideration of dueling surveys, the CAFC merely underscored that all evidence bearing on public perception must be given appropriate consideration.

Here, as in In re Gould, the record consists of dictionary and industry specific evidence demonstrating the use of the words, ”mechanical,” “mechanically,” “malt,” “malting,” “malter,” “malted,” “floor-malting,” “floor-malted,” and “floor-malter,” and demonstrating how these words may be used together. These examples clearly show the meanings that relevant consumers attribute to those words when they are used separately and when they are used together. The purchasers in this case are not members of the general public who might not be familiar with the processing of grain for brewing or distilling. Here, the customers are those in the brewing and distilling business who are likely to know exactly what MECHANICALLY FLOOR-MALTED malt is and the process for producing this type of malt, regardless of the grammatical form of the word “mechanical” or whether “floor-malted” is spelled with a hyphen. 

The Board observed that "an applicant’s own website or marketing materials may be probative, or even, as in Gould, 'the most damaging evidence,' in indicating how the relevant public perceives a term." On its specimen website page, Applicant Mecca "admits that 'floor-malted' refers to a type of malt (available not only from Applicant but from others) for brewing and distilling and that 'floor-malting' is a process performed by others." As to the services, Mecca concedes that floor-malted malt may be produced using machinery.

The record as a whole establishes that with regard to the International Class 31 goods, consumers would understand the designation “mechanically floor-malted” to signify a specific kind of “[m]alt for brewing and distilling.” Similarly, with respect to the International Class 40 services, this evidence also shows that consumers would understand Applicant’s proposed mark as a whole to identify “[p]rocessing of agricultural grain.”

In short, the record showed that the mark Mecca seeks to register will be understood by the relevant public primarily as referring to the identified genus of goods and services. The fact that the term is an adjective rather than a noun "does not render it less generic." In re Central Sprinkler Co., 49 USPQ2d 1194, 1199 (TTAB 1998) (ATTIC for fire sprinklers); see also Sheetz of Del., Inc. v. Doctor’s Assocs. Inc., 108 USPQ2d 1341, 1366 (TTAB 2013) (FOOTLONG for sandwiches).

Regardless of whether Mecca is the first and only user of the designation, it is not entitled to register a generic term. The test is not whether relevant consumers use the term to identify the genus, but whether consumers perceive the term as such.

The Board therefore concluded that MECHANICALLY FLOOR-MALTED is incapable of functioning as a mark for the subject good and services, and it affirmed the refusal to register on the Supplemental Register.

Read comments and post your comment here.

TTABlog comment: This phrase is a sub-genus of a sub-genus. The line between genericness and mere descriptiveness seems a bit fuzzy in these cases.

Text Copyright John L. Welch 2018.


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