Tuesday, April 17, 2018

TTAB Test: Is "THE MASTER CLASS" Generic For Educational Services in the Field of Beauty?

The USPTO refused to register THE MASTER CLASS, finding it to be generic for “providing educational demonstrations in the field of make-up application; providing seminars, workshops, and training in the field of beauty." Applicant Mario Dedivanovic argued that THE MASTER CLASS is not generic for his services because there is no definition of "Master Class" that refers to makeup or beauty. "A generic term for the said services would likely be 'beauty classes', 'beauty training', 'beauty workshops', 'beauty seminars." How do you think this came out? In re Mario Dedivanovic, Serial No. 86777733 (April 13, 2018) [not precedential] (Opinion by Judge Marc A. Bergsman).

The Board found the genus of goods to be "educational services in the fields of makeup application and beauty." The relevant consumers are cosmeticians as well as ordinary consumers interested in learning about the proper application of cosmetics.

The Board first noted that the word “the” in the proposed mark does not affect the analysis because it does not have any trademark significance. The dictionary definition of “Master Class” is “a lesson for advanced students given by someone who is an expert.”

Examining Attorney Andrew Leaser submitted five third-party registrations that included disclaimers of MASTER CLASS for various educational services, 53 examples of third parties using the term “Master Class” to identify their educational services in the field of makeup, and 16 news articles referring to the term “Master Class” in connection with educational services relating to makeup application and beauty.

The evidence discussed above shows that the relevant public perceives “Master Class” as a generic term for educational services in the field of makeup application and beauty. That is, the designation “Master Class” “tell[s] you what the thing is.” In re Abcor Dev. Corp., 588 F.2d 811, 200 USPQ 215, 219 (CCPA 1978) (Rich, J., concurring)

The Board observed that, although the broad category of services in this appeal may be educational services, "there are clearly narrower categories within this broad category directed to a particular field" See, e.g., In re Central Sprinkler Co., 49 USPQ2d at 1197 (the relevant public will understand the term “Attic” as referring to sprinklers for fire protection of attics)).

The Board concluded that THE MASTER CLASS serves as a generic designator of Applicant’s educational services in the field of makeup application and beauty and it therefore found that the term is the name of a category of educational services.

For the sake of completeness, the Board also considered the USPTO's alternative refusal on the ground of mere descriptiveness, assuming arguendo that the phrase is not generic. In light of the record evidence, the Board first found that MASTER CLASS is highly descriptive.

Applicant Dedivanovic claimed five years of continuous and substantially exclusive use of THE MASTER CLASS, with revenues of $1,725,400 generated from 11 events conducted in 2013 through 2016. An additional class in 2017 generated another $944,000 in revenues. He has 150,000 followers on Twitter, 2 million followers on Instagram, and 43,000 on Facebook.

Because THE MASTER CLASS is highly descriptive, Applicant’s five-year use declaration was insufficient by itself to establish acquired distinctiveness. The third-party uses shows that Applicant was not the substantially exclusive user of the term.  And although Applicant’s services have enjoyed commercial success, "sales success is not necessarily indicative of acquired distinctiveness, but may be attributed to many other factors," the most likely being Applicant’s claims that he “has secured a place among the world’s best and most well known makeup artists” with an elite celebrity clientele, whose “work has graced the pages of countless magazines.”

The Board was not convinced that relevant purchasers associate THE MASTER CLASS, without the accompanying MD or MARIO DEDIVANOVIC "house marks," solely with Applicant.

The modest media coverage did not demonstrate that THE MASTER CLASS has acquired distinctiveness because the news articles use the terms “Master Class” or “Masterclass” generically, not as a trademark.

And so the Board found that Applicant failed to establish that that the designation THE MASTER CLASS has acquired distinctiveness for applicant's services.

Read comments and post your comment here.

TTABlog comment: How did you do?

Text Copyright John L. Welch 2018.


At 8:41 PM, Anonymous Anonymous said...

Of course I "chose wisely" because any "highly" descriptive phrase in a case with evidence of a poor quality (not clear and convincing) is going to be found generic. The Board does not err in favor of a lesser finding of descriptiveness when they have only marginal (or predominantly circumstantial, i.e. not clear and convincing) evidence of genericness. This is not as terrible a case as ATTIC, but is up there with several others. ATTIC so far is the worst decision I have read on genericness, and the fact that Board members cite the ATTIC decision suggests those Board members may be fuzzy in analyzing the case at bar, or either (1) see no difference between "highly" descriptive and generic, or (2) have no good gauge as to what is "clear and convincing" evidence.


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