Tuesday, May 26, 2020

TTAB Dismisses "ZEN SPA & Design" Cancellation Petition for Failure to Prove Genericness

The Board dismissed this petition for cancellation of a 2009 registration for the mark ZEN SPA & Design, shown below, for "Health spa services for health and wellness of the body and spirit offered at a health resort" [SPA disclaimed] because the Petitioner Jessica Cosmetics failed to prove genericness. Petitioner alleged both mere descriptivenes and genericness but because the challenged registration is more than five years old, it cannot be attacked on the ground of descriptiveness. That left genericness, and the Board found that the mark as a whole is not generic. Jessica Cosmetics International, Inc. v. Zen Spa Enterprises, Inc., Cancellation No. 92060934 (May 22, 2020) [not precedential] (Opinion by Deputy Chief Judge Mark A. Thurmon).

Petitioner argued that the term "ZEN SPA" is generic and that the design element of the registration is irrelevant. However, "[p]etitioner gets the cart before the horse," said the Board.

The essential question in this case is not whether the literal element ZEN SPA is generic, but whether the mark as a whole is distinctive. If the design elements create a separate, distinctive commercial impression, then the mark is distinctive regardless of what the literal element means. Montecash LLC v. Anzar Enters., 95 USPQ2d 1060, 1062-63 (TTAB 2010).

The Board found the design element of the mark to be distinctive. "That is the end of the story."

A finding that the term ZEN SPA is generic for Respondent’s services would result in no relief, and for that reason, we will not opine on that issue. The only possible consequence of a finding that ZEN SPA is generic would be a disclaimer, but that relief was not sought by Petitioner and would not be available if it had been sought. See Montecash, 95 USPQ2d at 1065 (“by seeking entry of a disclaimer for a purportedly generic term that forms part of a mark that is not generic in its entirety, and that has resided on the Principal Register for more than five years, [petitioner] has failed to state a claim upon which the Board will grant relief.”)

The only possible basis for cancellation that petitioner advanced is genericness. Because the design elements create a separate commercial impression, petitioner had to show that these elements are generic in order to prevail. However, petitioner did not present any evidence or argument to support such a finding.

The Board observed that petitioner’s claim is similar to the claim that the Board dismissed in the Montecash case, which involved the mark shown below.

There the Board found it clear that the word-plus-design mark was not generic as a whole. As here, the petitioner in Montecash asserted only that the word portion of the mark was generic.

And so the Board dismissed the petition for cancellation.

Read comments and post your comment here.

TTABlogger comment: So what does this mean for others who want to use the term "Zen Spa" for health spa services? Should they be concerned about this registration? Or would they be okay if they just avoided using a similar design element?

Text Copyright John L. Welch 2020.


At 9:12 AM, Anonymous Anonymous said...

An applicant would probably not be able to register ZEN SPA on its own due to this registration, and would probably get an initial 2(d) refusal even if the mark consisted of just the wording "ZEN SPA" and a different design element and/or additional wording. It would be up to the applicant then to show that "Zen spa" is a generic term in the industry, making the registered term weak enough that the different design element (and/or additional wording) would be enough to prevent confusion.


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