The TTAB affirmed a refusal to register the proposed mark ECOMANSION (in standard character form) on the Supplemental Register for "House building and repair; Housing services, namely, development of real property, namely, repair, improvement, and new construction," on the ground of genericness. Applicant Lance King contended that the evidence of usage was "mixed" and that the USPTO did not provide the required clear evidence of genericness. The Board disagreed. In re Lance King, Serial No. 87660124 (February 8, 2021) [not precedential] (Opinion by Judge Mark Lebow).
Examining Attorney Gidette Cuello and Applicant King agreed that the identification of services in the application appropriately sets forth the genus of services at issue. Therefore, the ultimate inquiry wa whether the relevant public understands ECOMANSION to "refer to" any of the following: “House building and repair; Housing services, namely, development of real property, namely, repair, improvement, and new construction.” [As Professor McCarthy has pointed out here, "refer to" is a rather broad and vague test for genericness - ed.].
The USPTO relied on dictionary definitions of "eco" (meaning “habitat or environment” and “ecological or environments”) and "mansion" (a “manor house; a large imposing residence), as well as articles, blog posts, home listings, and third-party websites using the terms "eco-mansion," "eco mansion," "eco house," and "eco-home" to show that “the relevant public understands the term ECOMANSION primarily refers to a genus of house building and repair type services.”
Applicant King contended that the evidence consists of "a small handful of obscure Internet articles, mostly containing mixed-use references" that "describe the ecologically-friendly qualities of certain celebrity homes.” He asserted that "this small number of speculative, mixed-use references in obscure Internet articles - without readership evidence" was insufficient to prove genericness.
The Board found that King's reliance on Merrill-Lynch to support his "mixed usage" argument was misplaced. "Applicant confuses Merrill Lynch’s 'mixture of usages'—which referred to a mixture of consumer recognition of the term as used by the applicant and as a generic reference—with the use of a hyphen or addition of a space, which is not the type of mixed usage referred to in Merrill Lynch."
Likewise, King's citation of In re Tennis Indus. Assn. missed the mark. That case involved the phrase TENNIS INDUSTRY ASSOCIATION, and stands for the proposition that when considering a phrase, the Board cannot “simply cite definitions and generic uses of the constituent terms of a mark,” but instead needed to consider the meaning of the phrase as a whole. "Here, the term ECOMANSION is not a phrase, but rather a compound term, and there is ample evidence of generic use of the entire term."
Contrary to King's assertions, the Board did not find the evidence to be “speculative.” "Most of the Examining Attorney’s Internet references refer to existing properties, those in the process of being constructed, or discussions about the importance, impact, or relevance of those properties targeting wealthy, eco-conscious buyers." Nor was the evidence "obscure" or derived from foreign sources.
The evidence comes from a variety of publications and sources, some of which are well-known (i.e., New York Times, Chicago Daily Herald, Reuters, CNET, and Popular Mechanics), others perhaps lesser known, which, taken as a whole, consistently shows ECOMANSION, ECO-MANSION, or ECO MANSION being used to describe ecologically-friendly mansions.
The Internet evidence discusses not only eco-friendly homes, but also their building and construction. "For example, one of the articles referring to Tom Brady’s eco-mansion explains that it took five years to build, and everyone involved in the design and construction was asked, “[H]ow can we make it as sustainable as possible?”
The Board concluded that "the relevant public would understand that the term ECOMANSION primarily refers to a key aspect of 'house building and repair; housing services, namely, development of real property, namely, repair, improvement, and new construction.' Accordingly, the term is generic and should be freely available for use by competitors."
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TTABlogger comment: I agree with this one. Do you?
Text Copyright John L. Welch 2021.
I never heard of an ECOMANSION before, so I was going to say that this term is not generic of anything. But, then I got to the bottom of the blog that gave the evidence of people actually using the term and have to concede that that evidence tips the scale.
ReplyDeleteAnother dumb decision by the TTAB that goes out of its way to affirm the lunacy of its examiners. ECOMANSION is not close to being generic by any stretch of the imagination.
ReplyDelete