Wednesday, April 14, 2021

TTAB Finds CERTIFIED BISON Generic for . . . . Guess What?

The Board affirmed a refusal to register CERTIFIED BISON on the Supplemental Register  for "bison meat; prepackaged meals consisting primarily of bison meat and vegetables, all of the aforementioned bison meat being certified" [BISON disclaimed] on the ground of genericness under Section 23(c). The Board concluded that consumers will perceive CERTIFIED BISON as a subcategory or subgenus of bison meat. "In other words, relevant consumers perceive the wording CERTIFIED BISON as the subgenus and key aspect of bison meat that meets certain criteria." In re Golden Bison Consolidated, LLC , Serial No. 87980485 (April 12, 2021) [not precedential] (Opinion by Judge George C. Pologeorgis).

The Board agreed with Examining Attorney Giancarlo Castro that the genus of goods is adequately defined by the identification of goods. The relevant consumers are members of the public who purchase bison mean or meals primarily containing bison meat [not me - ed.], and institutional purchasers such as restaurants. 

The Examining Attorney relied on websites that use the word "certified" in connection with meat products, including "GAP certified bison" and "USDA certified bison." Applicant's website sets out "(1) which quality assurances are ensured by Applicant’s certified bison seal; (2) what ranching and animal welfare standards are met under Applicant’s certified bison seal; and (3) what food safety inspections, testing, and verification are required for Applicant’s 'Certified Bison.'" 

 Applicant contended that bison meat is not "certified" or otherwise graded by the USDA, and that "USDA Certified Bison" simply does not exist. It maintained that the third-party websites do not use "certified bison" as a stand-alone term and that the word "certified" is at most descriptive of its products. 

The issue before the Board was whether the Internet materials submitted by the Examining Attorney, along with the dictionary definition of the "certified" submitted by Applicant ("genuine, authentic") constitute "clear evidence" that "the addition of the term CERTIFIED to the generic wording BISON results in a generic designation in relation to the identified goods." The Board found that they do.

[I]t is clear that relevant consumers of meat products have been exposed to the concept that meat products may be certified, whether they are certified as organic, grass fed, raised in a particular manner or genuine. Moreover, Applicant’s identification of goods, as well as it s own web site , specifically states that its bison meat products are certified.

The Board found of "no consequence" the fact that Applicant certification is not based on U.S. governmental or industry wide standards, but rather on its own criteria or the criteria of a purported affiliated entity. 

Applicant’s reliance on the Supreme Court’s decision in the case was off base. There the Court was considering whether a composite designation comprised of a purportedly generic term and a top level domain name is capable of functioning as a service mark for online hotel reservation services. The question in this case is whether the combination of the term "certified" with the generic term "bison" renders the composite designation generic for Applicant’s goods. is distinguishable because it is technically impossible for there to be more than one “,” whereas here, the record shows several uses of “certified bison” and reveals that certain meat products are commonly identified as “certified.”

The Board concluded that CERTIFIED BISON, taken as a whole, identifies "a subgenus and key aspect of bison meat and, therefore, is the generic name of Applicant’s goods. Therefore it affirmed the refusal to register.

Read comments and post your comment here.

TTABlogger comment: Seems to me that genericness is the wrong pigeonhole here. Mere descriptiveness seems more appropriate.  

Text Copyright John L. Welch 2021.


At 9:45 AM, Blogger Gary Tannenbaum said...

Frankly, any use of the word "certified" in connection with a food product is misleading to consumers. It would lead them to believe that some sort of government certification has occurred.

At 10:03 AM, Anonymous Mark Borghese said...

John-- This was a refusal on the Supplemental Register. Is mere descriptiveness a basis for such a refusal? Seems like the refusal would need to be for the mark being generic. Has the TTAB ever ruled that a merely descriptive mark can *never* acquire distinctiveness?

At 12:24 PM, Blogger Miriam Richter, Esq. said...

Doesn't this scream for a certification mark? They can set up a separate company to issue the certifications. Or am I missing something?

At 12:55 PM, Blogger Pamela Chestek said...

I'd have gone with deceptively misdescriptive. Can't certify your own goods.

At 11:26 AM, Anonymous Scott Kamholz said...

I thought this was going to be THE BEEF JERKY OUTLET all over again.


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