Tuesday, August 17, 2021

TTABlog Test: Is "THE TAILORY" Generic for Custom Tailoring or Dressmaking?

SY Custom, Inc., who offers services under the name "The Tailory of New York," petitioned for cancellation of a registration (on the Supplemental Register) for the mark THE TAILORY for "custom tailoring and dressmaking," on the ground of genericness. SY Custom relied on a dictionary definition of "tailory," on 32 testimony declarations, and on Internet evidence showing the term "tailory" and similar terms. How do you think this came out? Not a fair question, I know, because you have to look at the evidence first. SY Custom, Inc. v. The Tailory, LLC, Cancellation No. 92070569 (August 12, 2021) [not precedential] (Opinion by Judge Michael B. Adlin).

As usual, the Board found the genus of services at issue to be adequately defined by the recitation of services in the targeted registration. Noting that the word "custom" is superfluous since all tailoring is "custom," the Board found the relevant public to be consumers of these services, whether simple or complicated.

The Board found the single definition of "tailory" ("the work or business of a tailor" and "clothing made by a tailor") to be the most persuasive evidence submitted by Petitioner SY Custom. This was "strong evidence that TAILORY is at best merely and highly descriptive of Applicant's services." The issue, though, was "whether this record establish that the relevant public understands THE TAILORY to refer to custom tailoring services." 

As to SY Custom's 32 declarations, "[t]he quantity of this evidence is impressive. The quality is not." All but one of the declarations were "essentially identical and obviously drafted by someone other than the witness, presumably Petitioner's counsel." They consisted of form, typed paragraphs with blanks or boxes to be filled in by the declarant.  They suffered from many deficiencies and all were unintelligible to some extent. 

The sole remaining declaration was likewise not probative. Rather than make a factual statement, it stated the legal conclusion that three forms of "tailor" are generic. The declarant worked for a single, French company, and he stated only what that company does, not the relevant public. Moreover, the declaration was not specific to the United States.

SY Custom's Internet evidence consisted of truncated results from a Google search for the word "tailor" in various forms. Without appropriate context,  the results had little probative value. SY pointed to respondent's use of "The Tailory" at its own website, but the examples showed the term in initial capitals, used only to identify respondent rather than tailoring services. Respondent did use "tailor," "tailored," and "tailoring" descriptively or generically, but those were not the term in question.

Uses of the term "tailory" in certain video games was of limited value, since it was unclear whether the games reflect the real world use of the term, or even whether these games are played in the United States.

The Board concluded that SY Customs failed to carry its burden of proof.

Given the dictionary definition, we acknowledge that had Petitioner built a different (more extensive and directly relevant) record here, the result could have been different. But on the “mixed” and “ambiguous” record submitted, much of which is illegible, we find that Petitioner has not met its burden of proving that THE TAILORY is generic for tailoring services or the more specifically identified custom tailoring or dressmaking services.

And so, the Board denied the petition for cancellation.

Read comments and post your comment here.

TTABlogger comment: What do you think will happen next? Why would one submit "illegible" evidence?

Text Copyright John L. Welch 2021.


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