Tuesday, September 28, 2021

TTABlog Test: Is "MULTI-GRIP" Generic for Exercise Stretch Bands?

The USPTO refused to register the proposed mark MULTI-GRIP on the Supplemental Register, finding it to be generic for manually-operated resistance and stretch bands for physical therapy and exercise. On appeal, Applicant Elliott Goldberg contended that his product is commonly referred to as a "stretch band" or "stretch strap," that there is no evidence that "Multi-Grip" is a noun whose primary meaning to the consuming public is resistance and stretch bands, and that the term Multi-Grip cannot be generic because it “is not used primarily for resistance or stretch bands” but rather it describes a feature of a number of different products. How do you think this came out? In re Elliott Goldberg, Serial No. 88212315 (September 23, 2021) [not precedential] (Opinion by Judge Christen M. English).

The Board agreed with Applicant Goldberg that the identification of goods sufficiently names the genus at issue here: manually-operated resistance and stretch bands for physical therapy and exercise. The Board disagreed, however, with his assertion that Examining Attorney Julie M. Guttadauro "improperly narrowed the genus so that it was limited to resistance and stretch bands that feature multigrips." 

The Board observed that "[a] term is generic if the relevant public understands the term to refer to part of the claimed genus of goods or services, even if the public does not understand the term to refer to the broad genus as a whole." Royal Crown, 127 USPQ2d at 1046 (quoting Cordua Rests., 118 USPQ2d at 1638); In re Wm. B. Coleman Co., 93 USPQ2d 2019, 2024-25 (TTAB 2010) (holding ELECTRIC CANDLE COMPANY generic for electric candles, a subcategory of applicant’s broadly worded identification of goods as"lighting fixtures"); Central Sprinkler Co., 49 USPQ2d at 1197 (ATTIC generic for "automatic sprinklers for fire protection" because term identified a category of such goods, namely, sprinklers for fire protection used in the attic).

And so, it was appropriate for the Examining Attorney "to consider whether MULTI-GRIP identifies a sub-group or part of the broad genus of goods here."

The record includes extensive third-party evidence showing that: (1) a number of third parties market a sub-group of resistance and stretch bands with multiple grips that allow users to adjust their hand and foot placement providing greater versatility of use and varying degrees of difficulty; and (2) “multi-grip” is widely used in the field to refer primarily to resistance and stretch bands having multiple grips. The evidence is clear and convincing that MULTI-GRIP does not merely describe a feature of Applicant’s stretch and resistance bands, but rather identifies a “key aspect” of a category of stretch and resistance bands within the relevant genus. Applicant’s competitors should be able to continue to use “multi-grip” to identify this key aspect of their goods.

The Board noted that Applicant Goldberg does not display MULTI-GRIP in the manner of a trademark. See Central Sprinkler, 49 USPQ2d at 1197 (considering Applicant’s specimen of use; “we cannot overlook how the relevant public will encounter the matter sought to be registered”). 

The Board was not persuaded by Goldberg's argument that "MULTI-GRIP is not generic because not all resistance and stretch bands are "multi-grip" bands. A term “need not be equated by the general public with the entire broad genus . . . in order for the term to be generic.”

The Board acknowledged that “multi-grip” modifies the term “band” and so functions as an adjective, but that does not foreclose a determination that MULTI-GRIP is generic. Both nouns and adjectives can be generic. See, e.g., Sheetz of Del., 108 USPQ2d at 1366 (“We readily acknowledge that ‘Footlong’ is not the name of a food product; rather it is an adjective referring to the length of the sandwich. This adjectival use, however, does not remove ‘Footlong’ from being generic when used in connection with sandwiches.”).

As an adjective, multi-grip may be used and, as Applicant’s evidence shows, is in fact used to modify other types of goods, including goods unrelated to resistance and stretch bands. But this also does not preclude a finding that MULTI-GRIP is generic for manually operated resistance and stretch bands for physical therapy and exercise. The issue before us is whether MULTI-GRIP is generic for the genus of goods defined in Applicant’s application. The evidence establishes by clear and convincing evidence that MULTI-GRIP bands are encompassed within Applicant’s broadly identified genus of goods.

Therefore, the Board affirmed the refusal to register.

Read comments and post your comment here.  

TTABlogger comment: Seems like a bit of a stretch to me.

Text Copyright John L. Welch 2021.


At 9:16 AM, Blogger Gene Bolmarcich, Esq. said...

I must admit that I have no clue how to advise a client on whether a potential mark is merely descriptive or generic. I think the Board has, with its rulings over the last few years, given us the very clear rule that "you should know it when you see it".

At 4:18 PM, Blogger Unknown said...

The Board again proves its genericness jurisprudence is arbitrary.


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