TTAB Affirms Genericness Refusal of FILATI (Stylized) for ... Guess What?

The USPTO refused registration (on the Supplemental Register) of the proposed mark FILATI in the stylized form shown below, for "Knitting yarns; Thread; Yarn; all of the foregoing for textile use," on the ground of genericness. The Italian word "filati" means "yarn" in English. Applicant disclaimed the word "filati." In re LANA GROSSA Mode mit Wolle Handels-und Vertriebs GmbH, Serial No. 88807623 (July 7, 2002) [not precedential] (Opinion by Judge Marc A. Bergsman).

Examining Attorney Amy Kertgate maintained that the stylization was not sufficiently distinctive to justify registration of the generic term. The Board noted that applicant's disclaimer of "filati" on the Supplemental Register was a concession of genericness. Nonetheless, since both the Examining Attorney and the applicant argued the issue of genericness, the Board decided to consider the issue.

The Board found the doctrine of foreign equivalents to apply, since Italian is a well-known modern foreign language. Noting that the "Pitti Filati is the premier international yarn event covered by websites and publications in the United States, U.S. consumers, particularly those with knowledge of Italian, will tend to translate the word “Filati” into “yarn” when encountering it in connection with yarn products." Therefore, it found the term "felati" to be generic for yarn.

As to the stylization issue, the Board gathered up the usual suspects: the LITE, BALSAM, JACKSON HOLE, CONSTRUCT-A-CLOSET, and SADORU cases. Applicant relied particularly on the reversal of the JACKSON HOLE refusal.

The Board was not impressed. It found that "[t]he stylized display of the purported FILATI mark does not create a distinct commercial impression separate and apart from the word itself," and so, the Board affirmed the refusal to register.

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Text Copyright John L. Welch 2022.