TTAB Finds MENTCHEES Generic for .... Guess What?

The Board sustained on opposition to registration of the proposed mark MENTCHEES "for Toy figures; Modeled plastic toy figurines; Molded toy figures," on the ground of genericness. Alternatively, the Board found MENTCHEES to be merely descriptive of the goods and lacking in acquired distinctiveness. Chazak Kinder Inc. v. Mitzvah Kinder, Inc., Opposition No. 91272685 (January 28, 2025) [not precedential] (Opinion by Judge Angela Lykos)

The determination of the issue of genericness requires a two-step inquiry as set forth by the CAFC in Marvin Ginn: "First, what is the genus of goods or services at issue? Second, is the term sought to be registered ... understood by the relevant public primarily to refer to that genus of goods or services?"

The Board found the genus to be the identification, "Toy figures; Modeled plastic toy figurines; Molded toy figures," noting that this is "sufficiently broad to encompass the subgenus or narrower category of toy figures, modeled plastic toy figurines, and molded toy figures dressed in traditional Jewish attire and/or coiffed with traditional Jewish hairstyles." See, e.g., In re Empire Tech, Dev. LLC, 123 USPQ2d 1544 (TTAB 2017) (COFFEE FLOUR held generic for a type of flour made from coffee cherry skins, pulp, and pectin).

The Board next found the relevant public to be comprised of ordinary consumers who purchase toy figures, including those "seeking toy figurines dressed in traditional Jewish attire and/or coiffed with traditional Jewish hairstyles."

The question, then, was "whether the designation MENTCHEES is understood by the relevant purchasing public as primarily referring to toy figures, modeled plastic toy figurines, molded toy figures dressed in traditional Jewish attire and/or coiffed with traditional Jewish hairstyles."

There were no English or Yiddish dictionary definitions of MENTCHEES, or its phonetic equivalent, in the record. However, third-party websites of retailers such as Walmart, Eichlers, Judaica Plaza, Toys4You, Judaica Place and Binyan Blocks showed "use of the term 'mentchees,' or the phonetic equivalent thereof, as a designation for the subcategory of toy figures, modeled plastic toy figurines, molded toy figures dressed in traditional Jewish attire and/or coiffed with traditional Jewish hairstyles."

[T]he evidence shows that “mentchee” or its phonetic equivalent is now part of the U.S. English vernacular to denote a subtype of “toy figure; modeled plastic toy figurines; molded toy figure.” The fact that some of the usage is in the singular as opposed to the plural form of the word that Applicant seeks to register is of no significance.

And so, the Board concluded that the relevant consuming public "primarily views the proposed mark MENTCHEES as a generic designation for 'Toy figures; Modeled plastic toy figurines; Molded toy figures' which includes the subgenus of such items dressed in traditional Jewish attire and/or coiffed with traditional Jewish hairstyles."

For completeness, the Board considered the alternative ground of mere descriptiveness and lack of secondary meaning. [The genericness issue was not raised in the pleadings but was tried by implied consent]. The Board wasted no time in finding the term to be "highly descriptive" of the goods.

Applicant submitted no Section 2(f) evidence, but argued that Section 2(f) "does not apply because its application was not filed under this basis." The Board was unmoved. "As a legal matter, merely descriptive marks can only be registered on the Principal Register upon a showing of acquired distinctiveness."

The evidence discussed above showing third-party use of the term “mentchees” or its phonetic equivalent to refer to Applicant’s goods satisfies Opposer’s initial burden of showing that Applicant has not made substantially exclusive use of its mark. The burden therefore shifts to Applicant to come forward with evidence of acquired distinctiveness. Because Applicant submitted no evidence to support a finding of acquired distinctiveness, we are compelled to sustain Opposer’s alternate claim that Applicant’s mark is merely descriptive and lacks acquired distinctiveness.

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TTABlogger comment Suppose a term is generic within one small geographic area, say South Boston. Is that enough for a finding of genericness?

Text Copyright John L. Welch 2025.