Thursday, April 23, 2015

No Registration for Highly Descriptive -- Generic -- Trademarks

The Trademark Trial and Appeal Board (TTAB) confirmed again two days ago what we should all know, that generic trademarks will not be allowed to register. In In re Meridian Rack & Pinion dba, the applicant sought registration of "" for an online auto parts retail store service. The TTAB refused to allow registration. The opinion points out that marks that are so descriptive as to be generic cannot register as trademarks. 

Generic marks, observed TTAB, are "common names that the relevant purchasing public understands primarily as describing the genus of particular goods or services." The important issue turns on whether the consuming public views the applied-for trademark as constituting the "central focus" or "key aspect" of the service set out in the application.

The TTAB "has often held that a term that names the 'central focus' or 'key aspect' of a service as generic for the service itself."

The TTAB opinion finds as generic for the service of operating an online retail store where consumers can buy auto parts. The opinion gives other examples of applied-for trademarks that were previously rejected for genericness, either because the mark describes the genus of the entirety of the goods or services, or describes the genus of the key element of the goods or services:

  • BUNDT for a cake mix
  • ATTIC for a sprinkler system used in attics
  • CHOCOLATE FUDGE for a diet soda flavored drink
  • HOTELS.COM for an online hotel reservation system
  • TIRES TIRES TIRES for retail tire stores
  • CANDY BOUQUET for candy gift packages
  • RUSSIANART for the sale of Russian artwork
  • MATTRESS.COM for online retail sales of mattresses
  • LAWYERS.COM for online information about law and lawyers
  • ADVERTISING.COM for online advertising services

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