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“Spectacles” as an “Old-Fashioned” Generic Term

Posted by Thomas P. Howard | Nov 08, 2021 | 0 Comments

By James Juo.

One cannot obtain trademark rights in generic terms, such as “soda” for soft drinks. “Generic terms are common names that the relevant purchasing public understands primarily as describing the genus of goods or services being sold. They are by definition incapable of indicating a particular source of the goods or services.” In re Dial-A-Mattress Operating Corp., 240 F.3d 1341, 57 USPQ2d 1807, 1810 (Fed. Cir. 2011) (citations omitted). See also USPTO v B.V., 591 U.S. —, 140 S. Ct. 2298 (2020); Royal Crown Co. v. Coca-Cola Co., 892 F.3d 1358, 127 USPQ2d 1041, 1045-46 (Fed. Cir. 2018). Whether a term is generic is based on its primary significance to the relevant public. See In re Am. Fertility Soc'y, 188 F.3d 1341, 51 USPQ2d 1832 (Fed. Cir. 1999); Magic Wand Inc. v. RDB, Inc., 940 F.2d 638, 19 USPQ2d 1551 (Fed. Cir. 1991).

The two-step inquiry for genericness is: (1) determine what is the genus (that is, category or class) of goods at issue; and (2) determine whether the term sought to be registered is understood by the relevant public primarily to refer to that genus of goods. H. Marvin Ginn Corp. v. Int'l Ass'n of Fire Chiefs, Inc., 782 F.2d 987, 228 USPQ 528, 530 (Fed. Cir. 1986).

The case of In re Snap Inc., Serial No.87177292 and 87211997 (TTAB No. 3, 2021), analyzes whether “SPECTACLES” is generic for “Computer hardware; computer peripherals; wearable computer hardware; wearable computer peripherals; computer hardware and peripherals for remotely accessing, capturing, transmitting and displaying pictures, video, audio and data; downloadable computer software, namely, software for setting up, configuring, and controlling wearable computer hardware and peripherals;…”

In the first step of the genericness inquiry, the TTAB held that Applicant's identification of goods [in its trademark application] is drafted broadly, and includes: (1) “computer hardware,” without limitation, as well as “wearable computer hardware” specifically; (2) “computer peripherals,” without limitation, as well as “wearable computer peripherals” specifically; and (3) downloadable software for both “setting up, configuring, and controlling wearable computer hardware and peripherals;” and “use in uploading, downloading, capturing, editing, storing, distributing and sharing photographic and video content and other digital data ….”

In any event, because Applicant's identification of goods clearly encompasses cameras and related hardware and software “referred to as ‘smart glasses' or ‘camera glasses,'” [as the genus]. See e.g., Royal Crown, 127 USPQ2d at 1041 (term is generic if it refers to a “key aspect” or part of a genus); In re Cordua Rests., 118 USPQ2d at 1638. See also In re DNI Holdings Ltd., 77 USPQ2d 1435, 1438 (TTAB 2005) (“the class or category of services described in the application still clearly includes that of providing information regarding sports and betting”).

In the second step of the genericness inquiry, the TTAB noted that evidence of the relevant public's understanding of SPECTACLES may be obtained from any competent source, including testimony, surveys, dictionaries, trade journals, newspapers, and other publications, citing In re Northland Aluminum Prods., Inc., 777 F.2d 1556, 227 USPQ 961, 963 (Fed. Cir. 1985). No testimony or survey evidence with respect to genericness was submitted in this case.

The dictionary evidence in this case was that “SPECTACLES” means “glasses,” “eyeglasses,” or “something resembling eyeglasses in shape or suggesting them in form.” The TTAB further noted that the Applicant's website stated “Spectacles are sunglasses with an integrated video camera …”; and that several of Applicant's competitors and the media refer to the product as “glasses” or “sunglasses.” Thus, the TTAB found that the term “spectacles” falls squarely within the dictionary definitions of “glasses” and “eyeglasses.”

Applicant's arguments to the contrary call to mind In re Recorded Books Inc., 42 USPQ2d 1276 (TTAB 1997), in which we found RECORDED BOOKS generic for “pre-recorded audio tape cassettes featuring literary works.” In Recorded Books, the applicant argued that the proposed mark “does not convey the exact nature of the goods,” and that the goods are not books, but tapes. In nevertheless finding the mark generic, we pointed out that Applicant's arguments missed the point, which “is whether members of the relevant public primarily use or understand the term sought to be registered to refer to the genus.” Id. at 1280. Relying on dictionary definitions of the proposed mark's constituent terms, we found that the proposed mark “has a plain and readily understood meaning when used in connection with … prerecorded audio tape cassettes featuring books.” Id. In other words, the question is whether the term is generic in the context of the goods. Here, when used for computer hardware and peripherals for transmitting pictures, video, audio and data, SPECTACLES “has a plain and readily understood meaning.”

The TTAB also pointed out that “a product may have more than one generic name.” In re Recorded Books, 42 USPQ2d at 1281. The TTAB also found that the evidence of record does not support Applicant's argument that SPECTACLES is “an old-fashioned term popular in the 18th century.”

Even if “spectacles” was an “old-fashioned” term, that would not change anything. The question “is not whether a term is more frequently chosen colloquially than any of its synonyms, but whether it still retains its generic meaning. Appellants have made no showing that the term in this case [MART for retail discount stores] has any meaning in the minds of the consuming public other than store or market.” S.S. Kresge Co. v. Utd. Factory Outlet, Inc., 598 F.2d 694, 202 USPQ 545, 546-47 (1st Cir. 1979). See also In re Int'l Ass'n. for Enterostomal Therapy, Inc., 218 USPQ 343, 344 (TTAB 1983) (“The test is not whether a term is more frequently used than its synonyms, but rather whether it does in fact have a generic meaning.”). Indeed, Applicant's argument that “spectacles” is too “old-fashioned” to be generic is essentially the same argument the Federal Circuit rejected in finding BUNDT generic for ring cake mix in In re Northland, 227 USPQ at 962.

The TTAB concluded that “the term ‘spectacles' is commonly used to refer to smart glasses or camera glasses, which are referred to as ‘smart spectacles,' with the result being that consumers understand ‘spectacles' and ‘smart spectacles' to refer to the consumer electronics category which Applicant refers to as smart glasses or camera glasses.”

The trademark attorneys at Thomas P. Howard, LLC are experienced at prosecuting trademark applications before the USPTO, as well as enforcing trademarks or defending against infringement claims in litigation nationwide including in Colorado.

About the Author

Thomas P. Howard

Thomas Howard is an experienced trial lawyer that handles intellectual property litigation nationwide, including copyright, trademark, trade secret and patent litigation, as well as complex civil litigation, including breach of contract, interference with contract, breach of fiduciary duty, conspiracy, fraud and fraudulent transfer of assets.


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