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Mixed-Use DOCK BLOCKS Genericness

Posted by James Juo | Sep 13, 2022 | 0 Comments

“‘A generic name—the name of a class of products or services—is ineligible for federal trademark registration.'” In re GJ & AM, LLC, 2021 USPQ2d 617, at *4 (TTAB 2021) (quoting U.S. Pat. & Trademark Off. v. B.V., 140 S. Ct. 2298, 2020 USPQ2d 10729, at *1 (2020)).

In H. Marvin Ginn Corp. v. Int'l Ass'n of Fire Chiefs, Inc., 782 F.2d 987 (Fed. Cir. 1986), the Federal Circuit set forth a two-step inquiry to determine whether a mark is generic:

First, what is the genus (category or class) of goods or services at issue?

Second, does the relevant public understand the term sought to be registered primarily to refer to that genus of goods or services?

The relevant public's perception is the chief consideration in determining whether a term is generic. Princeton Vanguard, LLC v. Frito-Lay N. Am., Inc., 786 F.3d 960, 114 USPQ2d 1827, 1833 (Fed. Cir. 2015); see also, 140 S. Ct. 2298, 2306 (“whether a term is generic depends on its meaning to consumers”)

Any doubt regarding whether Applicant's proposed mark is a generic name must be resolved in Applicant's favor. GJ & AM, 2021 USPQ2d 617, at *33 (citing In re Waverly, Inc., 27 USPQ2d 1620, 1624 (TTAB 1993)).

DOCK BLOCKS for “modular floating non-metal docks”

The Trademark Trial and Appeal Board (“TTAB”) recently reversed a genericness refusal of DOCK BLOCKS for “modular floating non-metal docks”; but affirmed a Section 2(e)(1) refusal for being merely descriptive. In re Dock Blocks of North America, LLC, Ser. No. 88320379 (TTAB Sept. 8, 2022).

Not Generic

Although the record did not show any examples where the combination mark having the constituent terms “dock blocks” was used by a third party in association with “modular floating non-metal docks”; “[t]he fact that there is no evidence of third-party use of the precise term [DOCK BLOCKS] is not, by itself, necessarily fatal to a finding of genericness.”

Citing In re Mecca Grade Growers, LLC, 125 USPQ2d 1950, 1956 (TTAB 2018) (MECHANICALLY FLOOR-MALTED), In re Empire Tech. Dev. LLC, 120 USPQ2d 1544, 1550 (TTAB 2017) (COFFEE FLOUR), and In Paper Corp., 834 F.2d 1017, 5 USPQ2d 1110, 1112 (Fed. Cir. 1987) (SCREENWIPE); the TTAB looked to the applicant's own use of the proposed marks in finding that they were generic names for the involved goods.

The record showed that the applicant had used the term “Dock Blocks” both as a compound noun “generically” as well as “to modify” terms such as “floating docks.” Such “mixed use” of the proposed mark as both a generic name of the goods and a putative source-indicator for them was “incompatible” with finding that the “primary” significance of the proposed mark was as a generic name. See, e.g., In re Merrill Lynch, Pierce, Fenner & Smith, Inc., 828 F.2d 1567, 4 USPQ2d 1141, 1143 (Fed. Cir. 1987). This created “doubt” as to whether DOCK BLOCKS was generic, and that doubt was resolved in favor of the applicant. GJ & AM, 2021 USPQ2d 617, at *33.

Merely (Highly) Descriptive

Based on the same evidence, however, the TTAB found that the DOCK BLOCKS mark was “highly descriptive.” The greater the degree of descriptiveness, the heavier the burden to prove it has attained secondary meaning. Royal Crown Co. v. Coca-Cola Co., 892 F.3d 1358, 127 USPQ2d 1041, 1048 (Fed. Cir. 2018); In re Sausser Summers, PC, 2021 USPQ2d 618, at *7 (TTAB 2021).

No Acquired Distinctiveness

Although use of DOCK BLOCKS was alleged for “a period of nearly 10 years,” there was little evidence about the degree of use for the first five years and advertising or sale figures were not provided for that earlier period of time,

The advertising figures (ranging from $57K to $203K annually between 2015 and 2019) were deemed “modest.”

As for sales figures, it was unclear whether the applicant had annual sales ranging from $2.5 to $3.0 million for each year since in 2011, or whether that range reflected only a more recent claimed “growth in annual sales.” The TTAB found that it “cannot accurately gauge Applicant's level of success without additional evidence as to Applicant's market share or how [DOCK BLOCKS docks] rank[ ] in terms of sales in the trade.”

The TTAB also found that the unsolicited media coverage of the applicant's products was either mixed or lackluster with respect to consumer recognition.

Because the applicant provided no “context as to how the raw numbers Applicant provided compare in the marketplace,” and considering the modest advertising expenditures, and modest sales, in a vacuum; the TTAB concluded the evidence fell far short of carrying the heavy burden of showing that the “highly descriptive” DOCK BLOCKS mark had acquired distinctiveness.

The trademark attorneys at Thomas P. Howard, LLC are experienced in prosecuting, enforcing, or defending trademarks nationwide including in Colorado.

About the Author

James Juo

James Juo is an experienced intellectual property attorney. He has successfully litigated various intellectual property disputes involving patents, trademarks, copyrights, and trade secrets. He also has counseled clients on the scope and validity of patent and trademark rights.


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