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Cheeky Genericness

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

A generic term “is the common descriptive name of a class of goods or services” and is unregistrable. Princeton Vanguard, LLC v. Frito-Lay N. Am., Inc., 786 F.3d 960, 114 USPQ2d 1827, 1830 (Fed. Cir. 2015); 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 two-part test for genericness is: (1) what is the genus (class or category) of the goods or services at issue; and (2) does the relevant public understand the designation primarily to refer to that genus of goods or services. Princeton Vanguard, 114 USPQ2d at 1830; Marvin Ginn, 228 USPQ at 530); Couch/Braunsdorf Affinity, Inc. v. 12 Interactive, LLC, 110 USPQ2d 1458, 1462 (TTAB 2014).

What's the Genus?

In trademark prosecution, the identification of goods in a trademark application is commonly relied upon in defining the genus. In re Reed Elsevier Prop. Inc., 482 F.3d 1376, 82 USPQ2d 1378, 1380 (Fed. Cir. 2007); Magic Wand Inc. v. RDB Inc., 940 F.2d 638, 19 USPQ2d 1551, 1552 (Fed. Cir. 1991) (a proper genericness inquiry focuses on the identification set forth in the application or certificate of registration); In re Serial Podcast, LLC, 126 USPQ2d 1061, 1063 (TTAB 2018) (proper genus generally is “set forth by the [identification of goods] in each subject application.”).

What Does the Relevant Public Understand?

For the second part of the Marvin Ginn test for determining genericness, the relevant public is the purchasing or consuming public for the identified goods.” Frito-Lay N. Am., Inc. v. Princeton Vanguard, LLC, 124 USPQ2d 1184, 1187 (TTAB 2017) (citing Magic Wand, 19 USPQ2d at 1553); Sheetz of Del., Inc. v. Doctor's Assocs. Inc., 108 USPQ2d 1341, 1351 (TTAB 2013). “Evidence of the public's understanding of the term may be obtained from any competent source, such as purchaser testimony, consumer surveys, listings in dictionaries, trade journals, newspapers and other publications.” Royal Crown Co., Inc. v. Coca-Cola Co., 892 F.3d 1358, 127 USPQ2d 1041, 1046 (Fed. Cir. 2018) (citing In re Merrill Lynch, 4 USPQ2d at 1143); see also In re Cordua Rests., Inc., 823 F.3d 594, 118 USPQ2d 1632, 1634 (Fed. Cir. 2016); Princeton Vanguard, 114 USPQ2d at 1830; In re Reed Elsevier, 82 USPQ2d at 1380 (finding third-party websites competent sources for determining what the relevant public understands mark to mean).

Determining whether a term is generic is fact intensive and depends on the record. See In re Tennis Indus. Ass'n, 102 USPQ2d 1671, 1680 (TTAB 2012); see also Royal Crown v. Coca-Cola Co., 127 USPQ2d at 1044 (“Whether an asserted mark is generic or descriptive is a question of fact” based on the entire evidentiary record).

BEEF CHEEKS for Pet Treats

In an appeal of a genericness refusal of the BEEF CHEEKS mark for “edible treats and chews for pets,” the TTAB found that certain edible pet treats and chews are made from the part of the cow known as the “beef cheek”; and consumers refer to such treats and chews as “beef cheek(s).” In re Natural Cravings Pet Treats LLC, Ser. No. 88785786 (TTAB Sept. 19, 2022).

            When an applied-for term “directly names the most important or central aspect or purpose of [an] applicant's goods” and would be understood by the relevant consumers as referring to a category of those goods, the term is generic. See In re Cent. Sprinkler Co., 49 USPQ2d 1194, 1199 (TTAB 1998) (finding ATTIC generic for automatic sprinklers for fire protection). Here, the record shows that flavor and texture, including the flavor and texture of beef cheek, is an important and central aspect for certain pet treats and chews known to be long-lasting, flavorful, healthy and, in some cases, potent in smell, and “beef cheek(s)” refers to a specific flavor of “edible treats and chews for pets” advertised and sold by Applicant and several third parties. See A.J. Canfield Co. v. Honickman, 808 F.2d 291, 1 USPQ2d 1364 (3rd Cir. 1986) (CHOLCOATE FUDGE generic for diet sodas with chocolate fudge flavor). Accordingly, we find that consumers would readily understand “beef cheek” to refer to the subset of pet treats and chews formulated from or resembling beef cheek(s).

            To the extent that “beef cheek” is an adjective for Applicant's pet treats and chews, it is settled that an adjective can be a generic term. See Sheetz of Del., Inc. v. Doctor's Assocs. Inc., 108 USPQ2d at 1366 (finding the adjective “footlong” generic in connection with sandwiches); In re Cent. Sprinkler Co., 49 USPQ2d at 1199 (finding the adjective ATTIC to be generic for “automatic sprinklers for fire protection”; “applicant's mark does not present the classic case of a generic noun, but rather a generic adjective”); In re Reckitt & Colman, N. Am. Inc., 18 USPQ2d 1389 (TTAB 1991) (the expression “generic name for the goods or services” is not limited to noun forms but also includes “generic adjectives,” that is, adjectives which refer to a genus or species, category or class, of goods or services). The significance of “beef cheek(s)” is as a generic adjective for this type of pet treat or pet chew; thus BEEF CHEEK is incapable of distinguishing the source of the goods. In re Empire Tech., 123 USPQ2d 1544, 1565-66 (TTAB 2017) (COFFEE FLOUR generic for flour made from coffee berries); In re Demos, 172 USPQ 408, 409 (TTAB 1971) (“CHAMPAGNE” merely names principal ingredient of applicant's salad dressing and is unregistrable).

The TTAB was not persuaded by the argument on appeal that “Applicant's BEEF CHEEK products are not comprised entirely of the cheeks from cows” but instead are made from “head skin head skin, which is the skin from the face of a cow that does not include the cheek.” The TTAB noted that evidence of record actually suggests that pet chews and treats made from beef cheek are also formulated, in part, from head skin.

Accordingly, the TTAB affirmed the refusal on the ground of genericness because edible pet treats and chews made from “beef cheek” is a type of pet treat and chew within the genus “edible treats and chews for pets” defined by the identification of goods in the trademark application.

The trademark attorneys at Thomas P. Howard, LLC enforce and defend 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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