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Posted by James Juo | Nov 17, 2023 | 0 Comments

A generic term is “the name of a class of products or services” and “is ineligible for federal trademark registration.” U.S. Patent & Trademark Office v. B.V., 140 S.Ct. 2298, 2020 USPQ2d 10729, at *2-3 (2020); Park ‘N Fly, Inc. v. Dollar Park & Fly, Inc., 469 U.S. 189, 224 USPQ 327, 329 (1985) (“Generic terms are not registrable”).

“The critical issue in genericness cases is whether members of the relevant public primarily use or understand the term to be protected to refer to the genus of goods or services in question.” Marvin Ginn. v. Int'l Ass'n of Fire Chiefs, Inc., 782 F.2d 987, 228 USPQ 528, 530 (Fed. Cir. 1986); In re IP LLC, 586 F.3d 1359, 92 USPQ2d 1682, 1685 (Fed. Cir. 2009) (“The test is not only whether the relevant public would itself use the term to describe the genus, but also whether the relevant public would understand the term to be generic.”); see also, 2020 USPQ2d 10729, at *5 (“[T]he relevant meaning of a term is its meaning to consumers”).


The TTAB recently held that Registration No. 5545212 for THE EDUCATION LAWYERS mark was not generic for “legal services” in class 45. Montgomery Law LLC v. Jacobson & John LLP, Cancellation No. 92073600 (TTAB Nov. 9, 2023).

The probative value of Internet printouts of search results from the website for the terms “education lawyers” and other websites was limited because there was no testimony from a witness based on personal knowledge linking these Internet printouts to any of the parties or explaining the information found therein, these Internet printouts cannot be used to demonstrate the truth of the matter asserted because they constitute hearsay. Fed. R. Civ. P. 802; see, e.g., Spiritline Cruises LLC v. Tour Mgmt. Serv., Inc., 2020 USPQ2d 48324, at *2 (TTAB 2020) (Internet printouts and other materials properly introduced under a notice of reliance without supporting testimony considered only for what they show on their face rather than for the truth of the matters asserted).

As such, Internet printouts are admissible to show not the truth of their content but rather that the public has been exposed to them and to show the meaning of the mark. See, e.g., Swiss Watch Int'l Inc. v. Fed'n of the Swiss Watch Indus., 101 USPQ2d 1731 (TTAB 2012) (Internet printouts acceptable to show only that statements were made or the information was reported in the webpages); Rocket Trademarks Pty Ltd. v. Phard S.p.A., 98 USPQ2d 1066 (TTAB 2011); In re Fitch IBCA, Inc., 64 USPQ2d 1058, 1060 (TTAB 2002) (because website content is accessible by the consuming public, it constitutes evidence that the public may be exposed to statements appearing therein); Sports Authority Michigan Inc. v. PC Authority Inc., 63 USPQ2d 1782, 1798 (TTAB 2001) (Internet materials are not evidence of use but may have some probative value to show the meaning of a mark).


            Although this evidence supports at least some public exposure to use of “education law” and “education lawyers” to refer to a type of lawyer or area of legal practice, the quantity of evidence is small. As to the few examples in the record, without testimony or evidence indicating how many views these websites have received or if the scope of consumer exposure to them was nationwide, regional, or otherwise restricted, or how long the websites were available to the public, their probative value is quite limited.

The TTAB concluded that the evidence was insufficient to show that the registered THE EDUCATION LAWYERS mark is generic.

Thomas P. Howard, LLC is experienced in 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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