“A generic name–the name of a class of products or services–is ineligible for federal trademark registration.” U.S. Patent & Trademark Office v. Booking.com B.V., 140 S. Ct. 2298, 2020 USPQ2d 10729 (2020).

Whether a proposed mark is generic rests on its primary significance to the relevant public. 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).

Making this determination “involves a two-step inquiry: First, what is the genus of goods or services at issue? Second, is the term sought to be registered … understood by the relevant public primarily to refer to that genus of goods or services?” H. Marvin Ginn Corp. v. Int'l Ass'n. of Fire Chiefs, Inc., 782 F.2d 987, 228 USPQ 528, 530 (Fed. Cir. 1986); see also Royal Crown Co. v. Coca-Cola Co., 892 F.3d 1358, 127 USPQ2d 1041, 1046 (Fed. Cir. 2018).

Moreover, “a term can be generic for a genus of goods or services if the relevant public … understands the term to refer to a key aspect of that genus.” In re Cordua Rests., Inc., 823 F.3d 594, 118 USPQ2d 1632, 1637 (Fed. Cir. 2016).

STREAM THEATRES

The TTAB has affirmed that the term STREAM THEATRES is generic for the streaming of audio, visual and audiovisual material during in-person events at movie theaters and other venues. In re Christian J. A. O. Faloye and John C. R. Cato, Ser. No. 90260733 (TTAB Dec. 1, 2023).

The TTAB found that although streaming theatrically entertainment into a private home is different from providing a public venue and streaming entertainment, such that the service the consumer is receiving is different in each case; “they all involve streaming and theaters.”

Furthermore, the term “streaming” is generic for the service of streaming, which is a key aspect of the identified services.

In addition, “THEATRE is generic for a key aspect of the services, i.e., they are provided at in-person events at movie theatres and other venues.

We do not find, as Applicants urge, that the combination presents an incongruous combination or a meaning beyond their generic meanings that tell a consumer streaming takes place in a theater. That Applicants are the first or only users of such a term or word combination does not support registration of generic wording. See In re Greenliant Sys. Ltd., 97 USPQ2d 1078, 1083 (TTAB 2010) (“The fact that an applicant may be the first or only user of a generic designation or, as in this case, a compressed version of such a term, does not justify registration if the only significance conveyed by the term is that of the category of goods.”); Nat'l Shooting Sports Found., Inc., 219 USPQ 1018, 1020 (TTAB 1983).

            ‘[A] compound of generic elements is [also] generic if the combination yields no additional meaning to consumers capable of distinguishing the goods or services.”' Consumer Prot. Firm, 2021 USPQ2d 238, at *16 (quoting Booking.com, 2020 USPQ2d 10729, at *7). As the Federal Circuit has explained, “‘where the [proposed] mark in its entirety has exactly the same meaning as the individual words . . . ‘the [US]PTO has satisfied its evidentiary burden if . . . it produces evidence including dictionary definitions that the separate words joined to form a compound have a meaning identical to the meaning common usage would ascribe to those words as a compound [or phrase].'” Id., at * 17 (quoting Princeton Vanguard, LLC v. FritoLay N. Am., Inc., 786 F.3d 960, 114 USPQ2d 1827, 1831 (Fed. Cir. 2015)) (internal citation omitted).

Also, the lack of third-party use of the term was not necessarily fatal to the finding of genericness. See In re Gould Paper Corp., 834 F.2d 1017, 5 USPQ2d 1110, 1112 (Fed. Cir. 1987) (finding SCREENWIPE was generic even though there was no evidence of third-party use of the proposed mark); In re Mecca Grade Growers, LLC, 125 USPQ2d 1950, 1957 (TTAB 2018) (finding MECHANICALLY FLOOR-MALTED was generic even in the absence of its use by third parties or the public).

The TTAB concluded that “[c]onsumers, in the context of Applicants' services … would understand the term STREAM THEATRES to refer to theatres where entertainment is streamed,” and affirmed the refusal to register the mark on the Supplemental Register.

Thomas P. Howard, LLC is experienced in trademarks nationwide including in Colorado.