87212859 (T.T.A.B. Jun. 20, 2019)

Daniel Cohen

Trademark Trial and Appeal BoardJun 20, 2019

87212859 (T.T.A.B. Jun. 20, 2019)

THIS OPINION IS NOT A PRECEDENT OF THE TTAB Mailed: June 20, 2019 UNITED STATES PATENT AND TRADEMARK OFFICE _____ Trademark Trial and Appeal Board _____ In re Daniel Cohen _____ Serial No. 87212859 _____ Erik M. Pelton of Erik M. Pelton Associates PLLC, for Daniel Cohen. Jeffrey Sjogren, Trademark Examining Attorney, Law Office 122 (John Lincoski, Managing Attorney). _____ Before Wellington, Lynch, and Coggins, Administrative Trademark Judges. Opinion by Wellington, Administrative Trademark Judge: Daniel Cohen (Applicant) seeks registration on the Supplemental Register of the term BULKOFFERS, in standard characters, for “providing a website featuring online retail store services for the resale of bulk or wholesale merchandise, namely, a wide variety of consumer goods, including electronics, books, watches and clothing” in International Class 35.1 1 Application Serial No. 87212859 filed on October 24, 2016, originally seeking registration on the Principal Register based on Applicant’s allegation of use in commerce under Section 1(a) of the Trademark Act, 15 U.S.C. § 1051(a). The application was then amended, on May 12, 2017, to change the filing basis to a bona fide intent to use the proposed mark in commerce under Section 1(b) of the Trademark Act, 15 U.S.C. § 1051(b). On August 10, 2017, Applicant Serial No. 87212859 2 The Trademark Examining Attorney finally refused registration of the proposed mark on the Supplemental Register under Section 23(c) of the Trademark Act (“the Act”), 15 U.S.C. § 1091(c), on the ground that Applicant’s proposed mark is a generic term for the identified services, and thus incapable of distinguishing them. After the refusal became final, Applicant appealed. The appeal has been fully briefed by Applicant and the Examining Attorney. Refusal of registration on the Supplemental Register under Section 23(c) of the Act “In order to qualify for registration on the Supplemental Register, a proposed mark ‘must be capable of distinguishing the applicant’s goods or services.’” In re Emergency Alert Sols. Grp., LLC, 122 USPQ2d 1088, 1089 (TTAB 2017) (quoting 15 U.S.C. § 1091(c)). Generic terms do not qualify for registration because “by definition [they] are incapable of indicating a unique source.” In re La. Fish Fry Prods., Ltd., 797 F.3d 1332, 116 USPQ2d 1262, 1267 (Fed. Cir. 2015) (citing In re Merrill Lynch, Pierce, Fenner, & Smith, Inc., 828 F.2d 1567, 4 USPQ2d 1141, 1142 (Fed. Cir. 1987) (“Generic terms… are the antitheses of trademarks, and can never attain trademark status.”)); see also Clairol, Inc. v. Roux Distrib. Co., 280 F.2d 863, 126 USPQ 397, 398 (CCPA 1960) (“The generic name by which a product is known is not a mark which can be registered on the Supplemental Register under [S]ection 23 because such a name is incapable of distinguishing applicant’s goods from goods of the same name filed an amendment to allege use, alleging a date of first use anywhere and in commerce as of January 22, 2016, and amended the application to seek registration on the Supplemental Register. Serial No. 87212859 3 manufactured or sold by others.”). A generic term “is the common descriptive name of a class of goods or services.” Royal Crown Co. v. Coca-Cola Co., 892 F.3d 1358, 127 USPQ2d 1041, 1045 (Fed. Cir. 2018) (quoting H. Marvin Ginn Corp. v. Int’l Ass’n of Fire Chiefs, Inc., 782 F.2d 987, 228 USPQ 528, 530 (Fed. Cir. 1986)). When a proposed mark is refused registration as generic, the examining attorney has the burden of proving genericness by clear and convincing evidence. In re Cordua Rests., Inc., 823 F.3d 594, 118 USPQ2d 1632, 1635 (Fed. Cir. 2016). “The critical issue in genericness cases is whether members of the relevant public primarily use or understand the term … to refer to the genus of goods or services in question.” Royal Crown, 127 USPQ2d at 1046 (quoting Marvin Ginn, 228 USPQ at 530). The Federal Circuit has 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, is the term sought to be registered understood by the relevant public primarily to refer to that genus of goods or services? Marvin Ginn, 228 USPQ at 530. The relevant public’s perception is the chief consideration in determining whether a term is generic. See Princeton Vanguard, LLC v. Frito-Lay N. Am., Inc., 786 F.3d 960, 114 USPQ2d 1827, 1833 (Fed. Cir. 2015). Evidence of the public’s understanding of a term may be obtained from “any competent source, such as consumer surveys, dictionaries, newspapers and other publications.” Id. at 1830 (quoting In re Northland Aluminum Prods., Inc., 777 F.2d 1556, 227 USPQ 961, 963 (Fed. Cir. 1985)). Serial No. 87212859 4 With respect to the first part of the Marvin Ginn inquiry, the genus may be defined by the services identified in the application. See In re Reed Elsevier Props. 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). Here, both Applicant and the Examining Attorney agree that the recitation of services adequately describes the relevant genus of services – online retail store services for the resale of bulk or wholesale merchandise.2 There is also no dispute that the relevant consumers are members of the general public inasmuch as there is no restriction on Applicant’s trade channels and the goods being offered via the online retail store services are described in the application as “a wide variety of consumer goods.” With regard to how the general public will understand BULKOFFERS in the context of the online retail store services featuring a wide variety of bulk merchandise, the following relevant evidence has been submitted by the Examining Attorney (bold added for emphasis): • Definition of the term “Bulk” as “being in large quantities or not divided into separate units.”3 • Definition of the term “Offer(s)” as “to make available,” or “to place merchandise on sale.”4 2 See 4 TTABVUE 10 (Applicant’s brief) and 6 TTABVUE 5 (Examining Attorney’s Brief). 3 Taken from MERRIAM-WEBSTER online dictionary (www.merriam-webster.com); printouts attached to Office Action issued on February 3, 2017 Office Action, TSDR pp. 24-31. 4 Id., TSDR pp. 33-42. Serial No. 87212859 5 • Printouts from the “Friends & Farmers Cooperative” website that offers food products, including allowing wholesale customers access to “the bulk quantity items . . . we will have special bulk offers specific to our wholesale customers on a first come first serve basis.”5 • Printouts from an online retail website selling various goods, including sparklers for weddings, with the following information, “If you wish to place a custom order, rest assure[d] that we will honor our sparkler bulk offers for combination orders.”6 • Printouts from an online retail linen website “SF Linen Outlet” featuring “Bulk Offers . . . Our Bulk Offers page features bulk lots and wholesale lots of high quality home merchandise. Anything from window curtains to show curtains or tablecloths to towels . . .”7 • Printouts from a website “Omni Comp,” a wholesale dealer of used laptops and refurbished notebooks. The company states that “Generally, we are selling our equipment through the wholesale-bulk offers sent to our wholesale customers. These bulk offers are sent using electronic mail.”8 • The following printout excerpt from the “Nature Pacific” website:9 5 Printouts from website (www.friendsandfarmers.coop); Id., TSDR p. 2-4. 6 Printouts from website (www.welovesparklers.com); Id., TSDR pp. 5-6. 7 Printouts from website (www.sflinenoutlet.com); Id., TSDR p. 7. 8 Printouts from website (www. omnicomp.us); Id., TSDR p. 8. 9 Printouts from website (www.usa.naturepacific.com); Id., TSDR pp. 11-12. Serial No. 87212859 6 • The following excerpt of an advertisement placed on Ebay website:10 • Printouts from the “Highway Entertainment” website offering various arcade game and electronic goods for sale, with a “Bulk offers” menu advertising “Here you can find all the latest bulk offers being offered by Highway Entertainment. These include bulk buys for . . . please review the below bulk offers.”11 10 Printout from website (www.ebay.com) attached to Office Action issued on July 28, 2017, TSDR p. 6. 11 Id., pp. 8-17. Although “Australian Website” is listed at the top of the first website page, the prices are in US dollars and advertises the goods as “ships from [Japan or Australia].” We therefore conclude that this is a website that a US consumer may peruse and shop for electronic goods. In re Florists’ Transworld Delivery Inc., 106 USPQ2d 1784, 1786 (TTAB 2013) (a website located outside the United States may have probative value depending on the circumstances, including whether the consuming public in the United States is likely to have been exposed to the foreign website). See also, In re Bayer AG, 488 F.3d 960, 82 USPQ2d 1828, 1835 (Fed. Cir. 2007) (foreign websites and foreign news publication evidence possess some probative value as to prospective consumer perception in the US because of the “growing availability and use of the internet as a resource for news, medical research results, and general medical information”); In re Well Living Lab Inc., 122 USPQ2d 1777, 1781 n.10 (TTAB 2017) (foreign website evidence relevant because potential consumers would likely encounter English language websites when searching for companies offering services similar to applicant). Thus, this Australian website is relevant to demonstrate the manner in which the term “bulk offers” would be encountered by US consumers. Serial No. 87212859 7 • Printouts from the “American Library Association” store website offering various book and book-related items for sale. Consumers may browse the retail offerings by “Bundles and Bulk offers.”12 • Printouts from the “Bold-Products” website offering various haircare products for sale, including “Bulk offers . . . Bigger and Better” before listing “products that have been combined in a package to save you some $$$ . . .”13 • Printouts from the “Bee Budget” website offering various consumers products for sale, including “Bulk offers . . . Buy quantity for big discounts . . .”14 • Printouts from the “Facility Solutions Depot” retail website offering various cleaning products for sale, touting “buy in bulk . . . you can take advantage of any of our bulk offers on your needed cleaning supplies . . . Buying in bulk is becoming increasingly popular … our customers have a place where they can enjoy buying cleaning supplies in bulk from the comfort of their office . . .”15 • An online article “Flexible individual or bulk offers for products in Magento Store,” from the website Module Bazaar, describing “Magento . . . open source eCommerce software platform” for e-merchants to attract and encourage customers with multiple purchase “offers.”16 • An online article “Black Friday Special . . . Snatch the offers and buy products at low cost,” giving the following advice regarding online shopping “be more sure about the purchases with bulk offers, in that case you have to make sure about the quality of the product . . .” 17 • An online forum “Discogs” with the question “When will Bulk offers be available?” and a discussion of “being able to offer buyers a bulk load of records.”18 12 Office Action issued on July 28, 2017, TSDR pp. 20-22. 13 Printouts from website (www.bold-products.com) attached to Office Action issued on April 18, 2018, TSDR p. 2-4. 14 Printouts from website (www.beebudget.com), Id., TSDR p. 6-9. 15 Printouts from website (www.facility solutionsdepot.com), Id., TSDR p. 12-13. 16 Printouts from website (www.modulebazaar.com), Id., TSDR p. 14-16. 17 Printouts from website (www.entrarnomeeuface.com), Id., TSDR p. 17-18. 18 Printouts from website (www.www.discogs.com), Id., TSDR p. 24-25. Serial No. 87212859 8 • Printouts from the “K’nex” website offering toy parts, including “10 Bulk offers on new K’NEX parts” describing this as “offers on K’NEX parts in bulk.”19 Applicant’s website contains language that also helps demonstrate the generic nature of the proposed mark:20 The language “Bulk Wholesale Closeout Offers” (in the top left corner) makes clear that Applicant uses “bulk offers” to refer to the same type of online retail service for which third parties commonly use the same wording – namely, merchandise being sold via bulk offers. See In re Reed Elsevier Props., 82 USPQ2d 1380 (Appropriate to consider the applicant’s website to provide context for and inform the understanding 19 Printouts from website (www.knexusergroup.org.uk), Id., TSDR p. 35-36. Again, although this is evidently a UK website, the prices are in US dollars and the website describes the availability of shipping the products via “Airmail.” Accordingly, we find that this is website directed, at least in part, to US consumers and thus is relevant. See Note 11. 20 Original screenshot specimen filed by Applicant with application on October 24, 2016. Serial No. 87212859 9 of the identification); In re Steelbuilding.com, 75 USPQ2d 1420 (examining the subject website in order to understand the meaning of terms); In re Hikari Sales USA, Inc., 2019 BL 111514, *8-9 (TTAB 2019) (Applicant’s specimen probative in indicating how the public perceives the term). Based on this record, we agree with the Examining Attorney that BULKOFFERS is “shown to be generic for online retail store services for the resale of bulk or wholesale merchandise, leaving no alternative meanings or interpretations.”21 Specifically, the record clearly and convincingly demonstrates that the combination of the words BULK and OFFERS “into a single composite conveys the exact definitions above — the act of making available, or placing on sale, goods and merchandise that come in large quantities or have not been divided down into smaller separate units for individual purchase.”22 Accordingly, we find that the consuming public readily understands “bulk offers” to refer to a key aspect of the genus of services by describing the particular manner in which products are sold and purchased. See Royal Crown, 127 USPQ2d at 1047 (in a genericness determination, the Board must “consider whether the relevant consuming public would consider the term … to be generic for a subcategory of the claimed genus of [services]”); see also In re Cordua, 118 USPQ2d at 1638 (“[A] term is generic if the relevant public understands the term to refer to part of the claimed genus of goods or services, even if the public does not understand the term to refer to the broad genus as a whole.”). 21 6 TTABVUE 13. 22 Id. at 6. Serial No. 87212859 10 Put simply, providing “bulk offers” to consumers is a class of online retail store services featuring bulk merchandise sales. The evidence also clearly and convincingly demonstrates a competitive need for others to use “bulk offers” to refer to how they offer goods for sale via their online retail services. Applicant should not be allowed to register this term and thus possibly prevent others in the industry from using “bulk offers” in connection with their retail store services. See In re Bos. Beer Co. L.P., 198 F.3d 1370, 53 USPQ2d 1056 (Fed. Cir. 1999); see also “Our society is better served if … highly descriptive or generic terms remain available for use among competitors.” In re Water Gremlin Co., 635 F.2d 841, 208 USPQ 89, 91 (CCPA 1980) (footnote omitted). We have considered Applicant’s arguments and evidence in support of registration, but we remain convinced that the applied-for mark is unregistrable. Specifically, we are not persuaded by the existence of the 12 third-party registrations submitted by Applicant.23 These registrations are for marks that either contain the term BULK or include wholesale services in their recitations; however, they have very little or no probative value inasmuch as not one is for the same mark nor can we find any pattern for registration of marks that could somehow apply to Applicant’s proposed mark. In any event, as often stated, each case must stand on its own record and be decided on its own merits, and “[n]either the Trademark Examining Attorney nor the Board are bound to approve for registration an Applicant’s mark based solely upon the registration of other assertedly similar 23 Copies of the registrations were attached to Applicant’s response filed on March 8, 2018. Serial No. 87212859 11 marks ... having unique evidentiary records.” In re Datapipe, Inc., 111 USPQ2d 1330, 1336 (TTAB 2014); see also, In re Nett Designs, 236 F.3d 1339, 57 USPQ2d 1564. 1566 (Fed. Cir. 2001) (“Even if some prior registrations had some characteristics similar to [Applicant’s] application, the PTO’s allowance of such prior registrations does not bind the Board or this court.”). Applicant also asserts that, “[t]o support a generic refusal, the Examining Attorney must show substantial evidence that BULKOFFERS – as a compound term – is clearly generic,” citing In re Steelbuilding.com, 75 USPQ2d 1424.24 To the extent that Applicant argues that the proposed mark is not generic because of the lack of space between the component words, it has long been held that a compound term does not lose its genericness when spaces are removed if purchasers would understand the resulting compound to be generic. To wit, the term SCREENWIPE was held generic despite the lack of a dictionary definition for the mark as a whole: “[T]he PTO has satisfied its evidentiary burden if, as it did in this case, 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.” In re Gould Paper Corp., 834 F.2d 1017, 5 USPQ2d 1110, 1111-12 (Fed. Cir. 1987). Although it is possible for “the whole [of a mark to] be greater than the sum of its parts,” Princeton Vanguard, 114 USPQ2d at 1831, this is not the case merely because the words “bulk” and “offers” have been joined without a space. Rather, “the entire formulation does not add any meaning to the otherwise 24 4 TTABVUE 22. Serial No. 87212859 12 generic mark.” See Steelbuilding, 75 USPQ2d at 1421. In this case, we find that consumers will easily and readily find BULKOFFERS is merely the compound of the expression “bulk offers” without the space, and that it refers to a class of the genus of services. Decision: The refusal to register Applicant’s proposed mark on the ground that it is a generic designation for the relevant genus of services is affirmed.