Interstate Packaging Corp.

Trademark Trial and Appeal Board

Jul 22, 1997

EX (T.T.A.B. Jul. 22, 1997)

THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF THE TTAB JULY 22, 97
Paper No. 14
EWH/TAF
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Interstate Packaging Corporation
________
Serial No. 74/496,567
_______
Evelyn M. Sommer for Interstate Packaging Corporation.
Robert C. Clark, Jr., Trademark Examining Attorney,
Law Office 108 (David Shallant, Managing Attorney)
_______
Before Sams, Seeherman and Hanak, Administrative Trademark
Judges.
Opinion by Hanak, Administrative Trademark Judge:
Interstate Packaging Corporation (applicant) seeks to
register JUMBO in typed capital letters for "plastic or
paper bags for merchandise packaging." The application was
filed on March 3, 1994 with a claimed first use date of
January 10, 1964. Initially, applicant sought to register
the mark JUMBO for "shopping bags." Applicant noted that it
was the owner of Registration No. 951,611 for JUMBO for
"shopping bags," and that applicant had inadvertently failed
to renew the registration in 1993. This Registration No.
Ser No. 74/496,567
2
951,611 issued to applicant's predecessor on January 30,
1973 with the same claimed first use date of January 10,
1964. At the request of the Examining Attorney, applicant
agreed to modify its identification of goods from "shopping
bags" to "plastic or paper bags for merchandise packaging."
In the first office action, registration was refused
pursuant to Section 2(e)(1) of the Lanham Trademark Act on
the basis that applicant's mark is merely descriptive of its
goods. However, the Examining Attorney suggested that
applicant "amend to seek registration under Trademark Act
Section 2(f) based on acquired distinctiveness" by
submitting the following "claim of distinctiveness": "The
mark has become distinctive of the goods through the
applicant's substantially exclusive and continuous use in
commerce for at least the five years immediately before the
date of this statement." In response, applicant submitted
the aforementioned claim of distinctiveness.
In Office Action No. 2, the new Examining Attorney,
without providing any explanation whatsoever, simply stated
that applicant's showing of acquired distinctiveness was
insufficient. In support of his contention that applicant's
mark was merely descriptive, the Examining Attorney made of
record excerpts from 17 stories from the NEXIS database
where the term "jumbo" was used to describe various types of
bags or sacks.
In response, applicant submitted the declaration of
applicant's president as well as numerous specimens of sales
Ser No. 74/496,567
3
sheets and invoices evidencing significant sales of plastic
and paper bags for merchandise packaging under the mark
JUMBO.
In the third and final office action, the Examining
Attorney dismissed applicant's evidence of acquired
distinctiveness and stated again that "JUMBO is merely
descriptive of applicant's shopping bags." (Of course, at
this point, applicant's identification of goods was not
"shopping bags,"; rather it was, as suggested by the first
Examining Attorney, "plastic or paper bags for merchandise
packaging.").
Subsequently, applicant and the Examining Attorney
filed briefs. Applicant did not request a hearing.
Despite the fact that in all three office actions the
ground of refusal was that applicant's mark JUMBO was merely
descriptive of applicant's goods, in his brief, the present
Examining Attorney argued for the first time that JUMBO was
a generic term for a type of shopping bag (Examining
Attorney's brief page 2), and that therefore "the question
of whether or not it [JUMBO] has acquired secondary meaning
is irrelevant." (Examining Attorney's brief page 4). In
its reply brief, applicant noted that the Examining Attorney
was setting forth a new ground for refusal (genericness)
which applicant had not had the opportunity to address
either during the examination process or in its initial
brief on appeal. We concur with the applicant, and find the
Examining Attorney's approach to be troublesome.
Ser No. 74/496,567
4
Nevertheless, we elect to consider whether the Examining
Attorney has proven that the term JUMBO is generic for
"plastic or paper bags for merchandise packaging," and if it
is not, whether applicant has established that the term
JUMBO has become distinctive (i.e. indicating a particular
source) when used in conjunction with these type of bags.
At the outset, we note that the burden is on the
Examining Attorney to establish that the mark JUMBO is
generic as applied to applicant's goods. In re Merrill
Lynch, 828 F.2d 1567, 4 USPQ2d 1141, 1143 (Fed. Cir. 1987).
Moreover, our primary reviewing Court has stated that it is
incumbent upon the Examining Attorney to make a "substantial
showing ... that the matter is in fact generic." Merrill
Lynch, 4 USPQ2d at 1143. Indeed, this substantial showing
"must be based on clear evidence of generic use." Merrill
Lynch, 4 USPQ2d at 1143. Thus, it is quite clear that a
"strong showing is required when the Office seeks to
establish that a term is generic." In re K-T Zoe Furniture
Inc., 16 F.3d 390, 29 USPQ2d 1787, 1788 (Fed. Cir. 1994).
Moreover, any doubt whatsoever on the issue of genericness
must be resolved in favor of the applicant. In re Waverly
Inc., 27 USPQ2d 1620, 1624 (TTAB 1993). In addition, it is
critical to remember that the purported genericness of a
mark is determined in relation to the particular goods or
services for which registration is sought, and from the view
of "the relevant public which does or may purchase the goods
or services" for which registration is sought. Magic Wand
Ser No. 74/496,567
5
Inc. v. RDB Inc., 940 F.2d 638, 19 USPQ2d 1551, 1552-53
(Fed. Cir. 1991).
As previously noted, the only evidence made of record
by the Examining Attorney are excerpts from 17 stories taken
from the NEXIS database. However, as the Examining Attorney
acknowledges, not all of "the excerpts submitted ...
specifically refer to the type of bags manufactured and sold
by applicant." (Examining Attorney's brief page 3).
Indeed, of the 17 excerpts, there are, at the very most,
only 4 which refer to the type of bags for which applicant
seeks registration of the term JUMBO (i.e. excerpts 1, 3, 12
and 14). Moreover, in reviewing these 4 excerpts, it
appears that the term "jumbo" is used in a descriptive, and
not in a generic manner. Indeed, in all 17 excerpts the
term "jumbo" is used to describe various types of bags or
sacks. In not one of the 17 excerpts is the term "jumbo"
used in a manner such that it is clear that "jumbo" is a
generic term for a type of bag. Thus, we find that the
Examining Attorney has fallen far short of providing, as
required by case law, "clear evidence of generic use."
Merrill Lynch, 4 USPQ2d at 1143. Indeed, the Examining
Attorney's evidence does not begin to measure up to the
"strong showing ... required when the Office seeks to
establish that a term is generic." K-T Zoe Furniture Inc.,
29 USPQ2d at 1788.
Having found that on this record it has not been
established that JUMBO is generic for "plastic or paper bags
Ser No. 74/496,567
6
for merchandise packaging," we turn next to consider
applicant's evidence that the descriptive term JUMBO has
become distinctive of applicant's goods. Applicant has
established that it and its predecessors have made
continuous use of the mark JUMBO in connection with the
goods in question for well over thirty years. In addition,
as previously noted, applicant has made of record evidence
showing that sales of bags bearing the mark JUMBO by
applicant and its predecessors have been substantial.
Accordingly, we find that applicant has established that
JUMBO has become distinctive of "plastic or paper bags for
merchandise packaging."
Decision: The refusal to register is reversed.
J. D. Sams
E. J. Seeherman
E. W. Hanak
Administrative Trademark
Judges, Trademark Trial
and Appeal Board
Ser No. 74/496,567
7