Midwest Bus Corporation

Trademark Trial and Appeal Board

Mar 17, 2006

No. 76393583 (T.T.A.B. Mar. 17, 2006)

Mailed:
March 17, 2006
Bucher

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Midwest Bus Corporation
________

Serial No. 76393583
_______

Molly Basile Markley and Andrew R. Basile of Young & Basile,
P.C. for Midwest Bus Corporation.

Allison P. Schrody, Trademark Examining Attorney, Law Office
115 (Tomas V. Vlcek, Managing Attorney).
_______

Before Hohein, Bucher and Walsh, Administrative Trademark
Judges.
Opinion by Bucher, Administrative Trademark Judge:
Midwest Bus Corporation seeks registration on the
Supplemental Register of the mark BYK-RAK in standard
character form for goods identified in the application, as
“racks for vehicles for use in transporting bicycles, in
particular, a rack for a bus transporting bicycles” in
International Class 12.1

1 Application Serial No. 76393583 was filed on the Principal
Register on April 10, 2002 based upon applicant’s allegation of a
bona fide intention to use the mark in commerce. On November 14,
2003, applicant filed an Amendment to Allege Use (AAU) alleging
first use anywhere at least as early as April 2, 2003 and use in
commerce at least as early as September 17, 2003. At the same
time, applicant amended this application to the Supplemental
Register.
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT
OF THE TTAB
Serial No. 76393583
- 2 -
This case is now before the Board on appeal from the
final refusal of the Trademark Examining Attorney to
register this designation based upon the ground that this
term is incapable of functioning as a trademark for the
goods set forth above. Section 23 of the Trademark Act,
15 U.S.C. § 1091.
Applicant and the Trademark Examining Attorney have
fully briefed the case, but applicant did not request an
oral hearing. We affirm the refusal to register.
Summary of the arguments
Applicant argues that the term “bike rack” is not
generic for its goods, but rather is merely descriptive.
Furthermore, applicant contends that BYK-RAK “is more than a
mere misspelling, but a creative and distinguishing makeup
of words that create a distinctive commercial impression.”
Because “both words in Applicant’s mark are creatively
misspelled,” its “distortion of the terms [“bike” and
“rack”] are significant.” Applicant also points out that
these misspelled/distorted words are “connected into one
word by the hyphen.”
By contrast, the Trademark Examining Attorney argues
that “the public commonly understands the term ‘bike rack’
to refer to any holder for a bicycle, whether attached to
the ground, a building, or a vehicle such as a bus.”
Serial No. 76393583
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Furthermore, the Trademark Examining Attorney argues that
the genericness of a mark must be considered in association
with the goods to which the mark applies, so that “the
question of whether the spelling or pronunciation of BYK-RAK
is obvious must always be considered in relation to
applicant’s goods – bike racks for buses. She contends that
applicant’s particular spelling of the term “bike rack” as
BYK-RAK “is neither creative nor distinguishing.”
Procedural Matter
Before turning to the merits of the appeal, we must
first direct our attention to a procedural matter. The
Trademark Examining Attorney has objected to a reference
that applicant made in its brief to a third-party
registration. The Trademark Examining Attorney is correct
in that the record in any application should be complete
prior to appeal. 37 C.F.R. § 2.142(d). Inasmuch as the
reference to the third-party registration was made for the
first time with applicant’s appeal brief, we have not
considered it.2
The law of genericness
A term is generic if it names the class of the goods or
services to which it is applied. See In re Dial-A-Mattress
Operating Corp., 240 F.3d 1341, 57 USPQ2d 1807 (Fed. Cir.

2 We hasten to add that even if we had considered this
registration, it would not have changed our decision herein.
Serial No. 76393583
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2001), citing H. Marvin Ginn Corp. v. International
Association of Fire Chiefs, Inc., 782 F.2d 987, 228 USPQ
528 (Fed. Cir. 1986); Magic Wand Inc. v. RDB Inc., 940 F.2d
638, 19 USPQ2d 1551 (Fed. Cir. 1991); and In re Northland
Aluminum Products, Inc., 777 F.2d 1556, 227 USPQ 961 (Fed.
Cir. 1985). The test for determining whether a term is
generic is its primary significance to the relevant public,
that is, whether the term is used or understood, by
purchasers or potential purchasers of the goods or services
at issue, primarily to refer to the class of such goods or
services. Section 14(3) of the Act; In re American
Fertility Society, 188 F.3d 1341, 51 USPQ2d 1832 (Fed. Cir.
1999); Magic Wand Inc. v. RDB Inc., supra; In re Merrill
Lynch, Pierce, Fenner, and Smith Inc., 828 F.2d 1567, 4
USPQ2d 1141 (Fed. Cir. 1987); H. Marvin Ginn Corp. v.
International Association of Fire Chiefs, Inc., supra; and
In re Leatherman Tool Group, Inc., 32 USPQ2d 1443 (TTAB
1994). Evidence of the relevant public’s understanding of a
term may be obtained from any competent source, including
direct testimony of consumers, consumer surveys, newspapers,
magazines, dictionaries, trade journals, catalogs, and other
publications. See In re Merrill, Lynch, Pierce, Fenner, and
Smith, Inc., supra, and In re Northland Aluminum Products,
Inc., supra.
Serial No. 76393583
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ANALYSIS
We turn then to an analysis of how the law on
genericness applies to the facts of this case. Initially,
we find that the relevant public for these goods would be a
more limited group than all ordinary consumers. Prospective
purchasers would be primarily buyers for transit systems.
While this may be a group of buyers having greater
sophistication than the ordinary consumer, there is nothing
in the record to suggest that this population uses the term
“bike rack” differently than ordinary consumers, newspaper
writers or those designing websites for bike riders using
city buses, as seen below.
The Trademark Examining Attorney’s evidence
The record includes dictionary definitions of the
component terms “bike”3 and “rack.”4 The Trademark Examining
Attorney placed into the record publication excerpts from
news articles in the Lexis-Nexis database showing the usage
and meaning of the composite term “bike rack” in reference
to bike racks, and all of the excerpts are about racks
attached to the front of buses for transporting bicycles:

3 “Bike (bīk) noun (1) A bicycle” …, THE AMERICAN HERITAGE
DICTIONARY OF THE ENGLISH LANGUAGE, (3rd Edition 1992).
4 “Rack (răk) noun (1)(a) A framework or stand in or on which
to hold, hang or display various articles …,” THE AMERICAN HERITAGE
DICTIONARY OF THE ENGLISH LANGUAGE, (3rd Edition 1992).
Serial No. 76393583
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North Fulton commuters are getting another
option for the trek downtown. MARTA began
installing bike racks on the front of its
buses last month.5

The bikers’ requests include outfitting all
Metro buses with bike racks, training drivers
to give greater clearance to bikers and
improving markings at crosswalks.
Patti Muck, a Metro spokeswoman, said Metro
was planning to add bike racks to its buses
earlier this year.6

Other efforts include new signs, improvements
at shelters and bike racks on the front of
buses.7

They have been expanding their Bike & Ride
program to include bike racks on a large
number of buses. The bike racks carry two
bicycles each, are mounted to the front of
the bus, and take as little as 30 seconds to
load.8

Fixed-route buses will be equipped with
front-mounted bike racks. To request a “Bike
on the Bus” brochure, call 226-1144.9

Some Bi-State buses have bike racks mounted
on the front.10

The Trademark Examining Attorney has also placed into
the record a variety of examples of usage from the Internet:
Sportworks designed the Bike-Rack-for-Buses …
… fold down the bike rack. You only need to use one
hand to unlatch and pull the bike rack down …
http://www.bicycleracks.com/sbhow.asp

5 Atlanta Journal-Constitution, July 11, 2002.
6 Houston Chronicle, July 5, 2002.
7 Kansas City Star, June 28, 2002.
8 Chicago Daily Herald, June 26, 2002.
9 Dayton Daily News, June 30, 2002.
10 St. Louis Post-Dispatch, June 29, 2002.
Serial No. 76393583
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SCMTD Bike Rack Program
Santa Cruz Metropolitan Transit District (SCMTD)
buses are equipped with front-mounted bike racks …
http://www.scmtd.com/changes/bikerack.html

Bike Rack for Buses at AMTRAN
… [The] rider lowers the rack with one hand while
supporting the bike with the other hand. … this
durable rack is as easy to raise as it is to
lower. …. After lowering the rack, the rider
places the bike into either of the rack's wheel
wells. …. The most impressive feature of the
Bike-Rack-For-Buses is its self-storing support
arm. …. The rack contacts the bicycle's tires
only, no contact is made with the frame of the
bicycle, reducing any potential damage to a loaded
bicycle.
http://www.amtran.org/psu/bikerack.htm

BIKE RACKS ON BUSES
CityBus has bike racks on most buses …
HOW TO USE THE BIKE RACK
Each rack located at the front of the bus holds up
to two bikes. Simple instructions are posted
right above the rack. No extra fare is charged,
and the driver is happy to show you how the rack
works.
…
WHICH ROUTES HAVE BIKE RACKS?
http://www.gocitybus.com/bikeracks.htm

BIKE RACKS.
If the bus arrives with the bike rack folded
against the bus, release it by pulling the handle
up and lowering the rack. … The rack is labeled
for your convenience. Lift your bicycle onto the
rack. …
http://www.cata.org/bikes_racks.html
Serial No. 76393583
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Sales keep rolling along for
maker of Bike-Rack-for-Buses
Thursday, March 21, 2002
By MARNI LEFF
SEATTLE POST-INTELLIGENCER REPORTER

After seeing an ad soliciting designs for bike
racks to mount on King County Metro buses,
Mike Reeves thought, "I can do this."
That was almost a decade ago, and now his Bike-
Rack-for-Buses invention can be spotted on
Metro's entire 1,300-bus fleet. The racks are also
on buses in about 400 other cities.
Reeves, who has a degree in oceanography and a knack
for engineering, said the Metro order transformed his
company, Sportworks, from a contract manufacturer
into a business with a product of its own.
"That really got us going," Reeves said. "It gave
us a lot of credibility."

Qui Lam works on a bus bicycle rack at Sportworks in
Woodinville. The order from Metro transformed the company
from a contract manufacturer into a business with its own
product. Phil H. Webber / Seattle Post-Intelligencer

Linda Thielke, a spokeswoman for Metro, said
the county first began experimenting with bus
racks in the 1980s.
"We had racks that we made ourselves on buses
that crossed (state Route) 520 because bikes
weren't allowed on the bridge," she said.
"The problem was that every time we washed a
bus, we had to take the homemade racks off
because they got tangled in the bus washer."
The Sportworks bike racks, Thielke said, don't
need to be removed to clean the buses.
The Woodinville company's biggest customer is
the Los Angeles County Metropolitan
Transportation Authority, which has purchased
2,000 bike racks for its buses, according to Lisa
Robinson, product manager for Sportworks.
The bike racks cost about $570 per bus, Robinson
said, declining to say how many racks the
company sells in a year or to disclose annual sales
figures.
As the bus-mounted bike racks became more
visible, Reeves said, car and recreational vehicle
owners began calling and stopping by company
headquarters.
In 1996, Sportworks introduced a rack for private
vehicles. That rack starts at $220 for a two-bike
model. A top-of-the-line, four-bike model retails
for $550.
Sportworks, which started out as a contract
manufacturer making handlebars for bicycles, has
grown to 65 employees. When Reeves started the
company in 1990 with his wife, Sandi, the pair were its
only workers.
In September, the company hired Dave Bartholomew,
former president and chief executive of Mountain
Safety Research, to be president.
Under his leadership, Reeves said, Sportworks will
continue to expand and improve its product lines.
Robinson said the company's forte is bike racks,
for both cars and buses, though it still does some
contract work.
She declined to say what portion of the company's
annual sales stem from its racks.
Inside Sportworks' factory around lunchtime
yesterday, boxes of bike racks were stacked,
waiting to be shipped to transit authorities and
bus makers across the country.
Robinson estimates that 500,000 bikes are
transported on racks made in the local factory
each month.
Rich Olken, executive director of the Bikes
Belong Coalition, a Brookline, Mass.-based trade
organization, said bus racks encourage
commuters to ride.
"The moral of the story is people who bike to work are
secure about being able to get home," he said.
"If the weather doesn't cooperate, the interface between
transit and personal transportation allows someone to
take the bus home and ride to work the next day."
To that end, Olken said, Sportworks -- which is active
in Bikes Belong -- meets an important need.
"We're just tremendously tickled that someone
invented that," he said. "Automobiles and trucks
for years have had bike racks. To create
something that is heavy-duty enough (for buses)
and so easy to use is just tremendous."
http://seattlepi.nwsource.com/business/63174_bend21.shtml
Serial No. 76393583
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Category of Goods
In its application, applicant identified its goods as
“racks for vehicles for use in transporting bicycles, in
particular, a rack for a bus transporting bicycles.” There
can be no dispute based on the evidence in the record that
the category of goods involved in this case is “bike racks,”
or even tracking more closely applicant’s identification of
goods, a bike rack that is attached to a bus.
Understandings of the relevant public
We next must determine whether the designation BYK-RAK
is understood by the relevant public primarily to refer to
that genus of goods. We find that the evidence placed into
the record by the Trademark Examining Attorney demonstrates
that members of the relevant public understands the term
“bike rack” to refer to a holder for a bicycle, whether
attached to the ground, a building, or a vehicle, such as a
bus. While applicant concedes that “bike rack” may be
descriptive of such a rack on the front of a city bus, we
find the evidence compelling that this is the commonly
accepted name of this kind of device. In an oft-quoted
analogy, a mark answers the question of “Who are you?” or
“Where do you come from?” The name of the product answers
Serial No. 76393583
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the question of “What are you?”11 If the question “What are
you?” were to be put with respect to a rack for bicycles
mounted on the front of a city bus, “bike rack,” spelled
correctly, clearly answers the query most succinctly.
In further support of registrability, even if the term
“bike rack” were to be found to be generic, applicant argues
that its alleged mark, BYK-RAK, is more than a mere
misspelling, but is a creative set of words that creates a
distinctive commercial impression. In her appeal brief, the
Trademark Examining Attorney takes issue with each of
applicant’s specific arguments:
Applicant argues …[that] its “spelling of
bike as ‘byk’ is not obvious, and the
pronunciation can only be known by using it
in association with the goods.”

Applicant’s argument falls short in two
respects. First, the examining attorney
points out the genericness of a mark must be
considered in association with the goods to
which the mark applies, so the question of
whether the spelling or pronunciation of BYK-
RAK is obvious must always be considered in
relation to applicant’s goods, bike racks for
buses. Second, the spelling of “bike rack”
as BYK-RAK is neither creative nor
distinguishing. In its misspelling of the
word “bike,” applicant merely substitutes the
letter ‘i’ with the letter ‘y’ (a phonetic
equivalent), removes the silent ‘e’ from the
end of “bike,” adds a hyphen, and removes the
silent letter ‘c’ from the word “rack.”

11 See 2 J.T. McCarthy, MCCARTHY ON TRADEMARKS AND UNFAIR COMPETITION,
§12.1 (2nd Ed. 1998).
Serial No. 76393583
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Applicant asserts the pronunciation of its
mark as “bike rack” is “not obvious.”
However, most one-syllable words in the
English language composed of a consonant plus
the letter ‘y’ (e.g., by, my, try, fly)
create a word pronounced with the long ‘ī’
vowel sound. For example, the common
preposition “by” contains the same long ‘ī’
vowel sound as in the word “bike.” In
essence, applicant merely adds a ‘k’ to the
end of the common preposition ‘by,’
immediately creating an obvious phonetic
misspelling of the word “bike.” Since the
letter ‘c’ in the word “rack” is essentially
silent, its removal from the word makes
little difference in how a consumer would
perceive or pronounce the word “rak” in
relation to applicant’s goods, bike racks for
buses. Thus the examining attorney believes
that “bike rack” is the only plausible
pronunciation of applicant’s proposed mark.

Applicant also asserts its addition of a
hyphen between the elements “BYK” and “RAK”
distinguishes its mark by making it one term.
However, hyphens are often used to link words
that modify one another together (e.g.,
“bike-rack,” “back-pack,” “ski-slope,” etc.).
The mere addition of the hyphen to the mark,
along with the slight misspellings, does not
make the proposed mark “creative,”
“distinguishing,” nor “visually different,”
as applicant asserts.

We agree with the Trademark Examining Attorney that
BYK-RAK will be seen by relevant customers as being an exact
phonetic equivalent of the term “bike rack.” In fact, the
Trademark Examining Attorney discusses how closely the
alleged mark in the instant case tracks past cases of
misspelled terms refused registration:
A slight misspelling of a word will not turn
a descriptive or generic word into a non-
Serial No. 76393583
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descriptive mark. See C-Thru Ruler Co. v.
Needlenian, 190 USPQ 93 (E.D. Pa. 1976)
[C-THRU held to be the equivalent of “see-
through” and therefore merely descriptive of
transparent rulers and drafting aids]; In re
Hubbard Milling Co., 6 USPQ2d 1239 (TTAB
1987) [MINERAL-LYX held generic for mineral
licks for feeding livestock]; In re Stanbell,
Inc., 16 USPQ2d 1469 (TTAB 1990), aff'd, 20
USPQ2d 1319 (Fed. Cir. 1991) [ICE PAK held
generic for ice packs); TMEP §1209.03(j)].

Applying this well-founded principle,
applicant’s mark BYK-RAK is a slight
misspelling and obvious phonetic equivalent
of the term “bike rack.” Since “bike rack”
is the generic term for bike racks mounted on
buses to transport bicycles, applicant’s mark
BYK-RAK, despite its novel spelling, is also
generic for bike racks mounted on buses.
Applicant’s mark is overwhelmingly similar to
the above-noted marks MINERAL LYX, ICE PAK,
and C-THRU, all of which the Board found to
be slight misspellings of generic or
descriptive terms whose novel spellings were
incapable of adding source-identifying
significance. Applicant’s argument that its
mark is somehow distinguishable is untenable.
Applicant argues “BYK-RAK is more than a
misspelling, but a creative and
distinguishing makeup of words that create a
distinctive commercial impression” and its
“spelling of bike as ‘byk’ is not obvious ….”
…
[However,] applicant’s mark bears the
greatest similarity to the marks in the cases
cited above, e.g., MINERAL-LYX (held generic
for mineral licks for feeding livestock), ICE
PAK (held generic for ice packs), and C-THRU
(held merely descriptive of transparent
rulers and drafting aids). The spelling of
“bike” as “BYK” is quite similar to the
spelling of “licks” as “LYX” because both
substitute the letter ‘y’ as the phonetic
equivalent of the letter ‘i,’ and the
spelling of “rack” as “RAK” is identical to
the spelling of “pack” as “PAK” in the cited
cases. As such, the presentation of the mark
Serial No. 76393583
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BYK-RAK would never be perceived as “creative
and distinguishing” or “fanciful and unique”
as advanced by applicant. To the contrary,
applicant’s mark is a fairly ordinary and
obvious misspelling of a generic term in line
with the above-cited cases.

Applicant also relies on In re
Wella Corp., 565 F.2d 143, 196 USPQ
7 (CCPA 1977) [BALSAM] and In re

Carolyn's Candies, 206 USPQ 356
(TTAB 1980), [YOGURT BAR] in

arguing that even a mark that is generic as applied to the
goods but has a “distinctive appearance or design feature”
is registrable. In Wella, for example, our reviewing
tribunal found that the stylized lettering of the mark
BALSAM was capable of distinguishing applicant’s hair care
products.12 However, we agree with the Trademark Examining
Attorney again, that the Wella case is easily
distinguishable from the instant case on its facts.
As noted by the Trademark Examining Attorney,
applicant’s proposed mark includes no stylized lettering or
design element as applicant seeks registration of its mark
in standard character form. Hence, applicant’s mark bears
no resemblance to the stylized mark BALSAM whatsoever, which
was presented in a stylized font featuring “curlicues” on

12 The word “Balsam” is disclaimed apart from the special form
in which it is presented.
Serial No. 76393583
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nearly every letter of the mark, as seen supra. The
examining attorney notes that:
… [A] similar argument was put forth in In re
Newport Fastener Co. Inc., 5 USPQ2d 1064
(TTAB 1987) for the proposed mark TYLE TYE
for “strips for holding tile in place on
roofs.” In that case, the applicant argued
the designation TYLE TYE had a “distinctive
appearance” and “design features” due to its
misspellings that would render the mark
capable of distinguishing its goods. The
Board distinguished Wella and found the
applicant’s argument “imaginative” but
unpersuasive, stating “there is no
stylization of the lettering of the
designation sought to be registered, nor is
there any design in the arrangement or
positioning of the letters. Rather,
applicant seeks to register TYLE TYE in typed
form.” Id. at 1065.

As in the TYLE TYE case, applicant is seeking
registration of its mark, BYK-RAK, in standard character
form. However, we note that even if applicant had chosen to
submit its drawing in a special form drawing matching its
specimens, there would still be nothing in the style of the
block lettering that would support registration (even with a
disclaimer of “bike rack”) of this generic matter:

Accordingly, we find that BYK-RAK, is generic as used in
connection with applicant’s rack for a bus designed for
Serial No. 76393583
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transporting bicycles. Despite applicant’s variant spelling
of this term, we find that it is incapable of providing
source-identifying significance to a bike rack.
Decision: The refusal to register on the ground of
genericness is hereby affirmed.