Nixalite of America Inc.v.Bird Barrier of America, Inc.

Trademark Trial and Appeal Board

Jul 2, 2004

No. 91122927 (T.T.A.B. Jul. 2, 2004)

Oral Hearing held: Decision mailed:
June 22, 2004 July 2, 2004
GDH/gdh
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
Nixalite of America Inc.
v.
Bird Barrier of America, Inc.
_____
Opposition No. 91122927 to application Serial No. 75631260
filed on February 1, 1999
_____
Thomas J. Moore of Bacon & Thomas, PLLC for Nixalite of America
Inc.
Daniel M. Cislo of Cislo & Thomas LLP for Bird Barrier of
America, Inc.
______
Before Quinn, Hohein and Bottorff, Administrative Trademark
Judges.
Opinion by Hohein, Administrative Trademark Judge:
Bird Barrier of America, Inc. has filed an application
to register on the Principal Register the mark "BIRD BARRIER" and
design, as reproduced below,
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT
OF THE TTAB
Opposition No. 91122927
2
for "pest control devices, namely, non-electric metal wire
attached to a structure for deterring birds from landing and
perching."1
Nixalite of America Inc. has opposed registration on
the sole ground that applicant's mark is unregistrable in the
absence of a disclaimer of the generic term "BIRD BARRIER." In
particular, opposer alleges that "[s]ince a date long before the
earliest date on which Applicant may claim any rights in the
opposed trademark or any colorable imitation thereof, Opposer ...
has used in commerce the term 'bird barrier' as the generic name
for goods sold by Opposer"; that applicant's mark includes "the
generic term 'bird barrier' that is used by the relevant trade or
industry for all goods in a particular category, and does not
distinguish the goods of any party from the goods of any other
party"; that opposer "needs to use the term 'bird barrier' as the
generic name for certain goods that are sold by Opposer, in order
to compete effectively in the relevant trade and market"; that
opposer thus "would be injured by the registration of the opposed
trademark"; and that, accordingly, in order for such mark to be
registrable, "the opposed application be amended to include a
disclaimer of 'BIRD BARRIER'."
Applicant, in its answer, has denied the salient
allegations set forth in the notice of opposition.
The record consists of the pleadings; the file of the
opposed application; and, as opposer's case-in-chief, notices of
Opposition No. 91122927
3
reliance on excerpts from various printed publications and
official records, namely, a building and construction trade
directory, certain telephone directories, a magazine entitled
"Your Church," a third-party registration, information with
respect to two prior abandoned applications by applicant, and
information concerning a prior abandoned application by a third
party.2 Applicant's case-in-chief consists of notices of
reliance on various third-party registrations, articles from a
magazine entitled "Pest Control Technology" and newspaper
articles from the "Los Angeles Times."3 Neither party took
1 Ser. No. 75631260, filed on February 1, 1999, which alleges a date of
first use anywhere and in commerce of June 30, 1998. The word "BIRD"
is disclaimed.
2 However, in an order issued on June 18, 2004, the Board among other
things granted a motion by applicant to strike opposer's notices of
reliance to the extent that opposer's sixth and eleventh notices of
reliance were stricken because the evidence attached thereto,
consisting of printouts of pages from Internet websites, is not proper
subject matter for a notice of reliance and hence is inadmissible.
See TBMP §704.08 (2d ed., 1st rev. March 2004). Such evidence,
therefore, has been given no further consideration herein.
3 The Board's order of June 18, 2004 also granted a motion by opposer
to strike certain exhibits which were attached to a declaration by an
attorney for applicant which applicant submitted in connection with
its notices of reliance. The exhibits, consisting of printouts of
pages from Internet websites, were stricken inasmuch as applicant
conceded that such printouts were inadmissible. Cf. Michael S. Sachs
Inc. v. Cordon Art B.V., 56 USPQ2d 1132, 1134 (TTAB 2000) [a printout
retrieved from the Internet does not qualify as a printed publication
under Trademark Rule 2.122(e) and thus its "introduction ... by way of
a notice of reliance is improper"]; and Raccioppi v. Apogee Inc., 47
USPQ2d 1368, 1370 (TTAB 1998) ["[t]he element of self-authentication
which is essential to qualification under [Trademark] Rule 2.122(e)
cannot be presumed to be capable of being satisfied by Internet
printouts"]. While the Board, in a footnote, additionally noted in
its order that "the question of the admissibility of the declaration
... was not raised by opposer," it is pointed out that Trademark Rule
2.123(b) specifies in relevant part that: "By written agreement of
the parties, the testimony of any witness or witnesses of any party,
may be submitted in the form of an affidavit [or declaration] by such
witness or witnesses." Given the absence, however, of any written
agreement by the parties with respect to the submission thereof, the
declaration forms no part of the record in this proceeding and has
accordingly not been given any further consideration. We hasten to
Opposition No. 91122927
4
testimony and opposer did not offer any evidence in rebuttal.
Briefs have been filed and an oral hearing, attended by counsel
for the parties, was held.
As a preliminary matter, applicant argues in its brief
that, notwithstanding its disclaimer of the word "BIRD" (which it
asserts was done to "advance allowance of the application"), its
"BIRD BARRIER" and design mark is a unitary mark which, because
the words therein are so integrated with the arc and bird designs
as to form a single distinct commercial impression, a disclaimer
of the term "BIRD BARRIER" is "unnecessary." We agree with
opposer, however, that applicant's mark is not unitary and thus,
if the term "BIRD BARRIER" is proven to be generic, a disclaimer
thereof is required in order for applicant's mark to be entitled
to registration.
Section 6(a) of the Trademark Act, 15 U.S.C. §1056(a),
provides in relevant part that an applicant may be required "to
disclaim an unregistrable component of a mark otherwise
registrable."4 However, as explained in Dena Corp. v. Belvedere
International Inc., 950 F.2d 1555, 21 USPQ2d 1047, 1051 (Fed.
Cir. 1991):
[Section 6(a)] adopts the ... policy of
exempting unitary marks from the disclaimer
requirement. .... A unitary mark simply has
no "unregistrable component," but is instead
an inseparable whole. A unitary mark cannot
add, nonetheless, that even if such declaration were to be considered,
the result in this proceeding would be the same.
4 While Section 6(a) also provides that "[a]n applicant may voluntarily
disclaim a component of a mark sought to be registered," applicant
disclaimed the word "BIRD" pursuant to a requirement for such.
Opposition No. 91122927
5
be separated into registrable and
nonregistrable parts. Because unitary marks
do not fit within the language of section
[6(a), the United States Patent and Trademark
Office] ... cannot require a disclaimer.
A unitary mark, as set forth in TMEP Section 1213.05 (3rd ed.,
rev. 2, 2003), has been defined as follows:
A mark or portion of a mark is
considered "unitary" when it creates a
commercial impression separate and apart from
any unregistrable component. That is, the
elements are so merged together that they
cannot be divided to be regarded as separable
elements. If the matter that comprises the
mark or relevant portion of the mark is
unitary, no disclaimer of an element, whether
descriptive, generic or otherwise, is
required.
Contrary to applicant's assertion, which is undercut by
the fact that it has disclaimed the word "BIRD," in this case the
term "BIRD BARRIER" is not an inseparable part of the mark "BIRD
BARRIER" and design viewed as a whole. Plainly, the words "BIRD"
and "BARRIER" are separate from the arc and bird designs in
applicant's mark and neither is connected by any lines or other
design features to the arc and bird design elements. Such words,
therefore, are simply not so merged together in applicant's mark
that they cannot be regarded as separate. The term "BIRD
BARRIER" which results from the combination of such words clearly
forms its own separate and distinct commercial impression.
Applicant's mark consequently is not unitary and, if shown to be
generic, the term "BIRD BARRIER" must be disclaimed.5
5 See, e.g., Dena Corp. v. Belvedere Int'l Inc., supra at 1052 [mark
consisting of the words "EUROPEAN FORMULA" depicted above a circular
design on a dark square or background for cosmetics held not unitary];
In re Lean Line, Inc., 229 USPQ 781, 782-83 (TTAB 1986) [mark "LEAN
Opposition No. 91122927
6
Turning, therefore, to the issue of whether the term
"BIRD BARRIER" is generic, applicant is correct that, as argued
in its brief, it is opposer, as the party asserting such a ground
for opposition, who bears the burden of proof with respect
thereto.6 See, e.g., Racine Industries Inc. v. Bane-Clene Corp.,
35 USPQ2d 1832, 1838 (TTAB 1994) ["Opposer, as the party
contending that the designation 'PCA' is a generic term for
applicant's professional carpet cleaners' association, bears the
burden of proof thereof"]. Moreover, while it is indeed curious
that neither party made of record a definition of the word
"barrier," we judicially notice7 for present purposes that, for
instance, the Random House Webster's Unabridged Dictionary (2d
LINE" for low calorie foods found not unitary; requirement for
disclaimer of "LEAN" held proper]; In re IBP, Inc., 228 USPQ 303, 304
(TTAB 1985) [mark "IBP SELECT TRIM" for pork held not unitary; refusal
of registration affirmed in absence of a disclaimer of "SELECT TRIM"];
In re Uniroyal, Inc., 215 USPQ 716, 719 (TTAB 1982) [mark "UNIROYAL
STEEL/GLAS" for vehicle tires found not unitary; requirement for
disclaimer of "STEEL/GLAS" held appropriate]; and In re EBS Data
Processing, Inc., 212 USPQ 964, 966 (TTAB 1981) [mark "PHACTS POCKET
PROFILE" for personal medication history summary and record forms held
not unitary; refusal to register affirmed in absence of a disclaimer
of "POCKET PROFILE"].
6 Although opposer, in its reply brief, contends that "[o]nce the issue
of whether an alleged trademark is generic has been raised, the burden
of proof is on the owner of the alleged trademark to prove that it is
not generic, so long as the alleged trademark is not federally
registered," the cases and other authority cited by opposer in support
thereof are inapposite inasmuch as opposer is not asserting trademark
rights in the term "BIRD BARRIER." Rather, opposer is alleging the
antithesis thereof, that is, that such term is generic and hence is
devoid of any trademark significance.
7 It is well established that the Board may properly take judicial
notice of dictionary definitions. See, e.g., Hancock v. American
Steel & Wire Co. of New Jersey, 203 F.2d 737, 97 USPQ 330, 332 (CCPA
1953); University of Notre Dame du Lac v. J. C. Gourmet Food Imports
Co., Inc., 213 USPQ 594, 596 (TTAB 1982), aff’d, 703 F.2d 1372, 217
USPQ 505 (Fed. Cir. 1983); and Marcal Paper Mills, Inc. v. American
Can Co., 212 USPQ 852, 860 n. 7 (TTAB 1981).
Opposition No. 91122927
7
ed. 1998) at 171 defines such word as a noun meaning: "1.
anything built or serving to bar passage, as a railing, fence, or
the like: People may pass through the barrier only when their
Opposition No. 91122927
8
train is announced. 2. any natural bar or obstacle: a mountain
barrier. 3. anything that restrains or obstructs progress,
access, etc.: a trade barrier. 4. A limit or boundary of any
kind: the barriers of caste. 5. Physical Geog. An antarctic ice
shelf or ice front. 6. See barrier beach. 7. barriers, Hist.
the palisade or railing surrounding the ground where tourneys and
jousts were carried on. 8. Archaic a fortress or stockade."8 In
a like vein, Webster's Third New International Dictionary (1993)
at 179 lists "barrier" as a noun connoting, inter alia, "1 obs :
BARRICADE; esp : an outer defense to impede or stop an enemy 2 :
a material object or set of objects that separates, keeps apart,
demarcates, or serves as a unit or barricade ... 6 : a factor
(as a topographic feature or a physical or physiological quality)
that tends to restrict the free movement and mingling of
individuals or populations." Although the above definitions have
been set forth for the sake of completeness, it is obvious that,
in the context of applicant's and opposer's bird control
products, the most pertinent ones are the first and third
definitions from the Random House Webster's Unabridged Dictionary
and those which are numbered "2" and "6" in Webster's Third New
International Dictionary.
According to the record, advertisements by both opposer
and applicant have appeared together under the same product
category heading in the same edition of a building and
construction trade directory. Specifically, The Blue Book
8 The same definition is set forth in the Random House Dictionary of
the English Language (2d ed. unabridged 1987) at 171.
Opposition No. 91122927
9
Building & Construction (2000), which touts itself as "THE
STANDARD REFERENCE BOOK for the BUILDING AND CONSTRUCTION
INDUSTRY," sets forth ads by "Nixalite of America Inc." and "BIRD
BARRIER AMERICA, INC." which appear on the same page under the
category heading "BIRD BARRIERS, REPELLENTS & CONTROLS." In
particular, the ad under opposer's name states that "Nixalite
offers only the best barriers, controls and repellents for pest
birds and animals" and offers "Bird Control That Works! Nixalite
Stainless Steel Bird Barriers," while the ad that displays
applicant's mark and illustrates a device of "Stainless Steel
Spikes" refers to "Bird Control Solutions" which are "Guaranteed
to out-perform all competitors." On the same page of such
directory, an advertisement by a third-party, "NATION WIDE BIRD
CONTROL," makes reference to "Quality Barriers Installed."
With respect to the telephone directory excerpts made
of record by opposer, pages from the November 1999 "Quad Cities
White and Yellow Pages" display "BIRD BARRIERS, REPELLENTS &
CONTROLS" as a topical heading and set forth, among the three
entities listed therein, "NIXALITE BIRD BARRIERS" by "NIXALITE OF
AMERICA INC." Likewise, the November 1976 "Quad Cities ...
Yellow Pages" lists "Bird Barriers, Repellents & Controls" as a
product category heading, followed by the name of a third-party
entity, while the November 1958 "DAVENPORT ... TELEPHONE
DIRECTORY" sets forth the same product category heading and
features a display ad by "NIXALITE CO. OF AMERICA," which is one
of the two providers listed, containing the statement "RIDS
Opposition No. 91122927
10
BUILDINGS OF BIRDS!" and picturing a device with multiple spikes.
The same device is also illustrated in an ad by "NIXALITE
COMPANY" for a "NIXALITE Stainless Steel Bird Barrier," which
appears in a one-page excerpt from the magazine "Your Church,"
and contains the following statement: "Of course you're proud of
your church! Keep its loveliness intact from damaging bird
debris with a recognized and proven bird repellent."9
As to the various official records of the United States
Patent and Trademark Office which have been introduced by
opposer, the third-party registration for the mark "TOPRITE,"
which issued on November 11, 1980 as Reg. No. 1,141,349 and is
indicated as being subsisting, utilizes the term "bird barrier"
in identifying the goods listed therein, which are set forth as
"olefin netting for the top of game bird pens and for use in
other areas where it is necessary to erect a bird barrier made of
netting." Similarly, information concerning a prior application
by a different third-party reveals that Ser. No. 74679905, which
was filed on May 25, 1995 to register "SPIKES" as a mark for a
"bird barrier for pestiferous birds" based upon a claim of a bona
fide intention to use such term in commerce, was abandoned on May
20, 1997. In addition, information with respect to two prior
applications by applicant shows that Ser. No. 75342442, which was
filed on August 18, 1997 to register "BIRD BARRIER" as a mark for
"pest control devices" based upon an allegation of first use
9 Although the accompanying notice of reliance thereon recites that the
excerpt is from "the September/October, 1967 edition," we can give no
credence thereto since the only indication of a date on the excerpt
itself is an obviously hand-written notation of "Sept/Oct 1967."
Opposition No. 91122927
11
thereof anywhere and in commerce on June 30, 1993, was abandoned
on November 27, 1998, while Ser. No. 75084013, which was filed on
April 4, 1996 to register "BIRD BARRIER" as a mark for "bird
abatement systems and educational programs" based upon an
allegation of first use thereof anywhere as of June 1993 and
first use in commerce as of August 1993, was abandoned on March
21, 1997. No information is given, however, as to why such
applications were abandoned.
The various third-party registrations made of record by
applicant reveal, in each instance, that no disclaimer of the
word "BARRIER" was made in connection with marks in which such
word constitutes an element thereof. Specifically, applicant
introduced registrations for the following: (a) the mark "SOUND
BARRIER," which issued as Reg. No. 679,323 in connection with
"ear protectors in the form of ear muffs for protection against
noise" on May 26, 1959 and is indicated as being subsisting; (b)
the mark "SKIN BARRIER," which issued, with a disclaimer of
"SKIN," as Reg. No. 1,896,760 in connection with a "medicated
antibacterial hand cream" on May 30, 1995 and is indicated as
being subsisting; (c) the mark "RUST BARRIER," which issued, with
a disclaimer of "RUST," as Reg. No. 1,902,273 in connection with
a "rust sealant in the nature of a coating" on July 4, 1995 and
is indicated as being subsisting; (d) the mark "BARNACLE
BARRIER," which issued as Reg. No. 2,137,255 in connection with
"exterior paints and sealer coatings for use on boats, underwater
structures and equipment" on February 17, 1998 and is indicated
Opposition No. 91122927
12
as being subsisting; (e) the mark "ROACH BARRIER," which issued,
with a disclaimer of "ROACH," as Reg. No. 2,314,936 in connection
with "insecticides for domestic use" on February 1, 2000 and is
indicated as being subsisting; and (f) the mark "MOSQUITO
BARRIER," which issued, with a disclaimer of "MOSQUITO," as Reg.
No. 2,057,052 in connection with a "mosquito repellent to repel
mosquitos [sic] from foliage, namely flowers, grasses,
ornamentals, shrubs, trees, vines, edible plants, fruits,
berries, vegetables, field crops and standing water" on April 29,
1997 and is indicated as being subsisting.10
Also made of record by applicant are two articles from
a trade magazine entitled "Pest Control Technology" and two
newspaper articles from the "Los Angeles Times." In particular,
an article from the March 1998 issue of "Pest Control
Technology," which is entitled "Taking The 'Nuisance' Out Of
Nuisance Sparrows," states in relevant part that:
Sparrows can be denied from using and
defacing building ledges with one or more of
several different ledge denial repellents.
These include mechanical spikes, wires and
chemical repellents. When using these tools,
the key to long term results, and thus cost
effectiveness, is a careful and thorough
installation. .... The small sparrow is
quite adept at roosting on ledges only ½
inches wide. They will take quick advantage
of any gaps or small spaces left to them by
ledge repellents on their favorite ledges.
Additionally, the mechanical prickly
repellent devices must be inspected
periodically and cleaned of debris such as
leaves and twigs. Otherwise, accumulating
debris will protect sparrows from the prickly
10 Applicant states in its brief, however, that "[a]fter Applicant
submitted its Notice of Reliance [thereon], the registration for
MOSQUITO BARRIER was cancelled under Section 8 on January 31, 2004."
Opposition No. 91122927
13
effect of the projections and they will
continue to use the building area.
Worse, sparrows will sometimes nest
directly on top of the accumulating debris.
The mechanical ledge repellents and their
installation can be expensive, but for areas
under heavy bird pressure, the results
justify the cost.
The sticky bird repellents (e.g., Hot
Foot®, Roost No More® and others) are most
appropriate for small-to-medium-sized jobs
and infestations where the mechanical
repellents might be too cost prohibitive.
And they can be used to supplement the more
permanent programs of netting and mechanical
repellents.
Regardless, it is important to consider
that most chemical repellents last for about
one year. In areas of excessive heat, dust,
or the food debris resulting from food
production, gel repellents may only last for
several weeks. ....
Another article from the November 2002 issue of the same
magazine, which is entitled "[VERTEBRATE PESTS] Managing Crows,
Part II," provides in pertinent part that:
VISUAL REPELLENTS. For many crow
problems around buildings, visual repellents
offer a highly practical approach for
managing crows that seem to be lingering
around parking lots or building exteriors.
Many visual repellents have been tried over
the years, some proving more successful than
others. Among the most effective are
different types of metallic looking balloons,
tapes and streamers. ....
....
REPELLENTS AND NETTING. As with other
urban pest bird species, crows can be denied
access to structural utility components ...
by custom installment of any of the various
types of structural repellents and/or bird
netting products. Thus, prickly metal and
plastic strips, tightly strung wires along
ledges, bobbing Daddi-long-leg devices and so
Opposition No. 91122927
14
forth can protect a specific area from crows
and other pest birds. ....
With respect to the newspaper articles introduced by
applicant from the "Los Angeles Times," the one from the June 9,
1991 edition, which is headlined "Tape Keeps Birds From
Plundering Fruit Trees," recites in relevant part that:
If you have a bird problem in your home
fruit orchard or vegetable garden, there's a
new product that can help you humanely and
inexpensively control the problem.
The product is "bird scare flash tape"
and it comes from Japan, where it has been
used with great success in protecting fruit
and rice crops.
The scare tape consists of Mylar-coated
plastic tape that is 7/16th wide. ....
Sunlight is reflected off the tape and seems
to signal danger to birds. ....
According to John Kaye, a Washington
apple grower who imports the tape to this
country, the scare tape results in a 75% to
90% reduction in bird damage to fruit or
vegetable crops.
....
If you would like to sample the bird
scare tape in your home orchard, the minimum
order is five rolls for $12 ....
The other article, which carries the headline "Banishing Birds to
Nature, Gently, Soars as Industry," is from the January 11, 1999
edition and states in pertinent part that:
Today the firm sells spikes, netting and
wire to keep birds from roosting where
they're not wanted. This isn't bird feed
we're talking about. Bird-B-Gone has 50,000
clients, including Disneyland and Sea World.
'Bird Control' Yield More Firms, Profits
Opposition No. 91122927
15
In the last six years the number of
companies that specialize in the new
industry, called "bird control," has jumped
from fewer than 500 to more than 3,000,
according to a trade magazine called Pest
Control. No one has tracked how much money
the firms take in overall. But one sector of
the industry, companies that manufacture
nets, repellents and other products to
discourage birds, does more than $30 million
in sales annually, up from $8 million five
years ago. ....
....
A Redondo Beach firm called Bird Barrier
America Inc., founded in 1993, is the second-
largest manufacturer of bird repellents in
the country. .... It has a newsletter
called "Bird Droppings," and clients include
Sea World and Walt Disney World. The federal
government has installed its netting on the
Capitol to keep birds from doing to our
elected representatives what comes naturally.
As set forth in H. Marvin Ginn Corp. v. International
Association of Fire Chiefs, Inc., 728 F.2d 987, 228 USPQ 528, 530
(Fed. Cir. 1986), "[a] generic term is the common descriptive
name of a class of goods or services." Moreover, as noted
earlier, not only does opposer bear the burden of proof with
respect to its claim of genericness, but such claim must be
established by a preponderance of the evidence. See, e.g.,
Capital Project Management Inc. v. IMDISI Inc., 70 USPQ2d 1172,
1178 (TTAB 2003). It is also well settled, however, that a
showing of the genericness of a term requires "clear evidence"
thereof. In re Merrill Lynch, Pierce, Fenner & Smith, Inc., 828
F.2d 1567, 4 USPQ2d 1141, 1143 (Fed. Cir. 1987). See also In re
American Fertility Society, 188 F.3d 1341, 51 USPQ2d 1832, 1835-
36 (Fed. Cir. 1999). Consequently, as stated in American
Opposition No. 91122927
16
Fertility Society, id. at 1836, a term's "[a]ptness is
insufficient to prove genericness"; instead, "the correct legal
test for genericness, as set forth in Marvin Ginn, requires
evidence of 'the genus of goods or services at issue' and the
understanding by the general public that the mark [or term at
issue] refers primarily to 'that genus of goods or services.'"
Specifically, in Marvin Ginn, supra at 228 USPQ 530,
our principal reviewing court held that:
Determining whether a mark [or a term]
is generic therefore 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?
Furthermore, in applying such standard, the Board, for example,
has noted that, as set forth in In re Leatherman Tool Group Inc.,
32 USPQ2d 1443, 1449 (TTAB 1994), "evidence of the relevant
public's understanding of a term may be obtained from any
competent source, including newspapers, magazines, dictionaries,
catalogs and other publications," citing In re Northland Aluminum
Products, Inc., 777 F.2d 1566, 227 USPQ 961, 963 (Fed. Cir.
1985).
Applying the above standards, we must first identify
the category of goods in issue. In this case, the category or
type of goods identified in applicant's involved application is
clear: "pest control devices, namely, non-electric metal wire
attached to a structure for deterring birds from landing and
perching." The record also includes references to and
illustrations of mechanical spikes or wires, including
Opposition No. 91122927
17
applicant's "Stainless Steel Spikes," which are for use on
structures for deterring birds from alighting and/or roosting.
Thus, for purposes of determining whether the term "BIRD BARRIER"
is generic, we find that the category of goods under the first
step of the test in Marvin Ginn is pest control devices
consisting of non-electric metal wires or spikes for attachment
to a structure to deter birds from landing and perching. As is
plain therefrom, the relevant public for such goods constitutes
those who are concerned with controlling the landing and perching
of pest birds on structures such as commercial buildings and
churches. The relevant public, therefore, would obviously
include both those in need of pest bird control devices, e.g.,
building managers and maintenance personnel, and those who make,
sell, furnish and/or install such devices, e.g., pest control
companies in general and bird abatement businesses in particular.
Turning, then, to the second prong of the Marvin Ginn
analysis, the critical inquiry in this case is whether the term
"BIRD BARRIER" is understood by the relevant public primarily to
refer to pest control devices consisting of non-electric metal
wires or spikes for attachment to a structure to deter birds from
landing and perching. We find that, like such terms as "bird
repellent," "bird control" and "bird scare tape," which applicant
admits are generic for various pest bird control devices and has
introduced evidence sufficient to establish the genericness of
such terms, the preponderance of the evidence clearly shows that
the term "BIRD BARRIER" is a generic term in that it is
understood by the relevant public as primarily referring to the
Opposition No. 91122927
18
category or class of goods which constitutes pest control devices
consisting of non-electric metal wires or spikes for attachment
to a structure to deter birds from landing and perching.
Applicant, in this regard, concedes in its brief that
the copy of the advertisement made of record by opposer from the
publication "Your Church" "shows that Opposer used ... the phrase
'Nixalite Stainless Steel Bird Barrier' in its advertisement."
Applicant contends, however, that "[t]his use by Opposer does not
show that the relevant public understands the term 'BIRD BARRIER'
to refer to Applicant's goods." In fact, applicant asserts that
none of the evidence which opposer has properly made of record
suffices to show the relevant public's primary understanding of
such term and that, accordingly, "Opposer has failed to carry its
burden of proof on the issue of genericness." We disagree.
In particular, applicant's admission in its brief that
the ad in the magazine "Your Church" "shows that Opposer used ...
the phrase 'Nixalite Stainless Steel Bird Barrier' in its
advertisement" is sufficient to establish that opposer has a real
commercial interest in using the term "BIRD BARRIER" and, thus,
has standing to bring this proceeding. Similarly, the ads by
opposer and applicant which appear in the excerpt from The Blue
Book Building & Construction trade directory evidence that
opposer is a competitor to applicant in the marketplace for "BIRD
BARRIERS, REPELLENTS & CONTROLS." Applicant's ad, which appears
under the same product heading as opposer's ad, even refers to
"Bird Control Solutions" which are "Guaranteed to out-perform all
competitors." In view thereof, opposer has plainly shown a real
Opposition No. 91122927
19
commercial interest in using the term "BIRD BARRIER" generically
to designate its "Nixalite Stainless Steel Bird Barriers" and
therefore has standing to oppose.
In addition, the advertisements by opposer in "Your
Church" magazine and The Blue Book Building & Construction trade
directory evidence that, contrary to applicant's contentions, the
relevant public understands the primary significance of the term
"BIRD BARRIER" to refer to bird repellents like those offered by
applicant. The "NIXALITE Stainless Steel Bird Barrier" which is
illustrated in the "Your Church" magazine ad is touted as "a
recognized and proven bird repellent," while the Nixalite
Stainless Steel Bird Barriers" and the illustration of such a
product which are promoted in the The Blue Book Building &
Construction trade directory evidence that the relevant public
would regard the term "BIRD BARRIER" (and the plural thereof) as
a product designation or category for pest bird control devices
consisting of metal wires or spikes, just as the relevant public
would also understand, as applicant has admitted and the evidence
shows, that the term "bird repellents" (and the singular thereof)
likewise generically designates the same product category or
class.11 Indeed, the excerpts from The Blue Book Building &
Construction trade directory and the November 1999 "Quad Cities
White and Yellow Pages," which in each instance display "BIRD
BARRIERS, REPELLENTS & CONTROLS" as a topical heading, and the
excerpts from the other telephone directories, which in each case
Opposition No. 91122927
20
likewise show "Bird Barriers, Repellents & Controls" as a product
or category heading, not only demonstrate that the relevant
public would understand that "bird barriers," "bird repellents"
and "bird controls" are each generic terms, but that such terms
would be regarded as synonyms. Furthermore, the November 1999
"Quad Cities White and Yellow Pages" contains a listing for
"NIXALITE BIRD BARRIERS" by "NIXALITE OF AMERICA INC." Such
evidence, therefore, is additional proof of the genericness of
the term "BIRD BARRIER" with respect to applicant's goods and the
like goods of others in the bird abatement field, including
opposer.12
To the extent that applicant, in light of the
introduction to its brief,13 also appears to argue that "BIRD
11 There is no material difference, in a trademark sense, between the
singular and the plural form of a word or term. See, e.g., Wilson v.
Delaunay, 245 F.2d 877, 114 USPQ 339, 341 (CCPA 1957).
12 We agree with applicant, however, that none of the various official
records of the United States Patent and Trademark Office which were
introduced by opposer is probative of whether the term "BIRD BARRIER"
generically designates goods of the kind for which applicant seeks
registration of its mark. Specifically, the third-party registration
for the mark "TOPRITE" does not pertain to goods of the genus or type
involved in this proceeding; instead, it covers the kind of "bird
barrier" which, as identified therein, consists of "olefin netting for
the top of game bird pens and for use in other areas where it is
necessary to erect a bird barrier made of netting." The information
concerning a prior filed and subsequently abandoned application by a
different third-party to register "SPIKES" as a mark for a "bird
barrier for pestiferous birds" evidences only that such an application
was filed. Likewise, the information as to two prior filed and later
abandoned applications by applicant shows only that such applications
were filed; such information does not, as previously noted, indicate
any reason why the applications were abandoned. Nonetheless, the
various official records offered by opposer are not necessary in order
for there to be sufficient clear evidence which establishes opposer's
claim of genericness by the preponderance of the evidence properly of
record.
13 Applicant asserts therein that:
Opposition No. 91122927
21
BARRIER" has not been shown to be a generic term for its products
because the record shows that such goods are advertised and known
to the relevant public solely as "bird repellents," it is settled
that a product can have more than one generic name. See, e.g.,
In re Sun Oil Co., 426 F.2d 401, 165 USPQ 718, 719 (CCPA 1970)
(J. Rich, concurring); In re Recorded Books Inc., 42 USPQ2d 1275,
1281 (TTAB 1997); and In re National Shooting Sports Foundation,
Inc., 219 USPQ 1018, 1020 (TTAB 1983). The significance of the
fact that a product can have multiple generic names is, in this
case, twofold. First, the fact that the articles introduced by
applicant from the "Pest Control Technology" trade journal and
the "Los Angeles Times" newspaper use terms other than "bird
barrier" or "bird barriers" to refer to bird control products
(e.g., "bird scare tape" and various types of "repellents,"
including "visual repellents" and "ledge denial repellents" such
as "mechanical spikes, wires and chemical repellents") does not
mean that, by the absence of any references therein to "bird
barrier" or "bird barriers," those terms cannot be generic.
Second, while applicant is correct in arguing that
"there is no dictionary definition of the phrase 'BIRD
BARRIER,'"14 the dictionary definitions of the word "barrier,"
Bird Barrier America, Inc. ("Applicant"), founded over
ten years ago, is the second largest manufacturer of bird
repellents in the United States and its products have been
featured in publications such as the Los Angeles Times ....
Applicant's clients include large companies such as Sea
World® and Walt Disney World®, and its bird repellent
products can be found protecting famous monuments, such as
the United States Capitol (see, Id.).
14 The fact, however, that a term or phrase is not found in a
dictionary or other standard reference work is not controlling on the
Opposition No. 91122927
22
which we have judicially noticed, confirm that pest control
devices consisting of non-electric metal wires or spikes for
attachment to a structure to deter birds from landing and
perching are, in a sense, a kind of "barrier." Specifically, as
the illustrations of applicant's and opposer's goods make plain,
the protruding metal wires or spikes on such products act as a
barrier to deter birds from landing or perching in the sense that
they serve to bar passage, as a railing, fence or the like, to a
building ledge, roof or other structural feature where birds
would otherwise alight or roost. That is, applicant's and
opposer's bird repellents obstruct birds' access to structural
elements of a building, thereby preventing them from landing or
perching thereon. Such goods are obviously material objects that
separate, keep apart or serve as a unit or barricade to birds in
that they tend to restrict their free movement and mingling. We
have no doubt, therefore, that as clearly shown by the excerpts
made of record by opposer from various printed publications, the
relevant public primarily understands "BIRD BARRIER" as a generic
term for the genus of goods at issue herein. Indeed, such
evidence suffices to demonstrate that the term would only have a
generic significance.
Nonetheless, applicant further contends that the
various third-party registrations which it has made of record for
marks which include the word "BARRIER" as a separate element but
which do not also include a disclaimer thereof "are sufficient
question of the registrability thereof. See, e.g., In re Gould Paper
Corp., 834 F.2d 1017, 5 USPQ2d 1110, 1112; and In re Orleans Wines,
Opposition No. 91122927
23
to, at a minimum, raise doubts as to whether the phrase 'BIRD
BARRIER' is a generic term for Applicant's goods." None of such
registrations, however, is for any type of bird control or
abatement product. Moreover, even if some of such registrations
are considered to be analogous to applicant's mark, since they
include marks in which the word "BARRIER" is preceded by the
generic name for a kind of pest species (e.g., "BARNACLE BARRIER"
for "paints and sealer coatings for use on boats," "ROACH
BARRIER" for "insecticides for domestic use" and "MOSQUITO
BARRIER" for a "mosquito repellent"), such fact does not entitle
applicant to registration of its mark absent a disclaimer of
"BIRD BARRIER." Each case, as applicant correctly notes in its
brief, "must be decided on its own facts" and, like a merely
descriptive term, a term which is generic15 "is not registrable
merely because other similar marks appear on the register." See,
e.g., In re Nett Designs Inc., 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 ...
allowance of such prior registrations does not bind the Board or
this court"]; and In re Pennzoil Products Co., 20 USQP2d 1753,
1758 (TTAB 1991). In any event, none of the third-party
registrations offered by applicant is persuasive of a contrary
finding in this case, nor do they singly or collectively serve to
Ltd., 196 USPQ 516, 517 (TTAB 1977).
15 As pointed out in Marvin Ginn, supra at 228 USPQ 530: "The generic
name of a thing is in fact the ultimate in descriptiveness."
Opposition No. 91122927
24
create any doubt as to the genericness of the term "BIRD
BARRIER," given the clear showing thereof made by opposer.
Finally, we note applicant's observation that "Opposer
has offered only scant references" in support of its claim of
genericness. Applicant speculates, in view thereof, that "[i]f
the term 'BIRD BARRIER' was truly a generic term for 'pest
control devices, namely non-electric metal wire attached to a
structure for deterring birds from landing and perching' then
there would likely be many references available to Opposer where
that phrase is used in a generic manner." Suffice it to say,
however, that while the evidence which supports opposer's claim
of genericness is modest, it nonetheless is clear evidence that
the primary--and indeed sole--significance of "BIRD BARRIER" to
the relevant public is that of a generic term which refers to the
class or genus of pest control devices consisting of non-electric
metal wires or spikes for attachment to a structure to deter
birds from landing and perching.16 Accordingly, opposer has met
its burden of proof of genericness by a preponderance of the
evidence and applicant's mark is not registrable in the absence
of a disclaimer of the generic term "BIRD BARRIER."
Decision: The opposition is sustained and registration
to applicant is refused. Nevertheless, in accordance with
Trademark Rule 2.133(b), this decision will be set aside and
applicant's mark will be forwarded for registration if applicant,
16 Such evidence, moreover, is more extensive than that offered by
applicant to support its contentions regarding the existence of other
generic terms for its goods.
Opposition No. 91122927
25
no later than thirty days from the mailing date hereof, submits
an appropriate disclaimer of the words "BIRD BARRIER."17
17 See TMEP Section 1213.08 (3d ed. 2d rev. May 2003) for the proper
format for a disclaimer.