Precision Cuts, Inc.

Trademark Trial and Appeal Board

Jun 30, 2004

No. 76342048 (T.T.A.B. Jun. 30, 2004)

Mailed: June 30, 2004
csl
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Precision Cuts, Inc.
________
Serial No. 76342048
______
Lisa M. Caldwell of Klarquist Sparkman, LLP for Precision
Cuts, Inc.
Steven Foster, Trademark Examining Attorney, Law Office 106
(Mary Sparrow, Managing Attorney).
_______
Before Simms, Hanak and Chapman, Administrative Trademark
Judges.
Opinion by Simms, Administrative Trademark Judge:
Precision Cuts, Inc. (applicant), an Oregon
corporation, has appealed from the final requirement of the
Trademark Examining Attorney for a disclaimer of the words
“PRECISION CUTS” in the mark shown below, for the amended
description “barbershop and tanning salon services,” in
Class 42.1

1 Application Serial No. 76342048, filed November 27, 2001,
asserting use since January 1, 1985, and use in commerce since
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT
OF THE TTAB
Ser. No. 76342048
2
In the original application, applicant asserted that
its mark has become distinctive of its services through
substantially exclusive and continuous use in commerce for
at least five years. In an amendment, applicant claimed
that its mark had acquired distinctiveness as the result of
substantially exclusive and continuous use for 15 years.
The Examining Attorney contends that the words
“PRECISION CUTS” are generic with respect to barbershop
services and must be disclaimed pursuant to Section 6 of
the Trademark Act, 15 USC §1056.
Applicant and the Examining Attorney have submitted
briefs, but no oral hearing was requested.
It is the Examining Attorney’s position that
dictionary definitions of record2 as well as numerous
excerpts from stories retrieved from the Nexis database
show that these words are generic for a type or style of
haircut and are therefore generic with respect to

December 10, 1985. Applicant submitted a disclaimer of the word
“CUTS” apart from the mark as shown.
2 One definition of record of the word “cut” is “a haircut, often
with a styling.” Random House Unabridged Dictionary, Second
Edition (date indecipherable).
Ser. No. 76342048
3
haircutting or barbershop services. Because terms are
generic for services if they are generic for a key
characteristic of those services, the words “precision
cuts” should be disclaimed in applicant’s mark despite any
claim of acquired distinctiveness for the mark as a whole,
the Examining Attorney contends. Some of the excerpted
stories, all from U.S. publications, are set forth below:
HEADLINE: SNIP, SNIP--CHULUOTA SALON CUTS AWAY
AT HAREBRAINED RULES
…a Chuluota Beauty Shop where the air smells
like ginger conditioner, and the conventional
rules of the modern hair-care establishment
aren’t just meant to be broken, but tackled,
wrassled to the ground, hogtied, and given a
precision cut and color rinse.
Orlando Sentinel, February 24, 2003
* * * * * * * * *
She attended cosmetology school at Scottsdale
Cole Academy and was previously employed at the
Jon English Salon in Minneapolis. She
specializes in precision cuts and dimensional
block coloring techniques.
Bismarck Tribune, February 9, 2003
* * * * * * * * *
CMB Salon has recently opened in Cape Coral.
The staff specializes in precision cuts, color,
highlights and perms.
The News-Press, November 25, 2002
* * * * * * * * *
Her approach to dressing the male anchor: The
power look. That means dark colors. Blue is
business. Her advice to the female anchor:
Hair is crucial. Go with a precision cut as
opposed to something that’s wash-and-wear
casual.
The Virginian-Pilot, November 18, 2002
* * * * * * * * *
Offering precision cuts, permanent waves, hair
coloring, blow drys and sets, New York Hair has
14 chairs and 12 stylists.
Ser. No. 76342048
4
Sarasota Herald-Tribune, November 14, 2002
* * * * * * * * *
Q: What do you specialize in?
A: My most important job is to educate the
client on keeping their hair healthy; beyond
that, I really like doing precision cuts. I
also love doing makeovers and wedding styles.
Hattiesburg American, August 23, 2002
* * * * * * * * *
HEADLINE: Long Island brothers run barbershop
for the new generation
The specialty here is precision-cut beards and
haircuts using straight-edged razors.
Sometimes 30 or more people wait for marine
cuts, flat tops…
Long Island Business News, July 26, 2002
* * * * * * * * *
…“We’re a full service hair salon,” she said.
“We offer precision cuts, weaves, up-dos –
anything you can imagine.”
The Pantagraph, November 4, 2000
* * * * * * * * *
HEADLINE: Short style -- Summer cuts feature
bold, colorful looks
“They want to wear their hair more natural, so
they want a precision cut,” said Cool C.
The Advocate, June 28, 2000
* * * * * * * * *
HEADLINE: Female barber’s business on cutting
edge
Stacy’s Barbershop is located at 83 Mechanic
Street, minutes from Leominster’s downtown. It
offers what Farrow described as quality,
precision cuts at friendly prices.
Telegram & Gazette, September 6, 1998
* * * * * * * * *
After working for others, she opened Meenu’s
Cutting Edge two weeks ago. She offers
“barber” and “stylist” precision cuts for men,
women and children, as well as threading and
henna.
The Tampa Tribune, August 17, 1997
* * * * * * * * *
HEADLINE: MANE POINTS; IN MEN’S HAIR STYLES,
VERSATILITY AND CONTROL – NOT LENGTH - ARE WHAT
COUNT
Ser. No. 76342048
5
“They want something that’s easy to maintain,
but versatile enough to change to fit whatever
they have to do. The key, of course, is a
good, precision cut.”
The Columbus Dispatch, August 8, 1995
* * * * * * * * *
HEADLINE: Black women find short is simply
chic
Sophisticated women who want that nearly down-
to-the-scalp precision cut often head for the
barber’s chair.
The Dallas Morning News, March 15, 1995
* * * * * * * * *
Hold the Shave: Some busy – and adventurous –
businesswomen are skipping the salon these days
and running off to the barbershop for quickie
haircuts. They’re trading frills, fuss and
gossip for in-and-out precision cuts.
Los Angeles Times, July 28, 1994
* * * * * * * * *
Shop owner Bob Williams says he offers “good
prices, precision cuts, pretty quick service
most days, and a laugh or two.”
The Washington Post, July 25, 1987
* * * * * * * * *
She also worked for eight years at a precision
cut/Vidal Sassoon style salon and attended
advanced training at Arther Academy.
Pensacola News Journal, September 22, 2002
* * * * * * * * *
Instead, what’s hip on heads are wash-blow-and-
go natural looks, which have their roots in
Vidal Sassoon precision cuts of decades past
and are today most famously linked with
hairstylist-to-the-stars Frederic Fekkai.
Fort Worth Star Telegram, March 29, 2002
* * * * * * * * *
“It is said in the world of beauty that you go
to a British cutter for a precision cut, to an
Italian cutter for a beautiful cut and to a
French cutter for an image cut,” said Paddy
Calistro, a Santa Monica, Calif.-based beauty
expert.
Saint Paul Pioneer Press, January 3, 2000
* * * * * * * * *
HEADLINE: THE TIMES THEY WERE A-CHANGIN’
Ser. No. 76342048
6
…Vidal Sassoon introduces precision cut, wash-
and-wear hair.
The San Francisco Chronicle, December 30, 1999
* * * * * * * * *
Some stylists in Boston’s Newbury Street area,
where more than 80 salons have congregated in
recent years, are making more than $100,000 a
year thanks to people like Halton, who will pay
$150 or more to get a precision cut.
Boston Business Journal, May 29, 1998
* * * * * * * * *
A full-service salon, Mixed Media offers
precision cuts and hair styling, permanents,
hair relaxing, coloring and highlights,
specialized manicures and pedicures, hair
remover, facials and nail wraps.
The San Francisco Examiner, December 5, 1997
* * * * * * * * *
Mr. Mascolo does more than teach his 500 Dallas
employees how to precision-cut hair or politely
answer phones…
The Dallas Morning News, February 16, 1997
* * * * * * * * *
-Carolyn Mosley announces the opening of her
new business, N-Trigue, “a salon,” at 808 W.
Brevard St. Mosley specializes in hair
weaving, sculptured designs and precision cuts.
Tallahassee Democrat, July 10, 1996
* * * * * * * * *
Although the new mod bob is different from the
stiff, five-point precision cut popularized by
Vidal Sassoon back in 1964, “today’s style is
much shinier and more touchable with lots of
movement and …
The Baltimore Sun, October 12, 1995

It is applicant’s position that the Examining Attorney
has not submitted a prima facie case of genericness by
submitting clear or substantial evidence that these words
are or will be recognized by at least a majority of the
relevant purchasing public, that is, barbershop customers,
to primarily signify the name of applicant’s services.
Ser. No. 76342048
7
First, applicant observes that no dictionary definition of
record defines the term “precision cut(s).” According to
applicant, the Nexis evidence shows that only a very small
portion of the relevant public has used these words to
refer to a way of cutting hair. Applicant contends that
only a very small number of news articles (about 60) have
been made of record which use the term “precision cut” in
relation to barbershop services, out of millions of
articles covered in the database.3 Therefore, while
applicant acknowledges that the stories show use by hair
care professionals to describe a way of cutting hair,
applicant’s attorney argues that the Examining Attorney has
offered no evidence that any consumers have actually been
exposed to these articles or that most of the relevant
public (barbershop customers) in fact use these words
generically. Accordingly, applicant maintains that no
inferences can be drawn from the evidence that most of the
relevant public regards the term PRECISION CUTS as generic.
Applicant has also made of record a number of third-party
registrations which include the word “CUTS” in combination

3 In his appeal brief, p.6, applicant’s attorney describes a
search which he conducted in the Nexis database. Because the
search results were not made of record before the appeal was
filed, we can give no consideration to this search. Moreover,
the fact that the term “haircut” may appear in many more articles
than the expression “precision cut(s)” is not particularly
relevant to the issue before us.
Ser. No. 76342048
8
with other descriptive or laudatory terms, such as “GREAT”
or “SUPER,” and argues that its similar mark should also be
registered. Finally, applicant asks us to resolve any
doubt as to whether the words “PRECISION CUTS” are generic
in applicant’s favor by finding that they are, at most,
descriptive words which have acquired distinctiveness, so
that the consuming public has come to view applicant’s mark
as denoting a particular source.
In response to applicant’s arguments about the failure
to prove that most of the relevant public view the words
“precision cuts” as generic, the Examining Attorney argues
that the Nexis evidence of record shows that providers of
haircutting and barbershop services have referred to their
services as including the offering of “precision cuts,” and
that the purchasing public has been exposed to this generic
usage in these stories, appearing not in trade journals,
but in general-circulation publications such as newspapers.
Further, the Examining Attorney explains:
Given the limited resources of this Office, it
would be extremely difficult for the Office to
directly prove in any given case what the
majority of possibly (in some cases) millions
of consumers actually believe when seeing or
hearing a term or phrase. The Office does not
conduct polls or surveys of ordinary consumers
in individual cases, and, as illustrated by the
Nexis evidence herein, very few ordinary
citizens get quoted in newspapers commenting
about the services offered to them by others.
Ser. No. 76342048
9
However, this does not mean that these
consumers would not recognize terms as being
generic when they see or hear them used in
relation to the provision of specific goods or
services.
See Examining Attorney’s appeal brief, unnumbered pages 4-
5. The Examining Attorney also notes that applicant
offered nothing other than the declaration in support of
the claim of acquired distinctiveness.4 That is, no
evidence such as the amount of sales under the mark,
advertising expenditures under the mark, extent of use of
the mark, or direct evidence of the public perception of
the asserted mark tending to show that the relevant public
would attribute trademark significance to the words in the
mark as indicating origin in applicant, have been
submitted.
With respect to generic terms, Section 14(3) of the
Act, 15 USC §1064(3), provides that “The primary

4 In a footnote in his brief, the Examining Attorney states that,
had applicant sought registration of the words PRECISION CUTS
alone, or had applicant claimed acquired distinctiveness of just
the phrase PRECISION CUTS (rather than the mark as a whole), he
would have argued that, even if the phrase were not generic,
applicant’s evidence of acquired distinctiveness was insufficient
to permit registration of these words. However, he acknowledges
that because applicant’s claim of acquired distinctiveness was
with respect to the mark as a whole, including the design
elements, then the claim of acquired distinctiveness appears to
preclude this argument. See In re Creative Goldsmiths of
Washington, Inc., 229 USPQ 766, 769 n.6 (TTAB 1986), wherein the
Board indicated that, where the Section 2(f) claim pertained to
more than the subject matter of the disclaimer requirement, any
alleged insufficiency of the showing as it pertained to the
subject matter of the disclaimer was not well taken.
Ser. No. 76342048
10
significance of the registered mark to the relevant public
rather than purchaser motivation shall be the test for
determining whether the registered mark has become the
generic name of goods or services on or in connection with
which it has been used.” This language is equally
applicable to the determination of genericness prior to
registration. That is to say, the statutory test of the
primary significance of the mark to the relevant public is
also the test for determining whether an applied-for mark
is or is not generic. If the term PRECISION CUTS is
generic, and thus constitutes unregistrable matter, then
the words must be disclaimed even though applicant is
seeking registration of the entire mark under the
provisions of Section 2(f). In re Creative Goldsmiths of
Washington, Inc., supra, at 768, and cases cited therein;
and TMEP §1213.03(b)(2nd ed. Rev. 1 March 2004).
In determining whether the primary significance of a
term is generic, our primary reviewing court has stated:
…[D]etermining whether a mark is generic …
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 Corporation v. International Association of
Fire Chiefs, Inc., 782 F.2d 987, 228 USPQ 528, 530 (Fed.
Ser. No. 76342048
11
Cir. 1986). See also In re American Fertility Society, 188
F.3d 1341, 51 USPQ2d 1832 (Fed. Cir. 1999). The critical
issue in genericness cases is, therefore, whether members
of the relevant public primarily use or understand the term
sought to be registered to refer to the genus or category
of goods or services in question. In re Montrachet S.A.,
878 F.2d 375, 11 USPQ2d 1393, 1394 (Fed. Cir. 1989); In re
Merrill Lynch, Pierce, Fenner, & Smith, Inc., 828 F.2d
1567, 4 USPQ2d 1141, 1143 (Fed. Cir. 1987); Dan Robbins &
Assocs., Inc. v. Questor Corp., 599 F.2d 1009, 202 USPQ
100, 105 (CCPA 1979); Zimmerman V. National Assn. of
Realtors, Inc., 70 USPQ2d 1425 (TTAB 2004); and In re
Recorded Books, Inc., 42 USPQ2d 1275 (TTAB 1997). Evidence
of the public’s understanding of a particular term may be
obtained from any competent source, including direct
testimony of consumers, consumer surveys, listings in
dictionaries, trade journals, newspapers, and other
publications. See Magic Wand Inc. v. RDB Inc., 940 F.2d
638, 19 USPQ2d 1551 (Fed. Cir. 1991); In re Merrill, Lynch,
Pierce, Fenner, and Smith Inc., supra; In re Northland
Aluminum Products, Inc., 777 F.2d 1566, 227 USPQ 961 (Fed.
Cir. 1985); and In re Leatherman Tool Group, Inc., 32
USPQ2d 1443, 1449 (TTAB 1994). Finally, we note that in
the context of this ex parte proceeding, it is the burden
Ser. No. 76342048
12
of the Examining Attorney to prove the genericness of the
words in the mark sought to be registered by clear
evidence. In re Merrill Lynch, Pierce, Fenner & Smith
Inc., supra.
The genus, category or class of services is determined
on the basis of the services identified in the application.
See, e.g., Magic Wand, Inc. v. RDB, Inc., supra. As set
forth in this application, the category or class of
applicant's services is barbershop services. (The
Examining Attorney does not argue that the words PRECISION
CUTS are generic with respect to tanning salon services.)
With respect to the issue of whether the term sought
to be registered is understood by the relevant public (the
general purchasing public in this case) primarily to refer
to that class or category of services, we must look to the
evidence of record. In this case, there is clear evidence
that the term “precision cut(s)” has been used to identify
a type or style of haircut. For example, “Offering
precision cuts, permanent waves, hair coloring, blow drys
and sets, New York Hair has 14 chairs and 12 stylists.”
Thus, the public would primarily understand the term
“precision cut(s)” to have this significance as a result of
exposure to the uses of this term in the excerpts from
newspapers and magazines distributed to the general public.
Ser. No. 76342048
13
Inasmuch as the term “precision cuts” is generic for a
type or style of haircut, which is a key characteristic of
applicant’s barbershop services, these words are generic
for those services. See In re Bonni Keller Collections
Ltd., 6 USPQ2d 1224 (TTAB 1987)(“La Lingerie” held generic
for services that involve the selling of lingerie); and In
re Wickerware, Inc., 227 USPQ 970 (TTAB 1985)(“Wickerware”
held generic for mail order and distributorship services in
the field of wicker furniture).
The Examining Attorney having presented a prima facie
case of genericness of these words, it was incumbent on
applicant to attempt to rebut this showing by, for example,
demonstrating that these words have also been used in a
significant manner as a service mark to indicate source or
origin in applicant for its barbershop services. This
applicant has not done. Rather, applicant has merely
relied upon its earlier-filed declaration that its mark has
been used substantially exclusively and continuously for
over 15 years. As the Examining Attorney has stated,
applicant did not otherwise attempt to show that its mark
was the subject of substantial sales or advertising, or
otherwise used in such a significant manner that it was
exposed to the relevant purchasing public. Such evidence
may tend to show that the primary significance of the mark
Ser. No. 76342048
14
is not to indicate a type or style of haircut. In
conclusion, we believe that the Examining Attorney has
shown by clear evidence that these words are generic for
applicant’s services, and should therefore be disclaimed.
Decision: The requirement under Section 6 of the Act
for a disclaimer of the words “PRECISION CUTS” apart from
the mark as a whole and the refusal to register the mark in
the absence of this disclaimer is affirmed. However, the
refusal of registration will be set aside and the mark
published for opposition if applicant, no later than 30
days from the mailing hereof, submits an appropriate
disclaimer. See Trademark Rule 2.142(g).