SRO Manage-ment, LLC

Trademark Trial and Appeal Board

Jun 24, 2004

No. 76236221 (T.T.A.B. Jun. 24, 2004)

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re SRO Management, LLC
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Serial No. 76236221
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David V. Radack for SRO Management, LLC.
Martha L. Fromm, Trademark Examining Attorney, Law Office
106 (Mary I. Sparrow, Managing Attorney).
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Before Hanak, Hohein and Bottorff, Administrative Trademark
Judges.
Opinion by Hanak, Administrative Trademark Judge:
SRO Management, LLC (applicant) seeks to register on
the Principal Register in typed drawing form THE
CONTINENTAL for “restaurant and bar services.” The
application was filed on April 5, 2001 with a claimed first
use date of September 1995.
Citing Section 2(e)(1) of the Trademark Act, the
Examining Attorney refused registration on the basis that
applicant’s mark is generic as applied to applicant’s
services. When the refusal to register was made final,
applicant appealed to this Board. Applicant and the
THIS OPINION IS NOT CITABLE
AS PRECEDENT OF
THE T.T.A.B. 6-24-04
Ser. No. 76236221
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Examining Attorney filed briefs. Applicant did not request
a hearing.
In considering whether applicant’s mark is generic it
is beyond dispute that “the burden of showing that a
proposed trademark [or service mark] is generic remains
with the Patent and Trademark Office.” In re Merrill Lynch,
828 F.2d 1567, 4 USPQ2d 1141, 1143 (Fed. Cir. 1987).
Moreover, 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, “a
strong showing is required when the Office seeks to
establish that a [mark] is generic.” In re K-T Zoe
Furniture Inc., 16 F.3d 390, 29 USPQ2d 1787 (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).
Having said the foregoing, the Examining Attorney has
abundantly proved that the word “continental” (whether
spelled with capital “C” or a lower case “c”) is generic
for a type of restaurant. To begin with, the Examining
Attorney has made of record a dictionary definition of the
word “continental” which is as follows: “often
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capitalized: of, relating to, or being a cuisine derived
from the classic dishes of Europe and especially France.”
Merriam-Webster Dictionary (2003). In addition, the
Examining Attorney has made of record hundreds of articles
where various restaurants across the country identify
themselves as being a continental restaurant or featuring
continental cuisine or continental dining. Moreover, the
Examining Attorney has made of record numerous restaurant
directories which list restaurants by their style of
cuisine such as French, Italian, Mexican and Continental.
In view of the foregoing, we have no doubt that the term
“Continental” is a generic term for a type of restaurant.
Indeed, applicant concedes this very point. At page 4 of
its reply brief, applicant makes the following statement:
“In this case, the term ‘CONTINENTAL’ is a type of
restaurant, and while admittedly descriptive, it is not a
descriptor for the entire genus, i.e. restaurant services.”
We certainly agree with the applicant that the term
“Continental” names a type of restaurant. The fact that
the term “Continental” does not name “the entire genus,
i.e. restaurant services,” is irrelevant. By applicant’s
reasoning, the terms “maple”; “redwood”; and “cypress” (to
name just a few) would not be generic terms for specific
Ser. No. 76236221
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types of trees because they do not name the entire genus,
which is “trees.”
We acknowledge that applicant is not seeking to
register CONTINENTAL, but rather is seeking to register THE
CONTINENTAL. Technically, THE CONTINENTAL is a phrase, and
under a literal reading of In re American Fertility
Society, 188 F.3d 1341, 51 USPQ2d 1832, 1836 (Fed. Cir.
1999), the Examining Attorney, in order to sustain a
genericness refusal, would have had to have made of record
articles which use the phrase “the continental” in a
generic manner. The Examining Attorney could not do so.
However, we do not believe that the United States
Court of Appeals for the Federal Circuit ever intended that
American Fertility be read such that an applicant could
take a clearly generic term and add to it a non-source
identifying word such as “the” or “a” and thereby create a
trademark or service mark. This is true even in the
absence of proof by the Examining Attorney that others had
used “the continental” or “a continental.”
Quite some years ago a predecessor Court to our
primary reviewing Court rejected applicant’s reasoning when
it held that the mark “the pill” was generic for oral
contraceptives. In re G.D. Searle & Co., 360 F.2d 650, 149
USPQ 619, 624 (CCPA 1966). In so doing, the Court stated
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“that the addition of quotation marks to an otherwise
common descriptive name [generic term]” does not convert it
into a trademark. Searle, 149 USPQ at 623. While the
Court in Searle did not discuss the presence of the word
“the” in applicant’s mark, it is clear that if quotation
marks could not save applicant’s mark from being held
generic, then the non-source identifying word “the”
certainly could not.
In similar fashion, this Board held that with regard
to computer outlet services, the presence of the word THE
in the “mark” THE COMPUTER STORE (depicted in typed drawing
form) did not prevent the mark from being generic. In re
Computer Store, Inc., 211 USPQ 72 (TTAB 1981).
Of course, if a mark is depicted in an extremely
stylized form (as opposed to typed drawing form) then it
may be possible to obtain a registration for a mark
consisting of the word THE followed by the generic term
provided that the generic term has been disclaimed. In re
Venturi, Inc., 197 USPQ 714, 715 (TTAB 1977) (The Board
allowed registration of the words THE PIPE in a highly
stylized form for smokers’ pipes with the disclaimer of the
generic term “pipe”). In the present case, there is not
even a disclaimer of the generic term “continental.”
Ser. No. 76236221
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Before leaving the issue of genericness, one last
comment is in order. We would be remiss not to point out
that in applicant’s specimen of use the word THE is
depicted in extremely small lettering, whereas the word
CONTINENTAL is depicted in far, far larger lettering. As
previously noted, applicant seeks to register THE
CONTINENTAL in typed drawing form. This means that the
mark is not limited to being “depicted in any special form”
and hence we are mandated “to visualize what other form the
mark might appear in.” Phillips Petroleum Co. v. C.J. Webb
Inc., 442 F.2d 1376, 170 USPQ 35, 36 (CCPA 1971). In
particular, we must give special attention to the manner in
which applicant has actually depicted its mark. See also
INB National Bank v. Metrohost Inc., 222 USPQ2d 1585, 1588
(TTAB 1992). If applicant were to obtain a registration of
THE CONTINENTAL in typed drawing form, it would be free to
depict, as it so does, the mark with the word THE in barely
legible form and the word CONTINENTAL in extremely large
form. In essence, applicant would be obtaining rights in
the clearly generic term “continental” for restaurant and
bar services.
If it is ultimately determined that our finding that
applicant’s mark is generic is in error, we will next
consider applicant’s claim that its mark has acquired
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distinctiveness pursuant to Section 2(f) of the Trademark
Act. It is well settled that as a mark’s descriptiveness
increases, the applicant must present decidedly more
evidence pursuant to Section 2(f) in order to establish
that its mark has become distinctive of applicant’s goods
or services. Yamaha International v. Hoshino Gakki, 840
F.2d 572, 6 USPQ2d 1001, 1008 (Fed. Cir. 1988).
Applicant’s evidence of acquired distinctiveness consists
of the fact that it has used the mark for more than five
years, and that its mark has received mention in two
national publications as well as on a television show.
Such evidence of acquired distinctiveness is woefully
inadequate because applicant’s mark, if not generic, is, at
a minimum, extremely highly descriptive.
Decision: The refusal to register is affirmed.