The Outdoor Recreation Group

Trademark Trial and Appeal Board

Dec 11, 2006

No. 76570321 (T.T.A.B. Dec. 11, 2006)

Mailed: December 11, 2006

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re The Outdoor Recreation Group
________

Serial No. 76570321
_______

Mark S. Bicks of Roylance Abrams Berdo & Goodman for The
Outdoor Recreation Group.

Martha L. Fromm, Trademark Examining Attorney, Law Office
106 (Mary I. Sparrow, Managing Attorney).
_______

Before Drost, Walsh and Cataldo,
Administrative Trademark Judges.

Opinion by Cataldo, Administrative Trademark Judge:

The Outdoor Recreation Group, a California
corporation, has filed an application, as amended, to
register on the Principal Register the mark OUTDOOR
PRODUCTS in standard character form, with a claim of
acquired distinctiveness under Section 2(f) of the
Trademark Act as to OUTDOOR, for the following goods1:

1 Application Serial No. 76570321 was filed on January 16, 2004
reciting September 1974 as a date of first use of the mark
anywhere and in commerce on both classes of goods. Applicant
claims ownership of Registration Nos. 1472288 and 2949243, and
THIS OPINION IS CITABLE
AS PRECEDENT OF
THE T.T.A.B.
Ser No. 76570321
2
duffle bags, backpacks, tote bags, soft packs
comprised of backpacks or hikers' bags
constructed of soft material which packs do not
have a rigid frame for supporting the bag,
adjustable belly bands used for backpacks,
shoulder pad straps and accessory bands and
straps sold separately from the bags heretofore
mentioned, fanny packs, shoulder bags and belt
pouches,

in International Class 18; and
clothing, consisting of down booties, ponchos,
gaiters which are protective, covers for
footwear, chaps, parkas, pants, jackets and rain
suits,

in International Class 25.2
The examining attorney has refused registration under
Section 2(e)(1) of the Trademark Act, 15 U.S.C.
§1052(e)(1), on the ground that the proposed mark is
generic and thus incapable of identifying applicant’s goods
and distinguishing them from those of others; or, in the
alternative, that the proposed mark is merely descriptive
and that applicant has made an insufficient showing that
the mark has acquired distinctiveness under Trademark Act
Section 2(f), 15 U.S.C. §1052(f). When the refusal was
made final, applicant appealed. Applicant and the
examining attorney have filed briefs on the issue under
appeal.

disclaims the exclusive right to use “PRODUCTS” apart from the
mark as shown.

Ser No. 76570321
3
Applicant argues that it is the owner of Registration
No. 14722883 for the mark shown below

for “fanny packs, back packs, duffle bags, shoulder bags
and belt pouches,” in International Class 18, and “parkas,
pants, jackets, rain suits, ponchos, chaps and gaiters,” in
International Class 25; that its Registration No. 1472288
is incontestable; and that in refusing registration of the
involved application for essentially the same mark reciting
essentially identical goods, the examining attorney is
making an impermissible collateral attack on applicant's
incontestable registration. Applicant further argues that
it is the owner of Registration No. 29492434 for the mark
shown below

2 We note that the mark in the involved application was the
subject of applicant’s expired Registration No. 1220897.

3 Registration No. 1472288 issued on January 12, 1988 with a
claim of acquired distinctiveness under Section 2(f) in part as
to “OUTDOOR” and reciting February 9, 1987 as a date of first use
of the mark anywhere and in commerce on both classes of goods,
and with a disclaimer of the exclusive right to use “PRODUCTS”
apart from the mark as shown. Section 8 affidavit accepted;
Section 15 affidavit acknowledged.

4 Registration No. 2949243 issued on May 10, 2005 with a claim of
acquired distinctiveness under Section 2(f) in part as to
“OUTDOOR” and reciting October 1, 2003 as a date of first use of
the mark anywhere and in commerce on the goods identified in
Class 18 and January 29, 2004 as a date of first use of the mark
anywhere and in commerce on the goods identified in Class 25, and
Ser No. 76570321
4

for “duffle bags, backpacks, tote bags, soft packs
comprised of backpacks or hikers' bags constructed of soft
material which packs do not have a rigid frame for
supporting the bag, adjustable belly bands used for
backpacks, shoulder pad straps and accessory bands and
straps sold separately from the bags heretofore mentioned,
fanny packs, shoulder bags and belt pouches,” in
International Class 18, and “clothing, consisting of down
booties, ponchos, gaiters which are protective, covers for
footwear, chaps, parkas, pants, jackets and rain suits,” in
International Class 25; that the showing of acquired
distinctiveness in the application involved herein is
essentially identical to that made by applicant in the
application which recently matured into its Registration
No. 2949243; that the examining attorney’s refusals in this
case are inconsistent with the Office's treatment of
applicant's above noted registrations for related OUTDOOR
PRODUCTS marks; that the involved mark cannot be
distinguished from the marks in applicant’s prior

with a disclaimer of the exclusive right to use “PRODUCTS” apart
from the mark as shown.

Ser No. 76570321
5
registrations based on the addition of a design component;
and that the involved application cannot be distinguished
from applicant’s prior registrations based upon differences
in the identifications of goods. Applicant further argues
that the examining attorney’s evidence of genericness
comprises infringing and improper uses of applicant's mark;
that such evidence thus does not form a proper basis for a
genericness refusal; that applicant’s extensive and
continuous use of the OUTDOOR PRODUCTS mark for over 30
years provides clear evidence of acquired distinctiveness;
and that as a result of long use of the mark by applicant,
the relevant purchasing public has come to understand that
OUTDOOR PRODUCTS refers to applicant as the source of its
goods.
The examining attorney maintains that applicant’s
proposed mark is a generic designation for its goods. In
particular, the examining attorney argues that the evidence
of record demonstrates that OUTDOOR PRODUCTS is recognized
as the name of a class of goods including those identified
in the involved application; that the relevant public has a
need to use, and already uses, OUTDOOR PRODUCTS to
designate such goods; and that applicant has failed to
rebut the evidence of genericness made of record with its
own evidence of trademark use or recognition by others.
Ser No. 76570321
6
The examining attorney further argues that both the mark
involved herein and the goods identified thereby differ
from those in applicant’s prior registrations; and that, as
a result, the refusal to register the involved mark is not
inconsistent with the actions of prior examining attorneys;
that for the same reasons, the refusal to register the
involved mark does not constitute a collateral attack upon
applicant’s prior, incontestable, registration. The
examining attorney argues in addition that in the event the
proposed mark is not found to be generic, applicant has
failed to make a sufficient showing that the merely
descriptive term OUTDOOR PRODUCTS has acquired
distinctiveness as applied to the recited goods; that
applicant relies upon length of use alone in support of its
claim of acquired distinctiveness; and that, given the
examining attorney’s evidence of genericness, applicant was
required to submit evidence demonstrating that the involved
mark has acquired distinctiveness. In support of the
refusal, the examining attorney has made of record articles
from the Lexis/Nexis electronic database as well as
advertisements retrieved from Internet web pages. Excerpts
from these articles and web pages follow (emphasis added):
Sportsman’s Warehouse to open store in New Berlin
next month….The 61,000-square-foot store will
Ser No. 76570321
7
sell outdoor products, including gear, clothing
and footwear.
(Milwaukee Journal Sentinel (Wisconsin) September
30, 2004)

Here is a sample of women-specific outdoor
products available online or at the company’s
stores: The REI Venus women’s backpack is a new
internal-frame all-season backpack….
(The Daily News of Los Angeles June 3, 2004)

The company literally grew one brand at a time.
In the outdoor products category, the backpack is
the center of the universe, ranking right beside
the tent in popularity.
(PRIMEDIA Business Magazines & Media Inc. June 1,
2004)

Outside Buyer’s Guide has selected a bag made by
Red Oxx Manufacturing of Billings as one of this
year’s 15 best outdoor products. The competition
wasn’t a beauty contest either.
(Billings Gazette April 15, 2004)

…The company’s recently released Kajun Kameaux
line of outdoor products is billed as “the first
realistic evergreen concealment system.”
…Most camo clothing currently on the market is
done in brown, gray or yellow to blend with
hardwoods found in most of the country…“We’re
only trying to bring in innovative outdoor
products – we’re not trying to have 50 products
to offer….
(The Times (Shreveport, LA) February 1, 2004)

Here’s a profile of a useful outdoor product:
Name: One Jacket
(The Bellingham Herald January 21, 2004)

Its Fall 2003 catalog offers an array of outdoor
products in its 555 glossy pages, including
hunting rifles, jackets and snake-proof chaps.
Some of Cabela’s stores are much larger than Wal-
Mart Supercenters.
(Reno Gazette-Journal September 26, 2003)

Ser No. 76570321
8
…In 1974 by S.C. Johnson Wax, which created the
division that today owns Old Town and a handful
of familiar outdoor products including Eureka
tents, Camp Trails backpacks and Minn Kota
electric motors….
(Portland Press Herald (Maine) September 7, 2003)

“Although all the major pack brands are
addressing the demand swell in women’s-specific
outdoor products by offering a few women’s packs
in the collection, we believe that we are the
first brand to be dedicated only to women’s bags
and packs for the outdoor market,” comments
Ruzic….
(Sporting Goods Business, August 1, 2003)

NAPLES – If you were ever a Boy Scout, that
trusty canvas pack you lugged on camping trips
came from Diamond Brand, the outdoor products
manufacturer based here on U.S. 64.
(The Asheville Citizen-Times July 28, 2003)

OUTDOOR PRODUCTS MARKET: STEADY GROWTH
North Palm Beach, Florida – March 25, 1999 – The
market for outdoor recreation products grew by
two percent in 1998, with manufacturer’s sales
(at wholesale) of camping, hiking, backpacking,
and other outdoor products totaling $1.26 billion
dollars. Good weather throughout the summer and
a warm fall, combined with an ample supply of
affordable backpacks and tents for the consumer,
are reasons for the good year experienced by the
industry.
(www.sgma.com/press/1999/press)

“The Field & Stream® license offers PremiumWear
several exciting opportunities. First, we enter
the outdoor lifestyle apparel segment with one of
the most recognized brands in outdoor products.
Second, through this license, we expand our
product offering into headwear, rainwear, canvas
sport bags and totes, and children’s apparel,”
said David E. Berg, Premiumwear’s President and
Chief Executive Officer…The Field & Stream® brand
can be found in stores nationwide on a variety of
outdoor products, including outerwear, pocket
knives, watches and technical hunting apparel.
Ser No. 76570321
9
(www.prnewswire.com)

ABOUT WILD RIVER
Our Store: 9,000 square feet of the best in
outdoor products available. Hundreds of kayaks
and canoes, camping gear, rock climbing gear, and
clothing all under one roof.
(www.wildriveroutfitters.com)

Browse thousands of outdoor products from top
brand names like The North Face, DaKine,
Arc’teryx, Suunto, Oakley, Burton and Nixon…As
far as your recreational or hardcore gear is
concerned, it is our intention to help you find
what you need….The top name brands for skis,
paddles, watches, outdoor clothing, GPS
accessories, camping equipment, travel
necessities and more are listed below. Please
enjoy our selections.
(www.gravityfed.com/outoor-gear.html)

…Our designers strive to challenge assumptions
about how outdoor products should be built and
radically improve the status quo. We have
created ground-breaking construction technology,
developed paradigm-shifting designs and been the
catalyst to major new fabric technology. We have
cemented our reputation at the pinnacle of the
outdoor world by producing the most innovative
and superbly crafted packs, harnesses and apparel
available.
(www.acrteryx.com)

…Sierra designs, a technical leader in developing
innovative outdoor products including tents,
sleeping bags, and clothing, recently became the
first manufacturer to offer a free six-month
Trail Finder tm subscription with the purchase of
any Sierra Designs sleeping bag.
(www.outdoorindustry.org)

Marmot is a 26 year old performance outdoor
products company. We make outdoor clothing and
equipment simpler, easier to use, more
comfortable, more durable, lighter weight, and,
at the same time, a better value.
(www.mountainxlinks.com)
Ser No. 76570321
10

Beyond Fleece is an outdoor products company that
specializes in producing custom-made garments,
including soft shell pants and jackets, fleece
vests, and fleece pants and jackets.
(www.worldclassgear.com)

Fitness equipment, skis, snowshoes, tennis
racquets, Nordic hiking poles, basketball
accessories, sun glasses, performance apparel,
and hiking gear. That represented a list of the
wide variety of sport and outdoor products on
display at TrendCast (June 16; Marriott Marquis
Hotel; New York, NY) where 20 brands showcased
their latest product introductions for the New
York-based local and national media.
(www.sgma.com)

…Outdoor products manufacturers understand the
need for packing more than a bottle of water into
the woods, and over the years they have developed
numerous specialty packs to accommodate a wide
range of outdoor activities….
(outdoorstore.espn.com)

…But women are far from a soft spot in the
outdoor industry. On an [sic] August 5, 2003,
Leisure Trends Group released a report showing
women’s-specific outdoor product sales increased
18.35 percent in dollars, and 25.5 percent in
units sold for the second quarter of 2003.
According to the report, dollar sales of outdoor
sportswear grew 38 percent and backpacks
increased 19 percent over the same period in
2002. Apparel accessories soared 44 percent and
outerwear jumped 34 percent.
(www.outdoorindustry.org)

In addition, the examining attorney submitted with her
December 13, 2004 Office action dictionary definitions of
“outdoor” and “product.” According to these definitions,
“outdoor” may be defined, inter alia, as “located, suited
for, or taking place in the open air, ‘outdoor clothes,
Ser No. 76570321
11
‘badminton and other outdoor games;’” and “product” may be
defined, inter alia, as “an article or substance
manufactured for sale.”5
A mark is a generic name if it refers to the class,
genus or category of goods and/or services on or in
connection with which it is used. See In re Dial-A-
Mattress Operating Corp., 240 F.3d 1341, 57 USPQ2d 1807
(Fed. Cir. 2001), citing H. Marvin Ginn Corp. v.
International Association of Fire Chiefs, Inc., 782 F.2d
987, 228 USPQ 528 (Fed. Cir. 1986). The test for
determining whether a mark is generic is its primary
significance to the relevant public. See Section 14(3) of
the Act. See also In re American Fertility Society, 188
F.3d 1341, 51 USPQ2d 1832 (Fed. Cir. 1999); Magic Wand Inc.
v. RDB Inc., 940 F.2d 638, 19 USPQ2d 1551 (Fed. Cir. 1991);
and H. Marvin Ginn Corp. v. International Association of
Fire Chiefs, Inc., supra. The examining attorney has the
burden of establishing by clear evidence that a mark is
generic and thus unregistrable. See In re Merrill Lynch,
Pierce, Fenner and Smith, Inc., 828 F.2d 1567, 4 USPQ2d
1141 (Fed. Cir. 1987). Evidence of the relevant public’s
understanding of a term may be obtained from any competent

5 The examining attorney relies upon Ultralingua.net and
AskOxford.com, respectively, for these definitions.
Ser No. 76570321
12
source, including testimony, surveys, dictionaries, trade
journals, newspapers, and other publications. See In re
Northland Aluminum Products, Inc., 777 F.2d 1556, 227 USPQ
961 (Fed. Cir. 1985).
In the case of In re Dial-A-Mattress Operating Corp.,
supra, 1-888-M-A-T-R-E-S-S for “telephone shop-at-home
retail services in the field of mattresses,” the court
further clarified the test as follows (Id. at 1810):
Where a term is a “compound word” (such as
“Screenwipe”), the Director may satisfy his
burden of proving it generic by producing
evidence that each of the constituent words is
generic, and that “the separate words joined to
form a compound have a meaning identical to the
meaning common usage would ascribe to those words
as a compound.” In re Gould Paper Corp., 834
F.2d 1017, 1018, 5 USPQ2d 1110, 1110 (Fed. Cir.
1987). However, where the proposed mark is a
phrase (such as “Society for Reproductive
Medicine”), the board “cannot simply cite
definitions and generic uses of the constituent
terms of a mark”; it must conduct an inquiry into
“the meaning of the disputed phrase as a whole.”
In re The Am. Fertility Soc'y, 188 F.3d at 1347,
51 USPQ2d at 1836. The In re Gould test is
applicable only to “compound terms formed by the
union of words” where the public understands the
individual terms to be generic for a genus of
goods or services, and the joining of the
individual terms into one compound word lends “no
additional meaning to the term.” Id. at 1348-49,
51 USPQ2d at 1837.

The court concluded that “1-888-M-A-T-R-E-S-S,” as a
mnemonic formed by the union of a series of numbers and a
word, bears closer conceptual resemblance to a phrase than a
Ser No. 76570321
13
compound word, and the court reiterated that the PTO must
produce evidence of the meaning the relevant purchasing
public accords to the proposed mnemonic mark “as a whole.”
In concluding that there was not substantial evidence that
the term is generic, the court added that the term is not
literally a genus or class name nor does it “immediately and
unequivocally” describe the service at issue.
We find that, in this case, OUTDOOR PRODUCTS is
somewhat more analogous to the phrase considered by the
court in American Fertility than it is to the compound word
considered in Gould. That is to say, unlike the term
SCREENWIPE contemplated by the Federal Circuit in In re
Gould, supra, OUTDOOR PRODUCTS appears to be less of a
compound word formed by the union of OUTDOOR and PRODUCTS
than a phrase comprising its constituent words. Thus,
dictionary definitions alone cannot support a refusal to
register the proposed mark. However, we need not determine
whether definitions of the constituent terms would be
sufficient in view of the fact that evidence made of record
by the examining attorney establishes that the wording
“outdoor products” is the name of a class of goods.
Specifically, articles and advertisements made of record by
the examining attorney clearly establish that “outdoor
products” are wearing apparel and gear, including packs,
Ser No. 76570321
14
bags, and accessories therefor, that are worn and used by
persons engaged in outdoor activities. Further, and
contrary to applicant’s assertions, none of the materials
made of record by the examining attorney appears to point
to applicant, or any other entity, as a single source of
the “outdoor products” discussed therein. Indeed, many of
the articles and advertisements make reference to one or
more trade names or trademarks as source indicators for
various products. However, in none of the articles and
advertisements does the term “outdoor products” appear in
such a way as to suggest misuse either of applicant’s, or
any other party’s, proposed mark. As such, this is not a
case in which the record contains a mix of trademark and
generic uses of a proposed mark. Cf. In re Merrill Lynch,
Pierce, Fenner and Smith Inc., supra.
In addition, applicant has failed to introduce
evidence sufficient to rebut the examining attorney’s
evidence of genericness. Instead, applicant merely relies
upon the asserted dates of use of its proposed mark since
September 1974 and ownership of its prior registrations.
As such, the evidence submitted by applicant in this case
is insufficient to rebut the examining attorney’s strong
prima facie case of genericness. Cf. In re American
Online, Inc., 77 USPQ2d 1618 (TTAB 2006). Accordingly, the
Ser No. 76570321
15
record is sufficient to establish that the relevant public
would find OUTDOOR PRODUCTS a generic term denoting
applicant’s recited goods that are worn and used by persons
engaged in outdoor activities.
Nor are we persuaded that the examining attorney’s
present refusal to register constitutes an impermissible
collateral attack on applicant’s prior, incontestable,
Registration No. 1472288. We note initially that even if
incontestability could limit an examining attorney's
ability to refuse registration, it would not preclude a
genericness refusal, which is always available as a ground
for cancellation of an incontestable registration. Section
14(3) of the Act specifically permits a challenge to such a
mark based on genericness. See 15 U.S.C. §1064(3).
Further, and as noted above, the mark in Registration No.
1472288 differs from the proposed mark, OUTDOOR PRODUCTS,
in the involved application in that applicant’s prior
registered mark appears in stylized form, incorporating a
design as part of the letter “O” and an oval carrier. In
addition, the involved application recites goods that are
not included among the goods identified in applicant’s
prior, incontestable, registration. It is settled that a
“registered mark is incontestable only in the form
registered and for the goods or services claimed.” See In
Ser No. 76570321
16
re Save Venice New York Inc., 259 F.3d 1346, 59 USPQ2d
1779, 1782 (Fed. Cir. 2001), quoting In re Merrill Lynch,
Pierce, Fenner and Smith Inc., supra. “A registered mark
on goods other than those previously registered carries no
presumption of distinctiveness.” Id., quoting In re Loew’s
Theaters, Inc., 769 F.2d 764, 226 USPQ 865, 869 (Fed. Cir.
1985). It is further settled that “ownership of an
incontestable registration does not give the applicant a
right to register the same or similar mark for different
goods or services, even if they are closely related to the
goods or services set forth in the incontestable
registration.” See In re Best Software, 63 USPQ2d 1109,
1113 (TTAB 2002). See also In re BankAmerica Corp., 231
USPQ 873 (TTAB 1986). “[E]ach application for registration
of a mark for particular goods must be separately
evaluated. Nothing in the statute provides a right ipso
facto to register a mark for additional goods when items
are added to a company's line or substituted for other
goods covered by a registration. Nor do the PTO rules
afford any greater rights.” See In re Loew’s Theaters,
Inc., supra.
In this case, the proposed mark, OUTDOOR PRODUCTS,
differs from the mark in applicant’s incontestable
registration and in addition, identifies a wider range of
Ser No. 76570321
17
goods in both International Classes 18 and 25. As such,
and in accordance with the above authorities, we find that
the examining attorney’s refusal to register the involved
proposed mark does not constitute a collateral attack on
applicant’s incontestable Registration No. 1472288.
Finally, applicant argues that the present refusal to
register is inconsistent with the Office’s treatment of its
above prior registration as well as its Registration No.
2949243. As we have previously stated,
the cases are legion holding that each
application for registration of a mark for
particular goods or services must be separately
evaluated…. Section 20 of the Trademark
Act…gives the Board authority and duty to decide
an appeal from an adverse final decision of the
Examining Attorney. This duty may not be
delegated by adoption of conclusions reached by
Examining Attorney’s on different records.
Suffice it to say that each case must be decided
on its own merits based on the evidence of
record. We obviously are not privy to the record
in the files of the registered marks and, in any
event, the issuance of a registration by an
Examining Attorney cannot control the result of
another case.

In re Sunmarks Inc., 32 USPQ2d 1470, 1472 (TTAB 1994). See
also In re Nett Designs Inc., 236 F.3d 1339, 57 USPQ2d
1564, 1566 (Fed. Cir. 2001). As discussed above, the mark
in applicant’s Registration No. 1472288 differs from the
proposed mark in this case, and identifies goods that only
partially overlap. The mark in applicant’s Registration
Ser No. 76570321
18
No. 2929243 also differs from the mark in the involved
application in that the registered mark appears in stylized
form and features a design that is absent from the standard
character mark at issue herein. Thus, the marks in both of
applicant’s prior registrations contain material not
present in the proposed mark at issue, and in one case
identifies a narrower scope of goods. Furthermore, neither
the examining attorney nor this Board is bound by the
decisions of prior examining attorneys, even in cases
involving related marks and/or goods. See Id. While
uniform treatment under the Trademark Act is highly
desirable, our task here is to determine, based upon the
record before us, whether applicant's mark is registrable.
Therefore, we conclude that the examining attorney has
met the substantial burden of establishing that OUTDOOR
PRODUCTS is incapable of identifying and distinguishing the
source of the identified goods. Specifically, the
examining attorney has made a strong showing – which
applicant has failed to rebut - that the proposed mark is
now generic.
In finding that the designation OUTDOOR PRODUCTS is
incapable of being a source identifier for applicant's
goods, we have considered, of course, all of the evidence
touching on the public perception of this designation,
Ser No. 76570321
19
including the evidence of acquired distinctiveness. As to
acquired distinctiveness, applicant has the burden to
establish a prima facie case of acquired distinctiveness.
See Yamaha International Corp. v. Hoshino Gakki Co., Ltd.,
840 F.2d 1572, 6 USPQ2d 1001, 1006 (Fed. Cir. 1988).
As indicated above, applicant relied upon its dates of
use of the mark since September 1974 and ownership of its
prior registrations, but submitted no additional evidence
of acquired distinctiveness. Applicant's long use suggests
that applicant has enjoyed a degree of business success.
Nonetheless, this evidence does not demonstrate that its
customers have come to view the designation OUTDOOR
PRODUCTS as applicant's source-identifying trademark. See
In re Bongrain International Corp., 894 F.2d 1316, 13
USPQ2d 1727 (Fed. Cir. 1990); and In re Recorded Books
Inc., 42 USPQ2d 1275 (TTAB 1997). The issue here is the
achievement of distinctiveness, and the evidence falls far
short of establishing this. Applicant's evidence is
outweighed by the Lexis/Nexis and Internet evidence showing
use of "outdoor products" as a generic term. To be clear
on this significant point, we emphasize that the record is
completely devoid of direct evidence that the relevant
classes of purchasers of applicant's goods view OUTDOOR
PRODUCTS as a distinctive source indicator therefor.
Ser No. 76570321
20
Accordingly, even if the designation OUTDOOR PRODUCTS
were found to be not generic, but merely descriptive, given
the highly descriptive nature of the designation OUTDOOR
PRODUCTS, we would need to see a great deal more evidence
(especially in the form of direct evidence from customers)
than that which applicant has submitted in order to find
that the designation has become distinctive of applicant's
goods. That is to say, the greater the degree of
descriptiveness, the greater the evidentiary burden on the
user to establish acquired distinctiveness. See Yamaha
Int'l. Corp. v. Hoshino Gakki Co., supra; and In re Merrill
Lynch, Pierce, Fenner & Smith, Inc., supra. See also:
Restatement (Third) of Unfair Competition (1993), Section
13, comment e:
The sufficiency of the evidence offered to prove
secondary meaning should be evaluated in light of
the nature of the designation. Highly
descriptive terms, for example, are less likely
to be perceived as trademarks and more likely to
be useful to competing sellers than are less
descriptive terms. More substantial evidence of
secondary meaning thus will ordinarily be
required to establish their distinctiveness.
Indeed, some designations may be incapable of
acquiring distinctiveness.

Applicant's contention that the evidence submitted by
the examining attorney consists of infringing and improper
uses of applicant's mark is not persuasive. As shown by
the record, many entities in the relevant industry use the
Ser No. 76570321
21
term "outdoor products" in a generic manner. The multiple
uses of the designation "outdoor products" show that the
designation does not point to applicant or any other single
entity.
In sum, the proposed mark is a common designation used
in the industry to identify products such as clothing and
gear used by persons engaged in outdoor activities. The
designation OUTDOOR PRODUCTS is generic and does not and
could not function as a trademark to distinguish
applicant's goods from those of others and serve as an
indication of origin. The designation sought to be
registered should not be subject to exclusive
appropriation, but rather should remain free for others in
the industry to use in connection with their clothing and
gear used for outdoor activities. See In re Boston Beer
Co. L.P., 198 F.3d 1370, 53 USPQ2d 1056 (Fed. Cir. 1999).
Decision: The refusal under Section 2(e)(1) of the
Act on the ground that the proposed mark is generic is
affirmed; and the refusal under Section 2(e)(1) of the Act
on the ground that the proposed mark is merely descriptive
and that applicant has made an insufficient showing that
the mark has acquired distinctiveness under Trademark Act
Section 2(f), likewise is affirmed.