The Piano Technicians Guild, Inc.

Trademark Trial and Appeal Board

Mar 19, 2004

No. 75675996 (T.T.A.B. Mar. 19, 2004)

Mailed:
March 19, 2004
Paper No. 20
Bottorff
UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re The Piano Technicians Guild, Inc.
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Serial No. 75675996
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Dianne M. Smith-Misemer of Spencer Fane Britt & Browne LLP
for The Piano Technicians Guild, Inc.
Dominick J. Salemi, Trademark Examining Attorney, Law
Office 106 (Mary Sparrow, Managing Attorney).
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Before Bottorff, Holtzman and Rogers, Administrative
Trademark Judges.
Opinion by Bottorff, Administrative Trademark Judge:
Applicant seeks registration on the Supplemental
Register1 of the mark REGISTERED PIANO TECHNICIAN as a
1 Applicant originally sought registration of the mark on the
Principal Register. Applicant amended to the Supplemental
Register after the Trademark Examining Attorney made final his
Section 2(e)(1) mere descriptiveness refusal to register the mark
on the Principal Register. See Trademark Act Section 23, 15
U.S.C. §1091; Trademark Rule 2.75, 37 C.F.R. §2.75.
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT
OF THE TTAB
Ser. No. 75675996
2
certification mark used in connection with a “certification
program for identifying persons with experience, skill, and
knowledge in the field of piano tuning, repair, and
maintenance,” in International Class B.2 See Trademark Act
Sections 1(a) and 4, 15 U.S.C. §§1051(a) and 1054.
The Trademark Examining Attorney has refused
registration of the mark on the Supplemental Register, on
the ground that it is generic for the recited certification
services and therefore is incapable of distinguishing
applicant’s certification services from those of others.
Trademark Act Section 23. Applicant has appealed that
final refusal. Applicant and the Trademark Examining
Attorney have filed main appeal briefs. Applicant did not
file a reply brief, and did not request an oral hearing.
We reverse the refusal to register.
Initially, we reject applicant’s contention that
genericness is not a proper basis for refusing registration
of a certification mark on the Supplemental Register. It
is settled that “[i]n view of the specific language in
Section 4 [of the Trademark Act] that certification marks
are subject to the same provisions as trademarks and
2 Serial No. 75675996, filed April 6, 1999. In the application,
July 22, 1992 is alleged as the date of first use of the mark
anywhere by an authorized person and as the date of first use of
the mark in commerce by an authorized person.
Ser. No. 75675996
3
service marks, the prohibitions of Section 2 are equally
applicable when considering registrability of certification
marks.” In re Professional Photographers of Ohio, Inc.,
149 USPQ 857, 859 (TTAB 1966); TMEP §1306.06(a). See also
In re National Association of Legal Secretaries, 221 USPQ
50 (TTAB 1983); cf. In re International Association for
Enterostomal Therapy, Inc., 218 USPQ 343 (TTAB 1983).
“A generic term is the common descriptive name of a
class of goods or services…” H. Marvin Ginn Corp. v.
International Association of Fire Chiefs, Inc., 782 F.2d
987, 989, 228 USPQ 528, 530 (Fed. Cir. 1986).
The critical issue in genericness cases is
whether members of the relevant public
primarily use or understand the term sought to
be protected to refer to the genus of goods or
services in question. Determining whether a
mark 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 or retained on the register
understood by the relevant public primarily to
refer to that genus of goods or services?
Id. (Citations omitted.) The burden of proving
genericness falls on the Trademark Examining Attorney, who
must present “clear evidence of generic use.” See In re
Merrill Lynch, Pierce, Fenner, and Smith, Inc., 828 F.2d
1567, 1571, 4 USPQ2d 1141, 1143 (Fed. Cir. 1987).
Ser. No. 75675996
4
We find that the genus of services at issue in this
case is the one identified in the application, i.e.,
“certification program for identifying persons with
experience, skill, and knowledge in the field of piano
tuning, repair, and maintenance.” Thus, the issue to be
determined is whether the matter sought to be registered,
REGISTERED PIANO TECHNICIAN, is understood by the relevant
public to refer to this genus of services.
The Trademark Examining Attorney has presented
dictionary evidence in support of his argument that the
word REGISTERED is generic for certification services, and
has submitted NEXIS article excerpts and has cited to
applicant’s own literature to support his argument that the
words PIANO TECHNICIAN generically refer to the class of
persons applicant certifies. However, where the matter
sought to be registered consists of a phrase (rather than a
compound word), as is the case here, genericness will be
found only where there is evidence of generic use of the
phrase as a whole. In re American Fertility Society, 188
F.3d 1341, 51 USPQ2d 1832 (Fed. Cir. 1999). Evidence that
the components of the phrase, considered separately, are
generic does not suffice, nor does it suffice that the
phrase might be considered an apt name for the services.
Id., 51 USPQ2d at 1836.
Ser. No. 75675996
5
The phrase REGISTERED PIANO TECHNICIAN appears in the
record in only one of the eleven NEXIS article excerpts
submitted by the Trademark Examining Attorney: “…Finding a
piano from that era isn’t easy, but pianos often are handed
down from generation to generation. A registered piano
technician in Greensboro, Evelyn Smith, sees – and hears -
her share.” (News & Record (Greensboro, NC), June 23,
2000.) Applicant, however, has presented evidence
establishing that the person to whom this article refers in
fact has been certified by applicant and thus is entitled
to use the designation REGISTERED PIANO TECHNICIAN in
rendering her services. (Applicant’s October 12, 2001
response, Exhibit 1.) In these circumstances, we cannot
conclude that this single newspaper article reference
suffices to carry the Trademark Examining Attorney’s burden
of establishing with “clear evidence” that REGISTERED PIANO
TECHNICIAN is generic.
In summary, we find that applicant’s mark REGISTERED
PIANO TECHNICIAN has not been shown to be generic for
applicant’s certification services, and that it thus is
registrable on the Supplemental Register.
Decision: The refusal to register is reversed. The
application shall proceed to registration on the
Supplemental Register.