WIXT TV, Inc.

Trademark Trial and Appeal Board

Apr 3, 2001

No. 75370316 (T.T.A.B. Apr. 3, 2001)

5/22/01
Paper No. 17
UNITED STATE
Tradema
I
Se
Reque
Martin G. Linihan of Ho
LLP for WIXT TV, Inc.
Amos T. Matthews, Trade
(David Shallant, Managi
Before Bucher, Holtzman
Judges.
Opinion by Bucher, Admi
WIXT TV, Inc. has
Board’s April 3, 2001 d
Examining Attorney’s re
Supplemental Register f
Registration was refuse
when used in connection
generic and, thus, inca
television program serv
Applicant maintain
the test for genericnesTHIS DISPOSITION IS NOT
CITABLE AS PRECEDENT
OF THE TTAB
DEB
S PATENT AND TRADEMARK OFFICE
________
rk Trial and Appeal Board
________
n re WIXT TV, Inc.
________
rial No. 75/370,316
_______
st For Reconsideration
_______
dgson Russ Andrews Woods & Goodyear,
mark Examining Attorney, Law Office 108
ng Attorney).
_______
and Rogers, Administrative Trademark
nistrative Trademark Judge:
requested reconsideration of the
ecision affirming the Trademark
fusal to register NEWS CHANNEL 9 on the
or “television program services.”
d on the ground that NEWS CHANNEL 9,
with the identified services is
pable of distinguishing applicant’s
ices from like services of others.
s that in applying the first prong of
s as outlined in H. Marvin Ginn
Serial No. 75/370,316
2
Corporation v. International Association of Fire Chiefs, Inc.,
782 F.2d 987, 990, 228 USPQ 528, 530 (Fed. Cir. 1986), “the
Board [in holding that NEWS CHANNEL 9 is generic] incorrectly
found the genus of services to be ‘television news programs
accessible via channel 9 on one’s local television dial’.” In
particular, applicant argues as follows:
It is well established that the essence of the
inquiry on the issue of genericness is whether
the term or phrase is the name of the product
or service itself. 2 J. McCarthy, McCarthy on
Trademarks and Unfair Competition, Section 12:1
at page 12-3 (4th ed. 1998). Here, the name of
the service is television program services, the
identification of services in the instant
application, which was approved by the
Trademark Examining Attorney. Thus,
NewsChannel 9 is not generic because the
service is not NewsChannel 9 but instead
television program services.
Professor McCarthy's discussion of Fletcher's
"Deep Bowl Spoon" example is especially helpful
on this issue, id. at page 12-51:
Anthony Fletcher has illustrated the
descriptive-generic distinction by the "Deep
Bowl Spoon" example. "Deep Bowl" is
descriptive of a type of spoon deep in the
bowl portion. It is not "generic", since the
implement is not a "Deep Bowl," but a "spoon."
"Spoon" is the generic name of the eating
tool. But for another article - a deep bowl -
its name is "deep bowl." And, to add to his
example, "Deep Bowl" as a trademark for canned
soup would probably be only suggestive of
quantity.
Applying this example to the situation at hand,
NewsChannel 9 is not generic because the
services are television program services.
Serial No. 75/370,316
3
Applicant respectfully disagrees with the
Board's conclusion at the top of page 7 of the
Decision that other television stations could
not convey service attributes without using the
words News Channel 9. Several alternatives
immediately come to mind, such as News At 9,
Channel 9 News, News From 9, News From Channel
9, News By 9, News By Channel 9, to mention a
few. Thus, various alternative names are
available to others to identify television
programming services having the referenced
attributes. The existence of such alternatives
should be convincing evidence that News Channel
9 is not generic.
We have carefully considered the points raised by
applicant, but are of the view that our initial decision was
correct.
In our earlier opinion, in reviewing the evidence in the
file, we too cited to Professor McCarthy, who in turn had
cited to Judge Learned Hand, who said that the question of
genericness should be “what does the relevant public think the
term connotes?” 2 J. McCarthy, McCarthy on Trademarks and
Unfair Competition, §12:4 at page 12-9 (4th ed. 1999). In
answering Judge Learned Hand’s query on the facts of this
case, we found that:
… the record supports a finding that television
viewers know quite well – that each local cable
system, metropolitan area or other distinct
geographical region has its own “Channel 9,”
and that these channels frequently, and
sometimes exclusively, feature news programs…
… The record shows that as members of the
public travel from one part of the country to
another, they would view any promotion of NEWS
Serial No. 75/370,316
4
CHANNEL 9 as indicating only the opportunity to
obtain television news programs on channel 9,
whether it be through a local television cable
system or from a local VHF broadcast station.
We reject applicant’s position that in cases such as the
present one, the Board must accept the wording of the recital
of services as the genus. The wording of the recital of
services in a trademark application can certainly be broader
than the genus of applicant’s relevant services, so long as
the named genus is accurate and fits within the recited
services. As to applicant’s actual services, applicant admits
that it broadcasts on channel 9 and that some of its content
is news. The fact that its recital of services encompasses a
broader range of services than the subset found to be the
appropriate genus does not mean that the purported mark is not
generic for that subset of services. Otherwise, we would have
the ludicrous result that any applicant alleging that a
generic term is a trademark or service mark could obtain a
registration so long as it crafted an identification of goods
or recital of services broader than the genus identified by
the alleged mark.
In a parallel situation, involving goods rather than
services, the Board expressly faced this very question:
The broad general category of goods involved
here is sprinklers for fire protection.
However, a product may be in more than one
category, and here, applicant’s goods also fall
Serial No. 75/370,316
5
within the narrower category of sprinklers for
fire protection of attics. We find that the
term “attic” would be understood by the
relevant public as referring to that category
of goods. Remington Products Inc., v. North
American Philips Corp., 892 F.2d 1576, 13
USPQ2d 1444, 1449 (Fed. Cir. 1990).
In re Central Sprinkler Co., 49 USPQ2d 1194, 1197 (TTAB 1998).
Applicant’s listing of other alternatives that
competitors could use (e.g., News At 9, Channel 9 News, News
From 9, News From Channel 9, News By 9, News By Channel 9,
etc.) does not warrant approval of applicant's application, as
a product or service may have more than one generic name. See
In re Recorded Books Inc., 42 USPQ2d 1275, 1281-82 (TTAB
1997), citing In re Sun Oil Company, 426 F.2d 401, 165 USPQ
718, 719 (CCPA 1970) (J. Rich, concurring). As Judge Rich
instructed in his concurring opinion, “[a]ll generic names for
a product belong in the public domain.” Id. (emphasis in
original). 2 J. McCarthy, McCarthy on Trademarks and Unfair
Competition, §12:10 (4th ed. 1999).
For the reasons discussed in our decision as well as
those reviewed above, we adhere to our finding that NEWS
CHANNEL 9 is generic of applicant’s identified services.
Decision: The request for reconsideration is denied.