Docket No. 2016-2345
NEWMAN, SCHALL, BRYSON
Nov. 27, 2017
Brief Summary: Board decision refusing to register mark based on genericness and no acquired distinctiveness affirmed.
Summary: MRC appealed TTAB denial of its applications to register the mark MAGNESITA as “generic” or “highly descriptive for Class 19 refractory products, and highly descriptive for Class 37 services” (“online information services for refractory products”) (“refractory products” are “non-metallic, extremely heat resistant substances used to, inter alia, patch, line, or repair high temperature apparatuses, such as furnaces, kilns and reactors”). The Examiner and the Board relied on the doctrine of foreign equivalents “to ascertain the genericness or descriptiveness of a foreign-word mark from a common language by translating the mark into English” (Palm Bay Imp., FC 2005) (the applicability of which was not challenged here). It refused “registration on grounds that ‘magnesite’ and ‘magenesia’ are components of refractory products and are thus merely descriptive of MRC’s goods and services.” MRC attempted to overcome the rejection by claiming “acquired distinctiveness under § 2(f) of the Lanham Act based on substantially exclusive and continuous use of the mark in commerce.” The FC panel reviewed the Board’s legal conclusions de novo and its factual findings (genericness and acquired distinctiveness) for substantial evidence (In re La. Fish Fry Prods., FC 2015). And the PTO must show genericness “based on clear evidence, and the trademark applicant has the burden of proving acquired distinctiveness” (In re Nordic Nats., FC 2014). The FC panel first explained that MRC’s argument regarding whether the DC properly applied the proper evidentiary burden based on B & B Hardware (US 2015 (DC “should give preclusive effect to [TTAB] decisions in inter parties proceedings if the elements of issue preclusion are met”)) were “inapplicable”. Regarding the genericness of the Class 19 products, the FC panel explained that “[a] mark is generic if the relevant public primarily uses or understands the mark to refer to the class or genus of products in question” (Park N’ Fly, US 1985; Nordic Nats., FC 2014; H. Marvin Ginn, FC 1986). It affirmed the Board decision since, e.g., there is “clear evidence…that the relevant public…would primarily understand magnesia and magenesite to refer to the genus of refractory products by referring to ket aspects of those products” (“MAGNESITA is generic for the genus of refractory products set forth in MRC’s application”) (In re Cordua Rests., FC 2016). Regarding any acquired distinctiveness of the Class 37 services, the FC panel explained that this required showing “that ‘the primary significance of the term in the minds of the consuming public is not the product but the producer’” (Kellogg, US 1938; Coach Servs., FC 2012; “highly descriptive” terms “face an elevated burden” (La. Fish Fry); Yamaha Int’l (FC 1988 (“applicant’s claim asserting a term has acquired distinctiveness acts as an admission that the term is merely descriptive”)). MRC’s proferred evidence of distinctiveness was gross sales and declarations showing first and substantially exclusive and continuous use of the term, but the FC panel affirmed the Board’s decision as supported by “ample evidence” (e.g., “MRC did not add any evidence…showing how the public perceives the term, or how the term is otherwise source-identifying.”)