The Outdoor Recreation Group

THIS OPINION IS CITABLE

AS PRECEDENT OF

THE T.T.A.B.

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

Ser No. 76570321

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.

2

Ser No. 76570321

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

3

Ser No. 76570321

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.

4

Ser No. 76570321

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.

5

Ser No. 76570321

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

6

Ser No. 76570321

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)

7

Ser No. 76570321

…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.

8

Ser No. 76570321

(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)

9

Ser No. 76570321

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,

10

Ser No. 76570321

‘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.

11

Ser No. 76570321

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

12

Ser No. 76570321

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,

13

Ser No. 76570321

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

14

Ser No. 76570321

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

15

Ser No. 76570321

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

16

Ser No. 76570321

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

17

Ser No. 76570321

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,

18

Ser No. 76570321

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.

19

Ser No. 76570321

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

20

Ser No. 76570321

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.

21