Terminology

As specifically amended by the Trademark Law

Revision Act of 1988, §14 of the Trademark Act provides for the cancellation

of a registration of a mark at any time if the mark "becomes the generic

name for the goods or services, or a portion thereof, for which it is

registered . . . ."

15

U.S.C. §1064(3)

.  Previously, that provision had

pertained to a mark that "becomes the common descriptive name of an article

or substance . . . ." Cases previously distinguished between generic names

and "apt or common descriptive names," which referred to matter that, while

not characterized as "generic," had become so associated with the product

that it was recognized in the applicable trade as another name for the

product, serving as a term of art for all goods of that description offered

by different manufacturers rather than identifying the goods of any one

producer.

See Questor Corp. v. Dan

Robbins & Assocs., Inc.,

199 USPQ

358, 364 (TTAB1978) ,

aff’d

, 599 F.2d 1009, 202 USPQ 100

(C.C.P.A. 1979). In addition, the Trademark Law Revision Act of 1988 amended

§15 of the Trademark Act to adopt the term "generic name" to refer to

generic designations.

15

U.S.C. §1065(4)

.  In view of the amendment of §§14

and 15, a distinction between "generic" names and "apt or common

descriptive" names is inappropriate. Rather, the terminology of the Act must

be consistently used, e.g., in refusals to register matter that is a generic

name for the goods or services, or a portion thereof.

See

In re K-T Zoe Furniture Inc.

, 16 F.3d 390, 29 USPQ2d

1787 (Fed. Cir. 1994).

Similarly, cases have distinguished between

"generic" terms and terms that were deemed "so highly descriptive as to be

incapable of exclusive appropriation as a trademark."

See In re Harcourt Brace

Jovanovich, Inc.,

222 USPQ

820 (TTAB1984) (LAW & BUSINESS held so highly descriptive as to be

incapable of distinguishing applicant’s services of arranging and conducting

seminars in the field of business law);

In re Indus. Rels. Couns.,

Inc

ween

"generic" terms and terms that were deemed "so highly descriptive as to be

incapable of exclusive appropriation as a trademark."

See In re Harcourt Brace

Jovanovich, Inc.,

222 USPQ

820 (TTAB1984) (LAW & BUSINESS held so highly descriptive as to be

incapable of distinguishing applicant’s services of arranging and conducting

seminars in the field of business law);

In re Indus. Rels. Couns.,

Inc.

, 224 USPQ 309 (TTAB 1984) (INDUSTRIAL RELATIONS

COUNSELORS, INC. held an apt name or so highly descriptive of educational

services in the industrial relations field that it is incapable of exclusive

appropriation and registration, notwithstanding

de facto

source recognition capacity). Regarding the terminology used in refusing

registration of such matter, the Trademark Trial and Appeal Board noted as

follows in

In re Women’s Publishing Co.

, 23 USPQ2d 1876,

1877 n.2 (TTAB 1992):

The Examining Attorney’s refusal that

applicant’s mark is "so highly descriptive that it is incapable of

acting as a trademark" is not technically a statutory ground of refusal.

Where an applicant seeks registration on the Principal Register, the

Examining Attorney may refuse registration . . . on the basis that the

mark sought to be registered is generic.

In essence, the Board was merely emphasizing

the need to use precise statutory language in stating grounds for refusal.

While the decision does not explicitly bar the use of the terminology "so

highly descriptive that it is incapable of acting as a trademark" under all

circumstances, the case illustrates that the use of this terminology may

lead to confusion and should be avoided. It is particularly important in

this context to use the precise statutory language to avoid doctrinal

confusion.

See generally

Linda McLeod,

The

Status of so Highly Descriptive & Acquired

Distinctiveness

, 82 Trademark Rep. 607 (1992). Therefore,

examining attorneys must not state that a mark is "so highly descriptive

that it is incapable of acting as a trademark" in issuing refusals

d be avoided. It is particularly important in

this context to use the precise statutory language to avoid doctrinal

confusion.

See generally

Linda McLeod,

The

Status of so Highly Descriptive & Acquired

Distinctiveness

, 82 Trademark Rep. 607 (1992). Therefore,

examining attorneys must not state that a mark is "so highly descriptive

that it is incapable of acting as a trademark" in issuing refusals. Rather,

in view of the amendments of the Trademark Act noted above, the terminology

"generic name for the goods or services" must be used in appropriate

refusals, and use of the terminology "so highly descriptive" must be

discontinued when referring to incapable matter.

This does not mean that designations that

might formerly have been categorized as "so highly descriptive" should not

be regarded as incapable. The Court of Appeals for the Federal Circuit has

specifically stated that "a phrase or slogan can be so highly laudatory and

descriptive as to be incapable of acquiring distinctiveness as a trademark."

In re Boston Beer Co. L.P.

, 198 F.3d 1370, 1373, 53

USPQ2d 1056, 1058 (Fed. Cir. 1999) (THE BEST BEER IN AMERICA for beer and

ale held to be "so highly laudatory and descriptive of the qualities of

[applicant’s] product that the slogan does not and could not function as a

trademark to distinguish Boston Beer’s goods and serve as an indication of

origin").

The Court of Appeals for the Federal Circuit

has also stated that "[t]he critical issue in genericness cases is whether

members of the relevant public primarily use or understand the term sought

to be registered to refer to the genus of goods or services in question."

H. Marvin Ginn Corp. v. Int'l Ass’n of Fire Chiefs,

Inc.

, 782 F.2d 987, 989–90, 228 USPQ 528, 530 (Fed. Cir.

1986). Also, note that it is entirely appropriate to consider whether a

particular designation is "highly descriptive" in evaluating registrability

under §2(f), or in similar circumstances

understand the term sought

to be registered to refer to the genus of goods or services in question."

H. Marvin Ginn Corp. v. Int'l Ass’n of Fire Chiefs,

Inc.

, 782 F.2d 987, 989–90, 228 USPQ 528, 530 (Fed. Cir.

1986). Also, note that it is entirely appropriate to consider whether a

particular designation is "highly descriptive" in evaluating registrability

under §2(f), or in similar circumstances.

The expression "generic name for the goods or

services" is not limited to noun forms but also includes "generic

adjectives," that is, adjectives that refer to a genus, species, category,

or class of goods or services.

See

,

e.g.

,

In re Serial Podcast, LLC,

126 USPQ2d 1061, 1067 (TTAB 2018) (holding SERIAL generic for an ongoing

audio program featuring investigative reporting, interviews, and documentary

storytelling);

In re Mecca Grade Growers, LLC

, 125 USPQ2d

1950, 1959-60 (TTAB 2018) (holding MECHANICALLY FLOOR-MALTED generic for

malt for brewing and distilling and processing of agricultural grain);

Sheetz of Del., Inc. v. Doctor’s Assocs.

Inc.

, 108 USPQ2d 1341 (TTAB2013) (holding FOOTLONG generic for sandwiches, excluding hot

dogs);

In re Reckitt & Colman,

N. Am. Inc.

, 18 USPQ2d

1389 (TTAB1991) (holding PERMA PRESS generic for soil and stain removers for

use on permanent press products). Similarly, evidence showing that a term in

singular form is generic typically will suffice to show that the plural also

is generic.

See

In re Cordua Rests., Inc.,

823 F.3d 594, 603, 118 USPQ2d 1632,

1637 (Fed. Cir.2016) ("While each trademark must always be evaluated individually,

pluralization commonly does not alter the meaning of a mark.");

In

re Hotels.com, L.P.

, 573 F.3d 1300, 91 USPQ2d 1532, 1535 (Fed.

Cir. 2009) (dictionary and other evidence of meaning of "hotel" sufficed to

show that the plural form in HOTELS.COM was generic for the information and

reservation services at issue).