The Eastern District of Virginia was recently asked to review whether the Patent Trademark Office (“PTO”) and the Trademark Trial and Appeal Board (“TTAB”) properly refused to grant a trademark application based on a term’s “generic usage.” When a party seeks review of a TTAB decision in federal district court, rather than appealing to the Federal Circuit, the parties are allowed to introduce new evidence not considered by the TTAB.
Plaintiff, owner of an organic fertilizer company, filed a trademark application for the term “PROBIOTIC” in connection with fertilizer. The PTO refused to register the term on two grounds, stating that (1) the term “PROBOTIC” is generic in connection with fertilizer and (2) at most, “PROBIOTIC” is merely descriptive for fertilizer and has not acquired secondary meaning. The TTAB affirmed the PTO’s refusal to register the term PROBIOTIC as a trademark and concluded that the relevant public, when it considers PROBIOTIC in connection to fertilizer, perceives the term to be generic for fertilizer. The Plaintiff sought review of TTAB’s decision in the Alexandria division of the Eastern District of Virginia.
“A generic name of a product can never function as a trademark” and courts will consider a variety of factors in evaluating a term’s status. McCarthy on Trademark, § 12.1. A generic name “merely employs the common name of a product or service or refers to the genus of which the particular product is a species.” Retail Services, Inc. v. Freebies Publishing, 364 F.3d 535, 538 (4th Cir. 2004). Thus, according to the district court, “if the term PROBIOTIC answers the question ‘what are you,’ it is a generic term because it tells the buyer what the product is, not the source of the product.” Id. at 10.
Evidence relevant to the issue of genericness includes competitors’ use of the term, plaintiff’s own use of the term, dictionary definitions, media usage, testimony of persons in the trade and surveys of the relevant consumers to show the state of mind of such consumer when they consider the term. In the end, Plaintiff’s additional evidence of genericness before the district court consisted of only the testimony of three retailers stating that they were unaware of any other producers of the organic fertilizers who also used the term “probiotic” to describe their fertilizer and soil products. The district court did not find this evidence persuasive and ultimately determined that the term PROBIOTIC was generic in connection with fertilizers because the relevant public uses the term to refer to fertilizers generally and the term does nothing more than identify a distinctive characteristic of fertilizers. Shammas v. Rea (Ellis), No. 1:13cv1462, Memorandum Opinion (EDVA Oct. 15, 2013)
This case provides a good overview of the standards considered by the TTAB and courts when assessing whether a term is “generic.” – Lauren Tallent Rogers