Opposition to Trademark Split at the Seams
In Brief: How to fail to prove a trademark is generic.
Here’s What Happened: The Tailory, LLC filed an application to register the trademark “The Tailory” on the Supplemental Register.* SY Custom, Inc. filed an opposition claiming that the trademark was generic.
In ruling on the opposition, the TTAB engaged in a two-step inquiry to see if the mark was generic by determining: a) “the genus (category or class) of the services at issue”; and b) whether THE TAILORY is “understood by the relevant public primarily to refer to that genus of services.”
The first issue was easy. The genus or category of services was custom tailoring or dressmaking.
The second issue required a little more work.
The TTAB examined each category of SY Custom’s evidence that the word “tailory” was generic.
1. The dictionary definition. SY Custom submitted a dictionary definition showing that the word “tailory” is “the word or business of a tailor” and “clothing made by a tailor”. The TTAB found this to be strong evidence that the word was merely descriptive. But, the TTAB didn’t consider it controlling on the issue of genericness.
2. 32 testimony declarations. The TTAB was impressed with the quantity but not the quality of the declarations that SY Custom submitted to show that the public saw the word as generic. The declarations were “essentially identical and drafted by someone other than the witness, presumably [SY Custom’s] counsel.” The “cookie cutter” nature of the declarations was “inherently suspect.” The declarations were basically a form with blank spaces for the declarant to fill in. The TTAB found the declarations “unintelligible to one extent or another.” The declarations weren’t clear about important concepts such as how the term is used for a specific activity, what connection the declarant had to the use of the term, and whether anyone conducts business using the word “tailory”. Finally, the TTAB found that the declarants represented “a very small part of the relevant purchasing public.”
3. The Internet evidence. SY Custom submitted truncated results from Google searches for six terms including “tailory.” The TTAB stated such evidence “has little probative value, because it does not typically show how a term is used in connection with any particular genus.” SY Custom’s Internet evidence showed use of tailory but not how the term was used nor its context. Some of the Internet evidence even showed non-competing uses like for video games, food service, film and healthcare.
Weighing all the evidence, the TTAB found SY Custom failed to meet its burden of proof that the word “tailory” was generic when referring to tailoring or dressmaking.
WHY YOU SHOULD KNOW THIS: A word is generic when it is a common name for a product or service. Like “soap” for a brand of soap. Generic words can’t be registered as trademarks because that would foreclose the use of a common term. As SY Custom discovered, sometimes proving genericness can be very hard. Since the focus has to be on how consumers see the trademark, a carefully crafted survey might have helped. A blind survey conducted by a third party and then interpreted by an expert would have avoided the inherent dubiousness of the individual declarations. Trade journals, newspapers and other credible sources can show that everyone accepts the word is the same as the “thing”.
This post is in honor of my parents, Abe and Guta Berneman, the finest tailors I’ve ever known.
*The Supplemental Register permits the registration of descriptive trademarks that might acquire secondary meaning if they are used long enough.