TTAB saves trademark from brink of public domain

United States of America

The lexicon of the digital age evolves quickly as new technology is identified and adopted by the masses. Occasionally, due to mismanagement, the trademarks for new technology devolve into merely generic terms and slip into the public domain (eg, ASPIRIN, ESCALATOR and ZIPPER). In In re Trek 2000 International Ltd (Serial No 77099785, November 30 2010), the Trademark Trial and Appeal Board (TTAB) has saved THUMBDRIVE from the abyss, holding that anecdotal evidence is insufficient to support genericness rejection.

Trek 2000 International Ltd applied to register THUMBDRIVE for use on USB drives, also known as flash drives. The examining attorney initially dismissed the application as merely descriptive, but after Trek submitted additional evidence of acquired distinctiveness, its application was published for opposition.

After the opposition period, the examining attorney requested and was granted jurisdiction over the application once more. The examining attorney then issued a final refusal of the application under §2(e)(1) of the Lanham Act as generic. Trek petitioned the commissioner to review the restoration of jurisdiction, but its petition was denied. Trek appealed to the TTAB, challenging the restoration of jurisdiction and the genericness refusal.

On appeal, the TTAB refused to reconsider Trek’s argument that the commissioner’s decision to restore jurisdiction to the examining attorney was procedurally improper. The TTAB opined that:

it is well established that ‘questions involving the applicability of the 'clear error' standard [(which includes whether to restore jurisdiction to an examining attorney)] are the subject matter of a petition to the director, and are not proper for consideration by way of an appeal to the board.’” (Trek at p 4, quoting In re Jump Designs LLC (80 USPQ2d 1370, 1373 (TTAB 2006))).

However, the TTAB took a more liberal approach to the genericness issue. A refusal based on genericness requires the examining attorney to prove by clear evidence that “the relevant public primarily uses or understands the term… to refer to the category or class of goods or services in question” (Trek at pp 5 and 6). The TTAB concluded that the examining attorney had failed to meet this burden. Specifically, the TTAB rejected dictionary definitions for “‘flash drive’ where ‘thumb drive’ is merely listed as a synonym” as “weak evidence of genericness” (Trek at p 19).

Ultimately, the TTAB opined that the “purpose behind the prohibition of registrations of generic terms springs from a statute that regulates commerce - not the English language”. The evidence in Trek simply failed to demonstrate a competitive need for THUMBDRIVE. Further, the evidence of generic use was “‘offset by applicant’s evidence that shows not only a significant amount of proper trademark use, but also trademark recognition’ by third parties” - thus failing to satisfy the clear evidence standard (Trek at p 20, quoting In re America Online Inc (77 USPQ2d 1618, 1623 (2006))).

In short, Trek reminds applicants to mind the use of their trademarks, especially online, but also assures them that some online misuse of their trademark will not necessarily doom the mark to the abyss.

James L Bikoff, David K Heasley and Michael T Delaney, Silverberg Goldman & Bikoff LLP, Washington DC

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