Saturday, July 28, 2012

Adding "the" and "company" makes generic term protectable, court rules

Katiroll Company Inc. v. Kati Roll And Platters Inc., No. 10-3620 (D.N.J. July 26, 2012)
HT Eric Goldman
Skipping everything but the weird part: kati roll is, the parties apparently agreed for purposes of this motion, the generic term for a type of common Indian street food.  Nonetheless, the plaintiff has a registration for The Kati Roll Company, with a translation statement “The foreign wording in the mark translates into English as ‘skewer’” and a claim of acquired distinctiveness only in “Kati Roll.”  (Given that you can’t actually prove fraud any more without someone who says ‘I knew I was lying to the PTO,’ this is probably not a fraud claim, but I’d at least try for cancellation on the defendants’ side.)
The court granted partial summary judgment to the plaintiff on defendants’ genericness challenge, starting with the proposition that the registration accorded a strong presumption of validity/non-genericness, and that the defendants’ arguments went to infringement instead.
The court thought that the argument that “kati roll” was generic didn’t deal with the “nuances” of registration.  Names including generic terms can be registered.  Defendants mainly argued that “kati roll” was generic for a type of food, but the court found this argument legally flawed.  First, the plaintiff’s mark was for restaurant services, not for food.  Second, the mark as a whole was not “Kati Roll” but “The Kati Roll Company,” which as a whole functioned to identify a particular source of services to consumers, and thus had secondary meaning.  (Note that secondary meaning would be irrelevant were the term generic.)  The PTO necessarily found that there was secondary meaning in registering the mark (though the disclaimer statement indicates that plaintiff only claimed distinctiveness in “Kati Roll,” not the mark as a whole), and defendants didn’t present “conflicting evidence that is relevant to this determination” (presumably, they didn’t present evidence on the whole name).  “The fact that consumers may understand a kati roll to be a generic type of food is not relevant to the validity of the mark itself.”
Comment: This case doesn’t necessarily seem to have been well argued, or properly focused on genericity.  Perhaps the unfamiliarity of the term was a distractor; it should have been clear that “Burrito Company” is generic for a company that sells burritos.  In general, while you can add terms to a generic word to create what is, in toto, a protectable mark (Spirit Airlines or even American Airlines), the addition of a generic word for a business like “Company” or “Inc.” can’t make a generic term into a mark, see, e.g., In re Wm. B. Coleman Co., Inc, 93 U.S.P.Q.2d 2019, 2010 WL 766487 (T.T.A.B. 2010) (“Electric Candle” was a “unitary generic term”; the generic designation “company” added no trademark significance); In re Cell Therapeutics, Inc., 67 U.S.P.Q.2d 1795, 2003 WL 21979838 (T.T.A.B. 2003) (“Cell Therapeutics, Inc.” is a generic name for biochemical preparations, and “Inc.” was no help); Welding Services, Inc. v. Forman, 509 F.3d 1351, n.4, 85 U.S.P.Q.2d 1233 (11th Cir. 2007) (adding “Inc.” to “Welding Services” for servicing welding equipment didn’t turn a generic name into a protectable trademark).  Here’s McCarthy §12:39 (footnotes omitted):
Tacking a company organizational designation such as “Company,” or “Inc.” or “Partners” cannot transform a generic name into a protectable trademark. Such company designations or their abbreviations are themselves generic and have no trademark significance. Thus, one cannot append a generic company designation and magically transform a generic name for a product or service into a trademark, thereby giving a right to exclude others. Such composites cannot be trademarks. For example: “Color Television, Inc.”; “Laptop Computers, Ltd.”; or “Restaurant Food Services Company.” Thus, the Trademark Board remarked that: “[T]he term ‘company’ is simply a designation for a type of entity without source-identifying capability.”
Among other things, a contrary rule would put too much weight on the infringement side, with Joe’s Burrito Company having to defend itself against the claims of the Burrito Company even though it’s the “Joe’s” that’s doing all the distinguishing work there.  Indeed, that’s clearly the way this case is going.  Nor is the product/service distinction sensible in the context of a term that merely indicates that the claimant is a business entity: a company that supplies food X is sensibly called a food X company.  (Given the definition of “kati roll” provided above, it seems that the PTO didn’t follow its ordinary rule here, for whatever reason.)
The court might have been thinking of the general rule that a composite mark including the name of a generic type of food can be a protectable mark—e.g., Le Croissant Shop is a descriptive term for a restaurant that sells croissants, In re France Croissant, Ltd., 1 U.S.P.Q.2d 1238 (T.T.A.B. 1986)—but I don’t think that works with “Company,” given the authorities above.
Nor is the product/service distinction persuasive.  Cf. In re Pencils, Inc., 9 U.S.P.Q.2d 1410 (T.T.A.B. 1988) (“pencils” is descriptive of an office supply store because it’s a generic term for a subset of products sold there, whereas if the word named goods that were the primary product sold, then it would be a generic name of retail services, such as “lingerie” for lingerie retail store services); 2 McCarthy § 12:23 (“A generic name of goods may also be a generic name of the service of selling or designing those goods.”) (citing TTAB cases involving “Russianart” for fine art dealership services, “Candy Bouquet” for selling a floral-type gift arrangement of candies, “Lens” for retail Internet stores services selling contact eyewear, “Log Cabin Homes” for log cabin home design services, and “tires tires tires” for retail tire sales services).
Even after this decision, the subsequent infringement inquiry should properly focus on the weakness of the plaintiff’s mark and the lack of similarity between the parties’ marks: two marks that overlap only in their generic portions are unlikely to cause confusion.

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