An Austin Trademark Attorney’s Review of IN RE HEALTH SCIENCE FUNDING

Adding “company,” “.com,” or “.org” will not make a trademark distinct.

In trademark law there are different categories of distinctiveness. The categories include: (1) arbitrary or fanciful, (2) suggestive, (3) descriptive, or (4) generic. An arbitrary or fanciful mark is the strongest type of protection a mark can receive, and the mark bears no logical relationship to the underlying product. On the other side of the coin, is a generic mark that describes the general category to which the underlying product belongs. Generic terms are not protected by trademark law because they are too useful in their category for identifying products. For example, if one was to obtain a trademark on the term “computer,” then others wouldn’t be able to describe their computer products without using the word computer. This would turn advertising into a game of charades.

In this case, Health Science Funding appealed a final decision of the United States Trademark Trial Board of appeals for refusing to register the marks “PRASTERONE.ORG” and “THE PRASTERONE COMPANY” because the marks are generic. During examination, the examining attorney at the USPTO rejected the mark for being generic, because the term “PRASTERONE” is a genus of the services at issues. The Board reasoned that because prasterone is generic for the subject matter of applicant’s services, it is likewise generic for the services themselves, and the terms “.org” and “company” themselves are generic without source-identifying significance.

On appeal, the Federal Circuit stated that determining a mark’s genericness is a two-step inquiry, including 1) determining the genus of goods or services at issue, 2) is the term sought to be registered or retained on the register understood by the relevant public primarily to refer to that genus of goods or services. In this case, the court held that the sercices sought registeration were regarding prasterone, and the term prasterone would be generic for that genus of trademark classifications.

Further, the Federal Circuit differentiated this case for In re Steelbuilding.com, where “Steelbuilding.com” was allowable as a trademark. The Federal court distinguished this case from   In re Steelbuilding.com on several reasoning including, the ambiguities and multiple meanings in the mark “Steelbuilding.com.” The court said that the present analysis is similar to that in IN re Hotels.com, where the board found HOTELS.com to be a generic term for hotel information and reservations, and that the “.com” does not convert the generic term “hotels” into a brand name.

Similarly, in this case the Federal Circuit agreed with the board that “.org” or “company” will not change the generic nature of a term.

AUSTIN TRADEMARK ATTORNEY’S TAKE-A-WAYS

1). If you are going to try to trademark a generic term, make sure that the mark has acquired a secondary meaning, that the consuming public primarily associates the mark with a particular producer, rather than thee product itself. Although, even with a secondary meaning being granted, it will be hard to trademark a very generic term.

2) Generic terms may be patentable, but just not in the class which the term is generic. For example, “Apple” would not have been able to obtain a trademark in a classification associated with food, but it could with a classification associated with computers.

3) Adding in a top level domain to a mark itself will not make a generic mark eligible for registration.

4) Although you cannot obtain a word mark for a generic term, you may still be able to obtain a trademark on the logo using the generic term.

 

By | 2013-09-16T16:15:08+00:00 September 16th, 2013|Trademark Basics|Comments Off on An Austin Trademark Attorney’s Review of IN RE HEALTH SCIENCE FUNDING