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Hey, You, Get Off Of My Generic Term!

July 17, 2014

Blog

Hey, You, Get Off Of My Generic Term!

July 17, 2014

Back to Fish's Trademark and Copyright Blog

 

In a precedential decision, the Trademark Trial & Appeal Board earlier this month upheld a refusal to register the mark CLOUDTV, finding the mark to be generic for a long list of goods and services related to cloud-based video-on-demand, interactive television, streaming video software and services. In re ActiveVideo Networks, Inc., Serial No. 77967395.

Breaking the mark into its component parts, the applicant did not dispute that the term TV was generic in this context, but contended that CLOUD was at worst descriptive and had acquired secondary meaning, rendering the mark registrable. The applicant pointed to (among other things) a number of past registrations featuring the word CLOUD as evidence that the term was registrable.

The Board considered the mark both in its component terms and as a unitary whole. As to the component parts, the Board rejected the Applicant’s evidence of prior registrations, noting that each case must be determined on its own record and that the Board cannot be bound by the past decisions of individual examining attorneys. Moreover, the Board commented that such past registrations and uses do not have bearing on the meaning of the term at the time registration is sought. The significance of words evolves, and yesterday’s distinctive or descriptive word can become today’s generic word. The Board wrote:

“Not surprisingly, the quickness with which changing nomenclature is introduced into the marketplace by manufacturers and merchants, and then adopted by customers, is … brisk. Accordingly, the location of a new term on the spectrum of distinctiveness is anything but static. The USPTO has, and must have, the freedom, over a period of decades — or increasingly, just years — to consider such questions anew whenever the evidence compiled in a new, unique record reflects such dynamic changes.”

Here, the Examining Attorney had submitted ample dictionary and periodical evidence supporting the finding that CLOUD had become generic for “packet-switched computer networks that link distant servers to one’s TV, computer or other smart devices having screens.”

Turning to the combined phrase, the Board found that the combination of CLOUD and TV did not create any new non-generic significance – both terms retained their generic meanings. The conclusion that the combined term was generic was also supported by numerous instances of use of “cloud TV” in generic sense in periodicals and publications submitted by the Examining Attorney (and quoted by the Board at length). The Board concluded that the Examining Attorney had established by the requisite clear evidence that the phrase “Cloud TV” was generic for the Applicant’s goods and services.

This case serves as a reminder that the distinctiveness of even relatively new words and phrases is not static. Previously registrable words can become generic over time – sometimes just a short time. But it’s not a two-way street: once a term becomes generic, there’s no going back.

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Robert M. O'Connell, Jr. | Of Counsel

Robert O’Connell is Of Counsel in the Boston office of Fish & Richardson. His practice focuses on trademark and copyright strategic advice, prosecution and enforcement, including all aspects of domestic and international trademark law; registration and...

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