Generic words for goods and services can never gain trademark protection. Think THE BANK for a bank, FARMER’S MARKET for, say, a farmer’s market, or PC LAPTOPS for computers. The TTAB’s affirmed an examiner’s refusal, holding that the phrase PC LAPTOPS is generic for computer products and services.
PC Laptops LLC filed two different applications to register PC LAPTOPS for “computers, laptops, and portable computers” and “retail store services in the field of computer hardware and software.” In both cases, the examining attorney issued a 2(e)(1) refusal based on genericness. The applicant appealed these refusals to the TTAB.
As the TTAB stated, generic terms are “terms that the relevant purchasing public understands primarily as the common or class name for the goods and/or services” and are, by definition, unable to function as trademarks. An examining attorney has to prove genericness by “clear evidence” and, according to the TTAB, the examining attorney clearly did. The TTAB looked at three factors: (1) the genus of the goods and services, (2) the relevant public and (3) pubic perception. For the first two factors, the Board found that the genus of the goods were the goods stated on the applications, mainly, computers, and found that the general publish is the relevant consumers. For the third factor, the Court looked at dictionary definitions, articles, blog posts, and other relevant evidence showing PC LAPTOPS being used as a generic phrase. It also looked for any evidence that the phrase PC LAPTOPS had any other meaning unrelated to computer goods and services.
Applicant argued that the phrase PC LAPTOPS did not have a dictionary definition as a composite term and that the dictionary terms it found for PC were “peace corp” and “politically correct.” This seems like an entirely disingenuous argument for a computer manufacturer and seller to argue that PC does not mean “personal computer” in the context of computers and the Board dismissed this argument quickly.
On the other hand, the examiner submitted exhaustive evidence showing the phrase being used generically on a various of publications, websites and retail stores, including computer sites cnet.com (“A modest proposal: Détente between Mac and PC laptop fans: In the spirit of the holiday season, we have a proposal for peace between PC and Mac laptop users – or at least finding some middle ground”) and geek.com (“Below, you’ll find our recommendations to keep in mind when buying a PC laptop.”)
In response, Applicant argued that it had actively policed the PC LAPTOP mark and presented a letter it sent to online magazine TechCrunch over its supposed “misuse” of the PC LAPTOP trademark. This letter ended up providing evidence against the Applicant’s argument, as TechCrunch’s response was that “the term ‘PC laptop’ is used in this context to identify a common type of product.”
The Board, in closing, held that “it is clear from the record that both the media and the public understand the term “PC LAPTOPS” to refer to a type of laptop computer” and affirmed the examiner’s refusal of the application.
ONE. A generic term is a term that the relevant purchasing public understands primarily as the common or class name for the goods and/or service and are, by definition, unable to function as trademarks.
TWO. When analyzing whether a term is generic, the TTAB looks at three factors: (1) the genus of the goods and services; (2) the relevant public; and (3) the public perception of the phrase.
THREE. Know when to fold ‘em. The mark was clearly generic and it is surprising that the applicant took this matter as far as it did.