M C Y III Corp.

Trademark Trial and Appeal Board

Nov 30, 1999

No. 75250032 (T.T.A.B. Nov. 30, 1999)

Paper No. 10
CEW
THIS DISPOSITIION IS NOT
CITABLE AS PRECEDENT OF THE TTAB NOV. 30, 99
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re M C Y III Corporation
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Serial No. 75/250,032
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Thomas I. Rozsa of Rozsa & Chen for applicant.
Richard A. Straser, Trademark Examining Attorney, Law
Office 104 (Sidney Moskowitz, Managing Attorney).
____________
Before Hairston, Walters and Rogers, Administrative
Trademark Judges.
Opinion by Walters, Administrative Trademark Judge:
M C Y III Corporation has filed a trademark
application to register on the Supplemental Register the
mark ENGINE FLUSH for “distributorship services featuring
automotive engine flushing machines, parts therefor, and
chemical flushes for automotive flushing machine.”1

1 Serial No. 75/250,032, in International Class 42, initially filed on
the Principal Register on March 3, 1997, based on use of the mark in
commerce, alleging dates of first use and first use in commerce as of
January 31, 1996. On April 3, 1998, applicant filed an amendment
seeking registration on the Supplemental Register.
Serial No. 75/250,032
2
This application was originally filed on the Principal
Register. The Examining Attorney refused registration,
under Section 2(e)(1) of the Trademark Act, 15 U.S.C.
1052(e)(1), on the ground that the applied-for mark is
merely descriptive of the services identified in the
application; and under Sections 1, 2, 3 and 45 of the
Trademark Act, 15 U.S.C. 1051, 1052, 1053 and 1127, on the
ground that the subject matter of the application does not
function as a service mark. Additionally, the Examining
Attorney found the specimens and the identification of
services deficient.
Applicant responded by filing its amendment to seek
registration on the Supplemental Register. Applicant also
amended its identification of services and submitted
verified substitute specimens. The Examining Attorney
issued a final refusal to register on the grounds that the
subject matter of the application does not function as a
mark because it is the apt name of the services and is
merely informational; and that it is generic in connection
with the services identified in the application and, thus,
it is incapable of identifying applicant’s services and
distinguishing them from those of others. In connection
therewith, the Examining Attorney found the specimens
Serial No. 75/250,032
3
unacceptable on the ground that “the specimens show ENGINE
FLUSH as the apt and only name of the goods.”
Applicant has appealed. Both applicant and the
Examining Attorney have filed briefs, but an oral hearing
was not requested.
We begin by finding the Examining Attorney’s
contention that the specimens are deficient to be not well
taken. On the advertisement submitted as a substitute
specimen, the phrase ENGINE FLUSH appears with initial
capital letters both as “the Bilstein Engine Flush machine”
and as “The Bilstein Engine Flush System.” Additionally,
the phrase ENGINE FLUSH appears next to, but clearly
distinct from, the word “Bilstein” on the machine pictured
in the advertisement. Putting aside the issue of
genericness, the specimens are adequate evidence of service
mark use of the phrase ENGINE FLUSH.
To the extent that the Examining Attorney’s refusal on
the ground that the subject matter does not function as a
mark pertains to the manner of use of the phrase on the
specimens, the refusal is not well taken for the reasons
stated herein regarding the acceptability of the specimens.
To the extent that this ground of refusal pertains to the
question of whether the subject matter is generic, we
discuss the issue of genericness below.
Serial No. 75/250,032
4
With respect to genericness, the Examining Attorney
contends that ENGINE FLUSH is the common, commercial name
of automotive flush machines. In support of his position,
the Examining Attorney quoted, for the first time in his
brief, dictionary definitions of the individual words
“engine” and “flush,” and submitted copies of several
third-party registrations that include in the
identifications of goods the phrase “cooling system flush
machine.” Applicant argues, on the other hand, that ENGINE
FLUSH is capable of distinguishing its distributorship
services.
The Office has the burden of proving genericness by
“clear evidence” thereof. In re Merrill, Lynch, Pierce,
Fenner & Smith, Inc., 828 F.2d 1567, 4 USPQ2d 1141, 1143
(Fed. Cir. 1987). “A strong showing is required when the
Office seeks to establish that a term is generic.” In re
K-T Zoe Furniture Inc., 16 F.3d 390, 29 USPQ2d 1787, 1788
(Fed. Cir. 1994). Further, any doubt on the issue of
genericness must be resolved in favor of applicant. In re
Waverly Inc., 27 USPQ2d 1620, 1624 (TTAB 1993).
The critical issue in genericness cases is whether
members of the relevant public primarily use or understand
the term sought to be registered to refer to the category
or class of goods in question. In re Women’s Publishing
Serial No. 75/250,032
5
Co. Inc., 23 USPQ2d 1876, 1877 (TTAB 1992). Our primary
reviewing court has set forth a two-step inquiry to
determine whether a mark is generic: First, what is the
category or class of goods at issue? Second, is the term
sought to be registered understood by the relevant public
primarily to refer to that category or class of goods? H.
Marvin Ginn Corporation v. International Association of
Fire Chiefs, Inc., 782 F.2d 987, 228 USPQ 528, 530 (Fed.
Cir. 1986).
We find that the Examining Attorney has failed to make
of record any evidence whatsoever showing the use by others
of the term “engine flush.” Instead, the Examining
Attorney has simply relied upon dictionary definitions of
the individual words “engine” and “flush.” Nor do the
third-party registrations in the record demonstrate use of
the phrase “engine flush.”
Our primary reviewing court has made it clear that
when dealing with phrases consisting of a number of words,
as opposed to unitary compound words, it is not sufficient
to “simply cite definitions and generic uses of the
constituent terms of a mark” in an effort to show that the
mark as a whole is generic. In re American Fertility
Society, ___F.3d ___, 51 USQP2d 1832, 1836 (Fed. Cir.
1999). Instead, it is incumbent upon the Examining
Serial No. 75/250,032
6
Attorney to present evidence showing the generic use by
others of the phrase “engine flush” to establish that the
phrase is indeed generic. American Fertility Society, 51
USPQ2d at 1837.
Because the Examining Attorney has failed to make of
record any evidence showing that others have used the term
“engine flush” in a generic manner for the services for
which applicant seeks registration, we reverse the refusal
to register on the ground that the subject matter is
generic and/or does not function as a mark.
We find, further, that to the extent that we have
doubts as to whether ENGINE FLUSH is generic for
applicant’s services, such doubts must be resolved in favor
of the applicant. Waverly, 22 USPQ2d at 1624. However, we
note that, on another evidentiary record in an inter partes
proceeding, a different finding on the issue of genericness
could well result.
Serial No. 75/250,032
7
Decision: The refusal to register on the Supplemental
Register on the ground that the applied-for mark does not
function as a service mark and/or is generic in connection
with the identified services is reversed. Similarly, the
refusal to register on the Supplemental Register on the
ground that applicant has failed to submit acceptable
specimens of use is reversed.
P. T. Hairston
C. E. Walters
G. F. Rogers
Administrative Trademark Judges,
Trademark Trial and Appeal Board