M C Y III Corp.

Trademark Trial and Appeal Board

Nov 23, 1999

No. 75251499 (T.T.A.B. Nov. 23, 1999)

Paper No. 9
EWH/MM
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF THE TTAB NOV. 23, 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. 75/251,499
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Thomas I. Rozsa of Rozsa & Chen LLP for M C Y III
Corporation.
Richard A. Straser, Trademark Examining Attorney, Law
Office 114 (Mary Frances Bruce, Managing Attorney).
_______
Before Hanak, Hohein and Wendel, Administrative Trademark
Judges.
Opinion by Hanak, Administrative Trademark Judge:
M C Y III Corporation (applicant) seeks to register
ENGINE FLUSH SYSTEM in typed drawing form on the
Supplemental Register for “distributorship services
featuring automotive engine flushing machines, parts
therefor, and chemical flushes for automotive flushing
machines.” The application was filed on March 4, 1997 with
a claimed first use date of January 31, 1996.
Ser No. 75/251,499
2
The Examining Attorney refused registration contending
that “ENGINE FLUSH SYSTEM is generic [for applicant’s
services] and, therefore, is incapable of functioning as a
mark.” (Examining Attorney’s brief page 2). When the
refusal to register was made final, applicant appealed to
this Board. Applicant and the Examining Attorney filed
briefs. Applicant did not request a hearing.
We note at the outset that “the burden of showing that
a proposed trademark [or service mark] is generic remains
with the Patent and Trademark Office.” In re Merrill
Lynch, 828 F.2d 1567, 4 USPQ2d 1141, 1143 (Fed. Cir. 1987).
Moreover, it is incumbent upon the Examining Attorney to
make a “substantial showing … that the matter is in fact
generic.” Merrill Lynch, 4 USPQ2d at 1143. Indeed, this
substantial showing “must be based on clear evidence of
generic use.” Merrill Lynch, 4 USPQ2d at 1143. Thus, “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).
Moreover, any doubt whatsoever on the issue of genericness
must be resolved in favor of the applicant. In re Waverly
Inc., 27 USPQ2d 1620, 1624 (TTAB 1993).
In this case, the Examining Attorney has failed to
make of record any evidence whatsoever showing the use by
Ser No. 75/251,499
3
others of the term “engine flush system(s).” Instead, the
Examining Attorney has simply relied upon dictionary
definitions of the individual words “engine”; “flush”; and
“system.” (Examining Attorney’s brief pages 2-3). In
addition, the Examining Attorney points to applicant’s
specimen of use which, on its front cover, depicts the term
ENGINE FLUSH SYSTEM in all capital letters preceded by the
word BILSTEIN, also depicted in all capital letters which
are decidedly larger than the capital letters used to
depict ENGINE FLUSH SYSTEM. (Examining Attorney’s brief
page 4).
Our primary reviewing court has recently 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
Attorney to present evidence showing the generic use by
others of the compound term in order to establish that the
compound term is indeed generic. American Fertility
Society, 51 USPQ2d at 1837.
Ser No. 75/251,499
4
Because the Examining Attorney has failed to make of
record any evidence showing that others have used the term
“engine flush system(s)” in a generic manner for the
services for which applicant seeks registration, we reverse
the refusal to register. Indeed, while not sufficient to
establish genericness of the term as a whole, we note in
passing that the Examining Attorney has not even made of
record evidence showing “generic uses of the constituent
terms of a mark, such as “engine flush.” American
Fertility Society, 51 USPQ2d at 1836.
Finally, as for the Examining Attorney’s argument that
applicant almost always precedes ENGINE FLUSH SYSTEM with
the word BILSTEIN depicted in decidedly larger lettering,
two comments are in order. First, the fact that applicant
often depicts BILSTEIN in a more prominent fashion does
not, by itself, establish that ENGINE FLUSH SYSTEM is
generic for applicant’s services. Second, we note that
throughout its specimen of use (a twenty-three page
brochure), applicant consistently depicts ENGINE FLUSH
SYSTEM in solid capital letters or, at a minimum, with
initial capital letters. The Examining Attorney was unable
to point to, and we cannot find, even one instance where
ENGINE FLUSH SYSTEM is depicted by applicant in all lower
case letters.
Ser No. 75/251,499
5
In conclusion, we find that based upon this particular
evidentiary record, there are, at a minimum, doubts as to
whether ENGINE FLUSH SYSTEM is generic for applicant’s
services. Accordingly, said doubts on the issue of
genericness must be resolved in favor of the applicant.
Waverly, 22 USPQ2d at 1624. However, we hasten to add that
on another evidentiary record, such as in a cancellation
proceeding, a different finding on the issue of genericness
could well result.
Decision: The refusal to register is reversed.
E. W. Hanak
G. D. Hohein
H. R. Wendel
Administrative Trademark
Judges, Trademark Trial and
Appeal