STK LLCv.Backrack, Inc.

Trademark Trial and Appeal Board

May 21, 2012

No. 92049332 (T.T.A.B. May. 21, 2012)

Mailed:
May 21, 2012

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
______

STK LLC
v.
Backrack, Inc.
_____

Cancellation No. 92049332
_____

John M. Adams of Price Adams PC for STK LLC.

Paul J. Kennedy of Pepper Hamilton for Backrack, Inc.
______

Before Kuhlke, Bergsman and Kuczma, Administrative Trademark
Judges.

Opinion by Kuczma, Administrative Trademark Judge:

STK LLC (“petitioner”) filed a petition to cancel
Registration No. 3014986 for the mark “BACKRACK,” in
standard character form, registered by Backrack, Inc.
(“respondent”), for “pick-up truck racks, namely, headache
racks designed to protect the cab and mount a variety of
accessories, namely, light, antenna and toolbox brackets” in
Class 12.1
As grounds for cancellation, petitioner alleges that
respondent’s mark is generic. In support of its genericness

1 Issued November 15, 2005; § 8 Declaration of use accepted on
November 21, 2011.

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Cancellation No. 92049332
2
claim, petitioner contends that respondent has used its mark
in a generic manner in promotional materials and product
installation instructions, and that third parties have used
respondent’s mark in a generic manner not only to refer to
respondent’s goods, but also to refer to similar products
made by other parties.
Respondent denied the salient allegations in the
petition for cancellation and the parties have submitted
their respective evidence and trial briefs.
I. The Record
By rule, the record includes respondent’s registration
file. Trademark Rule 2.122(b), 37 CFR § 2.122(b). It also
includes the petition for cancellation and respondent’s
answer to the petition. In addition, the parties introduced
the following evidence:
A. Petitioner’s evidence:
1. April 22, 2009 discovery deposition of Adrian
Jayne, President of Registrant (with Exhibits) submitted
pursuant to parties’ Stipulation2 (Docket ## 43, 44);
2. Notice of Reliance for Petitioner’s Exhibit Nos.
118-125 (Docket #45) namely:

2 See November 29, 2010 Board Order approving Stipulation
regarding use of Jayne Discovery Deposition as testimony
evidence. (Docket # 63).

Cancellation No. 92049332
3
a) Registrant’s Objections and Answers to
Petitioner’s First Set of Interrogatories to Registrant
dated November 6, 2008 (STK Exhibit 118) (Docket # 45);
b) Registrant’s First Supplemental Objections and
Answers to Petitioner’s First Set of Interrogatories to
Registrant dated April 17, 2009 (STK Exhibit 119) (Docket
# 45);
c) Registrant’s Objections and Responses to
Petitioner’s Second Set of Interrogatories to Registrant
(along with copies of the exhibits referenced therein) dated
June 4, 2009 (STK Exhibit 120) (Docket # 45);
d) Registrant’s Answers to Petitioner’s Requests
for Admission (along with copies of the exhibits referenced
therein) dated November 5, 2008 (STK Exhibit 121) (Docket
## 45-46);
e) Registrant’s Responses to Petitioner’s Second
Set of Requests for Admissions directed to Registrant (along
with copies of the exhibits referenced therein) dated June
4, 2009; (STK Exhibit 122) (Docket # 46);
f) Registrant’s Amended Answers to Petitioner’s
Request for Admission Pursuant to Order of the Trademark
Trial and Appeal Board dated February 24, 2009 and
Supplemental Responses to Requests for Admission Nos. 9, 49,
92-93, 126-127, 166, 317, 332-333, 340-341, and 348-352
dated March 26, 2009 (STK Exhibit 123) (Docket # 46);
Cancellation No. 92049332
4
g) A copy of the definition of the word “back”
from Merriam Webster’s New International Dictionary, Second
Edition, Unabridged (STK Exhibit 124) (Docket # 46); and
h) A copy of the definition of the word “rack”
from Merriam Webster’s New International Dictionary, Second
Edition, Unabridged (STK Exhibit 125) (Docket # 46).
3. September 3, 2010 testimony deposition of Michael
McGuire, owner of Creston Hydraulics, New Jersey (with
Exhibits) (Docket # 47);
4. September 8, 20083 testimony deposition of Paul
Edward Bridges, Jr., owner of Pocono Four Wheel Drive
Center, Stroud Township, Pennsylvania (with Exhibits)
(Docket # 47);
5. June 23, 2010 testimony deposition of David Diassi
owner of Cap Connection, Lebanon, New Jersey, (with
Exhibits) (Docket ## 47-48);
6. September 10, 2010 testimony deposition of Robert
Craig, owner and d/b/a Z&R Auto Salon, Middlesex, New Jersey
(with Exhibits) (Docket # 49);

3 The September 8, 2008 date indicated on the title page of the
Deposition of Paul Edward Bridges, Jr. submitted under Docket
# 47 appears to be in error. The court reporter’s Certificate at
p. 57 is dated September 17, 2010, the notarized copy of the
witness’ Errata sheet is dated October 7, 2010, and some of the
deposition Exhibits are dated after September, 2008.
Accordingly, we assume that the deposition took place on
September 8, 2010 during Petitioner’s testimony period.

Cancellation No. 92049332
5
7. June 24, 2010 testimony deposition of Howard
Lichtman, president of Cyclevan Unlimited Incorporated of
South River, New Jersey (with Exhibits) (Docket # 49);
8. June 23, 2010 testimony deposition of Richard A.
Ackley, Jr., Director of Sales and Marketing for Armor Deck,
(with Exhibits) (Docket # 51);
9. June 23, 2010, testimony deposition of Kenneth C.
Laube, Inside Sales Rep for Armor Deck, (with Exhibits)
(Docket # 51);
10. June 23, 2010, testimony deposition of Stephen
Podesta, Inside Sales Rep for Armor Deck, (with Exhibits)
(Docket ## 51-52); and,
11. June 24, 2010, testimony deposition of Steve
Setteducati, president of Armor Deck which owns 75% of
petitioner (with Exhibits). Mr. Setteducati’s deposition on
June 24, 2010, was transcribed by two different court
reporters utilizing the same pagination. To avoid
confusion, citations to his testimony shall contain an “I”
(referring to the volume of his deposition transcript
commencing at 11:22 a.m.) (Docket ## 53-54) or an “II”
(referring to the volume of his testimony commencing at 6:38
p.m.) (Docket # 55).
Cancellation No. 92049332
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B. Respondent’s evidence:
1. October 27, 2010, testimony deposition of Adrian
Jayne, president of respondent (with Exhibits4) (Docket
## 56-58);
2. Notice of Reliance for Respondent’s Exhibits A-P
(Docket ## 59-62) namely:
a) Copies of internet search results for the term
“Backrack” and copies of printouts from internet
websites of identified “Sponsored Links” dated June 24,
2009, (Respondent’s Exhibits A1 through A34) (Docket #
59);
b) Copies of articles obtained via a LexisNexis
search for the terms “backrack” and “back rack”
submitted as printed publications (Respondent’s
Exhibits B1 through B41) (Docket ## 59-60);
c) Copies of articles obtained via a LexisNexis
search for the terms “headache rack” and “cab guard”
submitted as printed publications (Respondent’s
Exhibits C1 through C38) (Docket ## 60-61);
d) Petitioner’s Answers to Respondent’s First Set
of Interrogatories and Requests for Production of

4 Docket entry # 57 contains two document sets identified as
Exhibit 50 (found at pages 220-237 and 255-300). Although the
contents of these Exhibits differ, some of the pages are the
same. However, the content of neither set fully corresponds to
the identification of Exhibit 50 found at Jayne Test. Dep. p. 34.
Cancellation No. 92049332
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Documents Addressed to Petitioner (Respondent’s Exhibit
D) (Docket # 61);
e) First Supplemental Response to Petitioner’s
Answers to Respondent’s First Set of Interrogatories
and Requests for Production of Documents Addressed to
Petitioner (Respondent’s Exhibit E) (Docket # 61);
f) Petitioner’s Answers to Respondent’s Second Set
of Interrogatories and Requests for Production of
Documents Addressed to Petitioner (Respondent’s Exhibit
F) (Docket # 61);
g) Registrant’s First Set of Requests for
Admission Addressed to Petitioner (including Exhibits
thereto) (Respondent’s Exhibit G) (Docket # 61);
h) Petitioner’s Answers to Respondent’s First Set
of Requests for Admission Addressed to Petitioner
(without Exhibits) (Respondent’s Exhibit H) (Docket
## 61, 62);
i) Second Supplemental Response to Petitioner’s
Answers to Respondent’s First Set of Interrogatories
and Requests for Production of Documents Addressed to
Petitioner (Respondent’s Exhibit I) (Docket # 62);
j) Copies of TARR printouts and associated
certificates of registration and application for
BACKRACK or BACK RACK marks (Respondent’s Exhibits J1
through J4) (Docket # 62):
Cancellation No. 92049332
8
J1. Registration No. 3285848 for BACKRACK,
J2. Serial No. 78015866 for BACKRACK
(abandoned),
J3. Registration No. 2307561 (cancelled),
J4. Registration No. 2082364 for BACK RACK
(cancelled);
k) Copies of communications relating to cease and
desist letter concerning topautoteam.com produced by
petitioner under document production numbers 00366-
00375 (Respondent’s Exhibit K) (Docket # 62);5
l) Copies of webpages from third-party websites
produced by respondent under document production
numbers BR00811-BR008256 (Respondent’s Exhibit L)
(Docket # 62);

5 It is well settled that a party that has received documents
produced by another party in response to a request for production
of documents may not make such documents of record by notice of
reliance alone, except to the extent that they are admissible by
notice of reliance under Trademark Rule 2.122(e); 37 C.F.R. §
2.122(e). The foregoing documents do not fall within the
category of printed publications as contemplated under Rule
2.122(e). However, because petitioner did not object to the
submission of these documents, the Board may consider the
documents. See, TBMP § 704.11 (3rd ed. 2011); also see, Jeanne-
Marc, Inc. v. Cluett, Peabody & Co., Inc., 221 USPQ 58, 59 (TTAB
1984); Autac Incorporated v. Viking Industries, Inc., 199 USPQ
367, 369, n.2 (TTAB 1978)(neither party objected to other’s
offering of Fed. R. Civ. P. 34 documents via notice of reliance).
6 Pursuant to Rule 2.122(e), 37 CFR § 2.122(e), only document
numbers BR00811-BR00825 are admissible as internet evidence.
Document number BR00826 was produced by respondent and is not
admissible under Rule 2.122 or as internet evidence under Safer
Inc. v. OMS Investments Inc., 94 USPQ 1031, 1039 (TTAB 2010) and
therefore, must be introduced via witness testimony. See TBMP
§§ 704.02, 704.08(b) and 704.11 (3rd edition).
Cancellation No. 92049332
9
m) Copies of webpages from third-party websites
produced by respondent under document production
numbers BR00529-BR00535 (Respondent’s Exhibit M)
(Docket # 62);
n) Copies of webpages from whoisdomaintools.com
produced by Respondent under document production
numbers BR00703-BR00712 (Respondent’s Exhibit N)
(Docket # 62); and,
o) Copies of webpages from third party websites
dated October 26, November 10 and November 11, 2010
(Respondent’s Exhibit O) (Docket # 62); (Exhibit O1
bears document production numbers BR00804-BR00810 and
is also marked as Backrack Deposition Exhibit 139);
p) Copy of parties’ Stipulation for the
Introduction of Evidence regarding discovery deposition
of Respondent’s president, Adrian Jayne7 (Respondent’s
Exhibit P) (Docket # 62);
3. Depositions of Adrian Jayne, Steve
Setteducati, Richard Ackley, Kenneth Laube, Stephen
Podesta, Michael McGuire, Paul Bridges, David Diassi8
and Howard Lichtman (copies of these deposition were

7 See footnote 2, supra.
8 The list of testimonial depositions on which Respondent intends
to rely identified two depositions of David Diassi, see Docket
# 59, p. 13. However, only one deposition of Mr. Diassi has been
filed and accordingly, we assume that the second reference to his
deposition is duplicative.

Cancellation No. 92049332
10
filed by petitioner and are located at the Docket
numbers indicated above).
II. Standing
The party seeking cancellation must prove two elements:
(1) that it has standing; and (2) that there are valid
grounds for canceling the registration. See International
Order of Job's Daughters v. Lindeburg & Co., 727 F.2d 1087,
1091, 220 USPQ 1017, 1019 (Fed. Cir. 1984). To establish
standing, petitioner must show both “a real interest” in the
proceedings as well as a “reasonable” basis for its belief
of damage. See Ritchie v. Simpson, 170 F.3d 1092, 50 USPQ2d
1023, 1025, 1027 (Fed. Cir. 1999).
Here, the parties are direct competitors in the sale of
aftermarket automotive accessories namely, racks for pickup
trucks.9 Accordingly, petitioner has a “real interest” in
this proceeding seeking to cancel respondent’s registration
covering such products. See DeWalt, Inc. v. Magna Power
Tool Corp., 289 F.2d 656, 129 USPQ 275, 280 (CCPA 1961)
(damage presumed when mark sought to be registered is
descriptive of the goods and opposer has a sufficient
interest in using the descriptive term); Stuart Spector
Designs Ltd. v. Fender Musical Instruments Corp., 94 USPQ2d
1549, 1553 (TTAB 2009) (competitors have standing to oppose

9 See Jayne Test. Dep. pp. 14, 68-69, 172 (Docket # 56); Lichtman
Dep. p. 66 (Docket # 49); and Setteducati Dep. II pp. 30-31, 35
(Docket # 55).
Cancellation No. 92049332
11
registration based on alleged genericness and lack of
distinctiveness of product configuration); Plyboo America
Inc. v. Smith & Fong Co., 51 USPQ2d 1633, 1634 (TTAB
1999)(direct competitor has standing to oppose).
III. Whether respondent’s BACKRACK mark is generic?
The sole issue to be determined is whether respondent’s
BACKRACK mark is generic, i.e., a common name that the
relevant purchasing public understands primarily as
describing the genus of goods or services being sold. See
In re Merrill Lynch, Pierce, Fenner & Smith, Inc., 828 F.2d
1567, 4 USPQ2d 1141, 1142 (Fed. Cir. 1987). Such terms are
incapable of indicating a particular source of the goods or
services, and cannot be registered as trademarks; doing so
“would grant the owner of the mark a monopoly, since a
competitor could not describe his goods as what they are.”
Merrill Lynch, 4 USPQ2d at 1142 citing to CES Publishing
Corp. v. St. Regis Publications, Inc., 531 F.2d 11, 188 USPQ
612, 615 (2d Cir. 1975).
The critical issue in genericness cases is whether
members of the relevant public primarily use or understand
the term sought to be protected to refer to the genus of
goods or services in question. H. Marvin Ginn Corp. v.
International Ass’n of Fire Chiefs, Inc., 782 F.2d 987, 228
USPQ 528, 530 (Fed. Cir. 1986). Determining whether a mark
is generic involves a two-step inquiry: First, what is the
Cancellation No. 92049332
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genus of goods or services at issue? Second, 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? Ginn, 228 USPQ at 530.
A. Definition of the Genus
The Lanham Act permits cancellation when a “registered
mark becomes the generic name for the goods or services
. . . for which it is registered . . . .” 15 U.S.C. §
1064(3). Thus, the necessary inquiry focuses on the
description of goods set forth in the certificate of
registration. Magic Wand, Inc. v. RDB, Inc., 940 F.2d 638,
19 USPQ2d 1551, 1552 (Fed. Cir. 1991); and Octocom Systems,
Inc. v. Houston Computers Services, Inc., 918 F.2d 937, 16
USPQ2d 1783, 1787 (Fed. Cir. 1990).
In view of the foregoing, we first examine the
identification of goods in respondent’s Registration which
covers:
pick-up truck racks, namely, headache
racks designed to protect the cab and
mount a variety of accessories, namely,
light, antenna and toolbox brackets.

A “headache rack” is an accessory for pickup trucks that
protects the rear window of the cab. The headache rack is
located on the front of the truck bed behind the cab. Most
commonly, the rack has vertical and horizontal bars with the
vertical bars being mounted on the floor of the truck bed
and extending upwards. The bars protect the cab window by
Cancellation No. 92049332
13
preventing anything in the truck bed from lunging forward to
break through the window. Some versions of the rack contain
a wire mesh that performs the same function of protecting
the rear window.10 Certain accessories such as lights,
antennas and toolbox brackets can be attached to the
headache racks.11
Respondent’s products, as well as competitive products,
have been listed in distributors’ catalogs under the
headings “multi-purpose headache racks”;12 and “headache
racks” (with no listing in the catalog indices for “back
racks”).13 Such products have also been listed in industry
guides under the categories “Headache Racks”14 and “Cab
Protectors”15 (with no product category for “backrack”), and
in online catalogs under the headings “Truck Equipment” and
“Cab Guards.”16

10 Jayne Disc. Dep. pp. 66, 68 (Docket # 43); Jayne Test. Dep. pp.
8, 149 (Docket # 56); McGuire Dep. pp. 9, 17-18, 53 (Docket
# 47); Bridges Dep. p. 53 (Docket # 47); Diassi Dep. pp. 11-12,
16, 20-21 (Docket ## 47-48); Craig Dep. pp. 16-17 (Docket # 49);
Lichtman Dep. pp. 10, 13-14, 16 (Docket # 49); Laube Dep. p. 20
(Docket # 51); Setteducati Dep. I pp. 18-19, 37 (Docket # 53).
11 Jayne Disc. Dep. pp. 26-30 (Docket # 43).
12 Jayne Test. Dep. p. 27 (Docket # 56); Backrack Exhibit 119, No.
39 (Docket # 57).
13 Jayne Test. Dep. pp. 79, 81-84 (Docket # 56); Backrack Exhibit
138 (Docket # 58).
14 December 1993 issue of Trucking Times, Setteducati Dep. II pp.
47-48, 51 (Docket # 55), STK Exhibit 66 (Docket # 53); Truck Max
2004-05 catalog for Premium Brand Accessories for Pickups and
SUVs, Jayne Disc. Dep. pp. 187-188 (Docket # 43), Petitioner’s
Exhibit 29 (Docket # 44).
15 Trailer Body Builders 1996 Buyer’s Guide issue, Jayne Disc.
Dep. pp. 185-186 (Docket # 43); Petitioner’s Exhibit 28 (Docket
# 44).
16 See usworkvan.com, Jayne Test. Dep. 22 (Docket # 56); Backrack
Exhibit 119, No. 28 (Docket # 57).
Cancellation No. 92049332
14
The evidence and testimony by the parties and others in
the industry establishes that racks having the same or
similar purpose to respondent’s BACKRACK racks are known and
commonly referred to as: headache guards, cab guards, window
guards, cab protectors, cab racks, truck racks, and cab
protection.17
In view of the foregoing, the genus of respondent’s
goods is construed to include the recitation of goods set
forth in its Registration and synonymous product names
identified by the evidence, namely:
pick-up truck racks, namely, headache
racks (also known as headache guards,
cab guards, window guards, cab
protectors, cab racks, truck racks, and
cab protection) designed to protect the
cab and mount a variety of accessories,
namely, light, antenna and toolbox
brackets.

B. Primary Significance to Relevant Public
Having defined the genus, we proceed to determine
whether the primary significance of respondent’s BACKRACK

17 Jayne Disc. Dep. p. 16 (Docket # 43); Jayne Test. Dep. pp. 17,
28-30, 117-118, 164-166 (Docket # 56), Backrack Exhibit 119, No.
40 (BR00267, 269, 343, 345, 347) (Docket # 57); McGuire Dep. p.
53 (Docket # 47); Craig Dep. p. 26 (Docket # 49); Lichtman Dep.
pp. 26-27, 34-36 (Docket # 49); Laube Dep. pp. 20, 54-58 (Docket
# 51); Podesta Dep. pp. 10-11 (Docket # 51); Setteducati Dep. I
pp. 18-19, 33-34, 101, 103, 178 (Docket # 53); Setteducati Dep.
II. pp. 36-37, 159-161 (Docket # 55); light racks and ladder
racks are related to but not the same as headache racks, as both
can be used to support ladders and lights respectively, Jayne
Test. Dep. pp. 137-141 (docket # 56); McGuire Dep. pp. 54-55
(Docket # 47); Craig Dep. pp. 26-28 (Docket # 49); Podesta Dep.
p. 10-11 (Docket # 51); and Setteducati Dep. I p. 35 (Docket
# 53).
Cancellation No. 92049332
15
mark is understood by the relevant public primarily to refer
to that genus of goods. Ginn, 228 USPQ at 530.
1. The Relevant Public
The “relevant public” for goods sold in the marketplace
is limited to actual or potential purchasers of the goods.
Magic Wand, 19 USPQ2d at 1552-1553. When dealing with
ordinary consumer goods, the test for genericness is the
term’s meaning to consumers, not necessarily the
professionals in the trade. Zimmerman v. National Assoc. of
Realtors, 70 USPQ2d 1425, 1429 (TTAB 2004). Here, however,
we are not dealing with ordinary consumer products.
Respondent sells the headache racks it manufactures to
distributors or wholesalers, and commercial users such as
construction companies.18 The distributors, in turn, sell
to commercial customers, including contractors, jobbers
(i.e., resellers such as auto parts stores, who sell to end
users), municipalities, craftsmen, roofers, carpenters,
plumbers, landscapers, automotive dealerships, and body
shops. Distributors and jobbers also sell such products at
retail to commercial and non-commercial end users.19 In
view of the foregoing, the relevant public includes

18 Jayne Disc. Dep. pp. 21, 89, 163-164 (Docket # 43).
19 McGuire Dep. pp. 10, 22 (Docket # 47); Bridges Dep. pp. 8-9
(Docket # 47); Diassi Dep. pp. 8-10 (Docket # 47); Craig Dep. pp.
10-15 (Docket # 49); Lichtman Dep. p. 12 (Docket # 49); Ackley
pp. 42-43 (Docket # 51); Laube Dep. pp. 14-17 (Docket # 51);
Podesta Dep. pp. 9-10, 65 (Docket ## 51-52); Setteducati Dep. I
Cancellation No. 92049332
16
distributors, retailers/jobbers, and commercial and non-
commercial end-users.
2. Armor Deck’s Relationships with the Parties
Since its formation in 2007, petitioner has contracted
the manufacture of headache racks that it then sells in
competition with respondent’s products. Petitioner’s
products are distributed by Armor Deck, a supplier to the
automotive aftermarket. Armor Deck previously distributed
respondent’s products until its relationship with respondent
soured in 2007 and respondent ceased selling product to
Armor Deck.20 Petitioner, which is 75% owned by Armor Deck,
was formed around the time of the falling out between
respondent and Armor Deck, to make headache racks that
compete with respondent’s products. Armor Deck continues to
sell its inventory of respondent’s BACKRACK products, and
sometimes purchases respondent’s products from an alternate
source.21
The president and sole owner of Armor Deck, Steve
Setteducati, is an advisor to the managing partner of
petitioner and testified on behalf of petitioner.22 In view

pp. 13-14 (Docket # 53); Jayne Test. Dep. pp. 111-112 (Docket
# 56).
20 During this time, respondent filed suit against Armor Deck for
nonpayment of invoices and Armor Deck filed a counterclaim for
breach of contract. The suit was settled prior to trial.
Setteducati Dep. I pp. 6-7, 27, 29-30 (Docket # 53).
21 Setteducati Dep. I pp. 16-17 (Docket # 53).
22 Setteducati Dep. I pp. 12-17, 193, 195 (Docket # 53);
Setteducati Dep. II p. 20, 31-32, 35 (Docket # 55).
Cancellation No. 92049332
17
of the foregoing, there are close and overlapping ties
between petitioner and Armor Deck. Accordingly, petitioner
has a depth of knowledge about the industry and products at
issue that transcends its relatively recent entry into the
marketplace.
3. Primary Significance of BACKRACK
In assessing the relevant public’s understanding or
perception of the BACKRACK mark, evidence may be considered
from any competent source such as consumer surveys,
purchaser testimony, catalogs, and listings in dictionaries,
trade journals, magazines, newspapers and other
publications. See Merrill Lynch, 4 USPQ2d at 1143; In re
Northland Aluminum Products, Inc., 777 F.2d 1556, 227 USPQ
961, 963 (Fed. Cir. 1985); and Dan Robbins & Associates,
Inc. v. Questor Corp., 599 F.2d 1009, 202 USPQ 100, 105
(CCPA 1979).
The evidence offered by the parties to show the
public’s understanding of the BACKRACK mark falls into
several categories which we review below.
a) Meaning of Mark
Any inquiry into the public’s understanding of the
BACKRACK mark requires consideration of the mark as a whole,
not from its elements separated and considered in detail.
In re Dial-A-Mattress Operating Corp., 240 F.3d 1341, 57
USPQ2d 1807, 1811 (Fed. Cir. 2001) citing Estate of P.D.
Cancellation No. 92049332
18
Beckwith, Inc. v. Comm’r of Patents, 252 U.S. 538, 545-46,
(1920). In the absence of any evidence that “backrack” is a
word in the English language, petitioner selects a single
definition for each of the words “back” and “rack,” arguing
these words are generic terms for describing the position
(i.e., in the back of the cab of the pickup truck) and
function (i.e., a rack or frame for a pickup truck) of a
headache rack.23 Even if each of the constituent words in a
combination mark is generic, the combination is not generic
unless the entire formulation does not add any meaning to
the otherwise generic mark. In re Steelbuilding.com, 415
F.3d 1293, 75 USPQ2d 1420, 1421 (Fed. Cir. 2005), citing to
In re American Fertility Society, 188 F.3d 1341, 51 USPQ2d
1832, 1836 (Fed Cir. 1999).
Quoting from a discussion of the Gould case in American
Fertility Society, 51 USPQ2d at 1836, petitioner concludes
that the compound word BACKRACK has no different meaning
from the definitions it provided for the constituent words
“back” and “rack,” and therefore, no additional proof of the
genericness of the compound word is required.24 For several
reasons, In re Gould Paper Corp., 834 F.2d 1017, 5 USPQ2d
1110 (Fed. Cir. 1987), does not dictate a finding of
genericness based on the selected definitions offered by
petitioner.

23 Pet. Brief p.18; and STK Exhibits 124 and 125 (Docket # 46).
Cancellation No. 92049332
19
Petitioner’s evidence shows a multitude of definitions
for the words “back” and “rack,” with only one definition of
each being asserted by petitioner to be pertinent to
features of headache racks. Additionally, as distinguished
from the “Screenwipe” mark in Gould, the BACKRACK mark is a
“catchy name” that “rolls off the tongue” as “two words that
rhyme together.”25 The nuanced ambiguity resulting from the
compound rhymed term BACKRACK is further supported by the
several registrations and uses of the term “backrack” or
“back rack” for goods that are completely unrelated to
headache racks.26 As noted by our primary reviewing court,
the existence of “the ambiguities and multiple meanings in
the mark,” and in this case, the catchiness of the mark,
cannot be discounted in the genericness determination.
Steelbuilding.com, 75 USPQ2d at 1423.
Beginning in 1989 with the issuance of respondent’s
U.S. Patent No. 4,867,497 which referred to its headache
rack as “a rack for attaching to the box of a pickup truck”
and not as a “back rack,” there is no evidence that
respondent used the component portions of its mark to

24 Pet. Brief pp. 21-22.
25 Jayne Test. Dep. pp. 150-51 (Docket # 56).
26 See Resp. Exhibits J1 (Registration No. 3285848 for BACKRACK
for orthopedic supports); J3 Registration No. 2307561 for BACK
RACK for bike and ski racks for vehicles, cancelled under § 8 on
October 14, 2006); and J4 (Registration No. 2082364 for BACK RACK
for massage apparatus, cancelled under § 8 April 24, 2004)
(Docket # 62); and Exhibit M (Jemrack Step-Back Rack for interior
van racks; Back Rack sling for surfboards; Back Rack bike rack;
Cancellation No. 92049332
20
describe its product.27 Thus, this case is very different
from Gould where evidence of the meaning of the term
“Screenwipe” was supported by Gould’s own description of its
product on packaging as “a . . . wipe . . . for . . .
screens,” Gould, 5 USPQ2d at 1112, which left nothing for
speculation or conjecture.
b) Respondent’s Use of “Backrack”
The manner of use of a term directly impacts its
significance so we begin by reviewing respondent’s use of
the term BACKRACK. In 1988, one of respondent’s founders
coined the BACKRACK trademark and since 1989, respondent has
continuously exported headache racks to the U.S. under the
BACKRACK mark.28 From the early 1990’s, respondent has
frequently used BACKRACK as a noun in its promotional
materials and installation instructions.29 Indeed, it has
continued to do so in its most recent promotional materials
which include references such as “The strength of a BACKRACK
begins with . . . .” and “Securing cargo to your BACKRACK. .

Backrack spine rack; BACK RACK Hitch Mounted SUV Racks for skis,
snowboards, and bicycles) (Docket #62).
27 Jayne Test. Dep. pp. 13, 93-94 (Docket # 56); Backrack Exhibit
119, No. 1 (Docket # 56).
28 Jayne Disc. Dep. pp. 326-328 (Docket # 44); Jayne Test. Dep.
pp. 9, 150-151 (Docket # 56).
29 Setteducati Dep. I pp. 93-95 (Docket # 53), STK Exhibit 99E
(Docket # 54); Jayne Disc. Dep. pp. 72, 168 (“. . . and the end
user was installing the product themselves, they would see this.
In many cases our product is installed by the retailer and hence,
the retailer would see this. And in many cases the retailer
would already know how to install a BACKRACK brand headache rack
and wouldn’t refer to these instructions at all.”) (Docket # 43);
Petitioner’s Exhibits 5, 22, 24, 25, 31 (Docket # 44).
Cancellation No. 92049332
21
. .”30 There are also several instances where respondent’s
promotional materials refer to its product as “BACKRACKs” or
“BACKRACK’s” which respondent acknowledges as “poor
grammar,”31 and its website contains similar uses including
the statement: “BACKRACKS are available at select dealers
across North America. . . .”32 At the top of each webpage,
however, the BACKRACK trademark appears in bold print with
the ™ symbol.
In every instance where respondent used BACKRACK as a
noun, it has been used as a proper noun, i.e., it is shown
either in all uppercase letters or with an initial capital
letter “B,” thereby indicating that it is not a generic
term. See In re Country Music Association, Inc., 100 USPQ2d
1824, 1831 (TTAB 2011) (initial capitalization of a term or
phrase is generally used to designate a brand name, as
opposed to a generic term). Petitioner argues that
respondent’s capitalization of BACKRACK is without
significance because respondent uses similar capitalization
schemes, i.e., bold type and font sizes, for various generic
words mentioned in respondent’s promotional materials.33
However, the additional indicators respondent utilizes in

30 Jayne Disc. Dep. pp. 189-198 (Docket # 43); Petitioner’s
Exhibit 30 (Docket # 44).
31 Jayne Disc. Dep. pp. 123, 132 (Docket # 43); Petitioner’s
Exhibits 14-17 (Docket # 44).
32 Jayne Disc. Dep. p. 227 (Docket # 43); Petitioner’s Exhibit 33
(Docket # 44). This webpage also has a masthead with BACKRACK™
Cancellation No. 92049332
22
connection with BACKRACK convey that BACKRACK is not a
generic term. For example, in most instances where the
BACKRACK mark is used in promotional pieces, the mark is
shown with the ™ symbol at least once to indicate that
BACKRACK is a brand name34 and BACKRACK is frequently shown
in all uppercase letters.35 In addition, various
promotional pieces also bear the legend: “Backrack is a
Trademark of Backrack Inc.”36
Some of respondent’s materials have explicitly
identified its BACKRACK product as a pickup truck rack. For
example, respondent’s product information sheet from 1994
contains the following language: “Today’s pickup trucks
look great, so why destroy their good looks with an awkward
full frame rack? BACKRACK combines . . . .” Similarly, the
text of a promotional piece from 2000-2001 begins with the
line: Today’s pickup trucks look great, so why destroy their
looks with a full frame rack?37 Other references to the
fact that respondent’s product is a truck rack are also
found in its materials: “From this standpoint, the

in bold letters and an image of a headache rack bearing the
BACKRACK decal.
33 Petitioner’s Brief p. 25.
34 Jayne Disc. Dep. pp. 122-123, 162 (Docket # 43); Petitioner’s
Exhibits 5, 14-19, 22, 23, 27, 30, 31 (Docket # 44); Backrack
Exhibit 119, Nos. 12, 23 (Docket # 57).
35 Jayne Disc. Dep. p. 123 (Docket # 43); Petitioner’s Exhibits
5, 8, 9, 11, 13, 14, 19, 22, 23 (Docket # 44).
36 See Petitioner’s Exhibits 5, 8, 11, 22 (Docket # 44).
37 Jayne Disc. Dep. pp. 95-97 (Docket # 43); Petitioner’s Exhibit
9 (Docket # 44).
Cancellation No. 92049332
23
BACKRACK™ is the most safety conscious rack in the
market.”38
Additionally, respondent’s advertising and promotional
materials have displayed the following Logo showing use of
the ™ symbol in close proximity to the BACKRACK mark:

As acknowledged by petitioner, respondent’s use of this
Logo where the BACKRACK mark assumes the position of a
ladder carried on a pickup truck followed by the ™ symbol,
reinforces the trademark significance of the term
BACKRACK.39
Respondent directly promoted BACKRACK as its “brand
name” by using language such as “THE BRAND NAME YOU TRUST”
in some of its promotional materials, including in point of
purchase materials and its product guide published in mid-
2007:

38 Petitioner’s Exhibit 14 (Docket # 44).
39 Setteducati Dep. II p. 126, 152 (Docket # 55); Petitioner’s
Exhibits 5, 6, 8, 27, 30 (Docket # 44); Backrack Exhibit No. 119,
No. 12 (Docket # 57).
Cancellation No. 92049332
24

and also utilized the following graphic image to emphasize
the brand name significance of the term BACKRACK:40

When viewing THE BRAND NAME YOU TRUST language in
respondent’s promotional material, the owner of a business

40 Petitioner’s Exhibits 18, 22, 23, 30, 31 (p. BR00358) (Docket #
44); Jayne Disc. Dep. pp. 141-145, 158, 216-217 (Docket # 43).
Cancellation No. 92049332
25
that sells headache racks understood the reference to BRAND
NAME to mean “name recognition”:
Q. What is your understanding of brand
name, Mr. McGuire?

A. Name recognition.

Q. Name recognition in –- in what
context?

A. For the –- quality of a product. I
mean, it’s like DeWalt drills,
Ryobi drills, you have many flavors
in the same exact thing, you know.

* * *

Q. In the paragraph opposite the
heading, The Brand Name You Trust,
do you see a brand name in that
paragraph?

A. Yes.

Q. What is the brand name, Mr.
McGuire?

A. Backrack.41

In addition to the foregoing, the headache racks sold
by respondent have been prominently labeled with the
BACKRACK trademark in the form of a decal that is visible
when viewing the rear of a pickup truck having a mounted
BACKRACK headache rack:42

41 McGuire Dep. p 29 (Docket # 47).
42 The decal of the BACKRACK mark initially displayed the mark as
a single word. Due to legal regulations calling for a third
brake light on vehicles, the decal had to be modified to insert a
space between BACK and RACK to avoid obstruction of the third
brake light located at the top center of the truck cab. Jayne
Disc. Dep. pp. 92-93 (Docket # 43); Petitioner’s Exhibit 22
(Docket #43).
Cancellation No. 92049332
26

Most of respondent’s promotional materials feature similar
images of the BACKRACK headache rack mounted on a pickup
truck with the BACKRACK decal shown on the rack. The use of
BACKRACK™ in connection with images such as that shown above
conveys to viewers that they are looking at a product
produced by “Backrack.”43
There is little room for respondent to argue that it
has not been sloppy in its use of the BACKRACK mark.44 As

43 Setteducati Dep. II p. 85 (Docket # 55); STK Exhibit 99F
(Docket # 54).
44 Petitioner has also been careless in the use of its PRO RACK
and PRO GUARD trademarks, using them improperly as nouns and in
plural form in promotional material and on its website.
Setteducati Dep. II pp. 157-58 (Docket # 55); Backrack Exhibits
Cancellation No. 92049332
27
recognized by petitioner, such misuses of a mark can
jeopardize its trademark significance.45 See e.g., Turtle
Wax, Inc. v. Blue Coral, Inc., 2 USPQ2d 1534, 1536, (TTAB
1987) and In re Bausch & Lomb, Inc., 206 USPQ 534, 537 (TTAB
1979). However, when viewed in their entire context,
respondent’s promotional materials convey that respondent’s
product is a pickup truck rack that is sold under the
BACKRACK brand. Given the steps taken by respondent to
acknowledge and promote BACKRACK as its brand name, its
misuses of the mark have diminished, but not destroyed, the
trademark significance of BACKRACK. Therefore, based on the
manner in which respondent has marketed its products, it is
more likely than not that the relevant public recognizes
BACKRACK as a brand name.
c) Use of Mark by Competitors
A competitor’s use of a term is evidence of the
genericness of that term. See e.g., Remington Products,
Inc. v. North American Philips Corp., 892 F.2d 1576, 13
USPQ2d 1444, 1446, 1449 (Fed. Cir. 1990) (use of “Travel
Care” in the trade as category designation significant
factor in finding term generic) and BellSouth Corp. v.
DataNational Corp., 60 F.3d 1565, 35 USPQ2d 1554, 1558 (Fed.
Cir. 1995). The availability of other words for competitors

116 (Docket # 55), 119 Nos. 5-7, 27 (Docket # 57); Jayne Test.
Dep. pp. 67-75 (Docket # 56); Backrack Exhibit 135 (Docket # 58).
45 Petitioner’s Brief p. 27.
Cancellation No. 92049332
28
to use does not, by itself, transform a generic term into
capable matter. Blinded Veterans Ass’n v. Blinded American
Veterans Foundation, 872 F.2d 1035, 10 USPQ2d 1432, 1437
(D.C. Cir. 1989). However, where the evidence does not show
competitors use the designation at issue, this can create
doubt, depending on the totality of the record, as to
whether a term primarily refers to a genus of goods such
that “sellers of competing brands cannot compete effectively
without using the name to designate the product they are
selling.” Ty Inc. v. Softbelly’s Inc., 353 F.3d 528, 69
USPQ2d 1213, 1215 (7th Cir. 2003).
Petitioner and respondent are direct competitors in the
manufacture and sale of headache racks. Therefore, we look
to the manner in which petitioner identifies its products to
see whether it utilizes the term “backrack.” The most
telling evidence of the trademark significance of BACKRACK
is petitioner’s testimony explaining the reason why neither
petitioner nor its distributor Armor Deck, who distributed
respondent’s BACKRACK products from 1994 through 2007, have
ever used BACKRACK in a generic sense “. . . because it’s a
trademark.”46
The new product announcement for petitioner’s competing
ProRack and ProGuard racks identifies these products as

46 Setteducati Dep. I p. 16 (Docket # 53); Setteducati Dep. II pp.
159, 162, 164-165 (Docket # 55).
Cancellation No. 92049332
29
“truck racks.”47 Similarly, one of petitioner’s early
promotional pieces for its Pro Rack and Pro Guard headache
racks, which have been called “imitations” of respondent’s
racks, also identified the products as “truck racks.”48
This is consistent with petitioner’s website which contains
a link entitled “Cab Guards” that a viewer clicks on to see
the Pro Rack and Pro Guard products which are referred to as
“truck racks.”49
There are several other brands of headache racks:
Better Built, Big Tex, Camo Rack, Cross Tread, Daws
Manufacturing, Go Industries, Highway Products, Husky, Rhino
STK, US Rack, Vanguard, Weather Guard, Willmore, and
Winbo.50 Some of these products have been advertised and
offered for sale as “racks,” “cab protectors,” “cab racks,”
and “cab guards.”51 “Back rack” is not a term that is
commonly used by other headache rack manufacturers to
describe their products.52
One of the foregoing competitors, Highway Products,
began referring to its “Leopard” rack as “our new open back

47 Jayne Test. Dep. p. 14 (Docket # 56); Backrack Exhibit No. 119,
Nos. 3, 4 (Docket # 57).
48 Setteducati Dep. II pp. 157-158, Backrack Exhibit 116 (Docket
# 55); Jayne Test. Dep. p. 14 (Docket # 56).
49 Jayne Test. Dep. pp. 75-77 (Docket # 56), Backrack Exhibit 136
(Docket # 58); Setteducati Dep. II pp. 159-161, Backrack Exhibit
136 (Docket # 55).
50 Bridges Dep. pp. 41-42 (Docket # 47); Diassi Dep. pp. 14-16, 35
(Docket # 47-48); Setteducati Dep. II pp. 141-142 (Docket # 55).
51 Jayne Test. Dep. p. 28-30 (Docket # 56); Backrack Exhibit 119,
No. 40 (see BR00267, 269, 343, 345, 347) (Docket # 57).
52 Lichtman Dep. pp. 54-55 (Docket # 49).
Cancellation No. 92049332
30
rack.” However, on several other pages in its catalog, it
referred to its products, including the “Leopard” headache
rack, as “truck racks.”53 Respondent considered this use to
be an infringement of its trademark rights and issued a
cease and desist letter.54
While another headache rack seller, Westcan
Manufacturing Ltd. of British Columbia also utilized the
term “Back Rack” in its catalog,55 respondent subsequently
sent it a cease and desist letter and Westcan promptly
agreed to cease use of the term “Back Rack.”56
In view of the foregoing, there are a number of
synonymous terms for headache racks, other than “backrack,”
being widely used by competitors. Thus, the evidence does
not show a competitive need for others to use the term
“backrack” to identify their headache racks.
d) Third-Party Use of BACKRACK
Use of BACKRACK by those involved in the industry,
i.e., distributors, resellers and end-user customers is
inconclusive. The evidence shows both proper use of
BACKRACK as a trademark for respondent’s products, as well

53 Setteducati Dep. I p. 173 (Docket # 53), STK Exhibit 101, pp.
7-9, 14 (Docket # 54).
54 Jayne Test. Dep. pp. 64-66 (Docket # 56); Backrack Exhibit 133
(Docket # 58).
55 Setteducati Dep. I pp. 176-178 (Docket # 53), STK Exhibit 102
(Docket # 54).
56 Jayne Disc. Dep. pp. 303, 308-309 (Docket # 43), Petitioner’s
Exhibit 58 (Docket # 44).
Cancellation No. 92049332
31
as generic use of the term referring to any type of headache
rack, with neither scenario being predominant.
Respondent’s BACKRACK mark has been utilized with the ™
symbol in distributors’ catalogs57 and promoted as “The
Brand Name You Trust” in such catalogs.58 Petitioner’s
affiliated distributor from 1994 until 2007,59 Armor Deck,
acknowledged the validity of the BACKRACK trademark in its
promotional materials. Of the six dealer sites that are
linked to respondent’s website, three of them advertise the
BACKRACK product utilizing nouns such as “rail mount ladder
rack,” “headache rack,” and “window guard.”60
A distributor’s catalog and internet retailer’s website
that offer a variety of products show no category for
“backracks.” Instead, there are categories for “cab guards”
and “headache racks” that reference the catalog pages
displaying respondent’s BACKRACK headache racks;61 and
respondent’s products are found on the website under the
subcategories “Cab Guards” and “Headache Racks” under the
“Truck Cab Guard Protection” link.62

57 Jayne Disc. Dep. pp. 228-233, 279 (Docket # 43); Petitioner’s
Exhibits 34 and 51 (pages from Keystone catalog) (Docket # 44).
58 Jayne Disc. Dep. pp. 279-280 (Docket # 43); Petitioner’s
Exhibit 51 (Docket # 44).
59 Jayne Test. Dep. p. 114 (Docket # 56).
60 Setteducati Dep. I pp. 98-101 (Docket # 53); STK Exhibit 99F
(Docket # 54).
61 Jayne Disc. Dep. p. 279 (Docket # 43); Jayne Test. Dep. pp. 34-
36 (Docket # 56); Petitioner’s Exhibit 51 (Docket # 44), Backrack
Exhibit 119, No. 51 (Docket # 57).
62 Jayne Test. Dep. pp. 77-79 (Docket # 56); Backrack Exhibit 137
(Docket # 58).
Cancellation No. 92049332
32
Respondent’s products are clearly identified on the
Armor Deck website as BACKRACK™ truck racks and cab guards
where the trademark is used properly.63 Armor Deck’s
website lists “Contractor-Industrial” product categories
which include the subcategories “Cab Guards” and “Ladder
Rack” where respondent’s products are found.64 Tellingly,
there is no “Back Rack” category. Competitive products,
including the parties’ products, are identified as “truck
racks,” “ladder racks,” and “cab guards.”65 This is
consistent with the indexes contained in Armor Deck’s 1994-
95, 1996, 1998-99, 2000-01, 2002-03, 2003-04, 2005-06, 2006-
07 catalogs which identify product categories for “headache
racks” and “cab guards,” but not “back racks.”66
Over the years, Armor Deck’s layout and design for
BACKRACK headache racks has varied, but has typically
referred to BACKRACK as a proper noun.67 In 2007, Armor
Deck learned that a trademark should be used as an adjective
to describe a product, not as a noun.68 Thus, Armor Deck’s
improper use of the BACKRACK trademark may stem from its

63 Jayne Test. Dep. pp. 67-75 (Docket # 56); Backrack Exhibit 135
(Docket # 58); Setteducati Dep. II p. 151, Backrack Exhibit 114
(Docket # 55).
64 Setteducati Dep. II pp. 148-152, Backrack Exhibit 114 (Docket
# 55).
65 Jayne Test. Dep. pp. 67-75 (Docket # 56); Backrack Exhibit 135
(Docket # 58).
66 Setteducati Dep. II pp. 53-61, 65 (Docket # 55), Backrack
Exhibits 106-113 (Docket # 54).
67 Setteducati Dep. I pp. 60-61 (Docket # 53).
68 Setteducati Dep. I pp. 63-64 (Docket # 53).
Cancellation No. 92049332
33
unfamiliarity with proper trademark usage, rather than
indicating the genericness of the term BACKRACK.69
Indeed, in every Armor Deck catalog, the BACKRACK mark
appears on the top of the page in prominent lettering
followed by the ™ symbol. As early as 1996, Armor Deck’s
catalogs advertised respondent’s products with the
statement: “Today’s Pickups look great, so why destroy their
good looks with an awkward full frame rack?” in larger
lettering directly underneath the BACKRACK™ trademark shown
at the top of the catalog page and in connection with an
image of a headache rack mounted on a pickup truck bearing
the BACKRACK decal; the bottom of the catalog page bearing a
legend reminding readers that “BACKRACK is an attractive and
versatile alternative to conventional truck racks or window
and cab guards!”70 Since May 2008, Armor Deck’s website
advertised BACKRACK™ products, referring to them as
“Backrack™ Truck Racks and Cab Guards.”71

69 Despite learning about the appropriate use of a trademark,
petitioner has also been careless in the use of its PRO RACK and
PRO GUARD trademarks, using them improperly in promotional
material and on its website, as nouns and in plural form.
Setteducati Dep. II pp. 157-58; Backrack Exhibits 116, 119 Nos.
5-7, 27 (Docket # 55); Jayne Test. Dep. pp. 67-75 (Docket # 56);
Backrack Exhibit 135 (Docket # 58).
70 Setteducati Dep. I p. 43, STK Exhibit No. 98A,C-E (Docket
# 53); Jayne Disc. Dep. pp. 262-264 (Docket # 56), Petitioner
Exhibit 46 (Docket # 44); Jayne Test. Dep. pp. 22, 171-173
(Docket # 56); Backrack Exhibit 119, No. 27 (Docket # 57).
71 Jayne Test. Dep. pp. 22, 171-173 (Docket # 56); Backrack
Exhibit 119, No. 27 (Docket # 57); Setteducati Dep. II pp. 148-
150, Backrack Exhibit 114 (Docket # 55).
Cancellation No. 92049332
34
Internet retailers refer to respondent’s BACKRACK
headache racks in various manners, including as Backrack
Pickup Truck Headache Racks/Headache Racks (see bigboys-
customtoys.com, 4wheelonline.com, pickupspecialties.com,
truckchamp.com, rackwarehouse.com, ok4wd.com,
quadratec.com); BACKRACK Cab Guards/Cab Protector (see
anythingtruck.com, usworkvan.com, mutualwheelco.com,
rackwarehouse.com); Backrack Truck Racks (see
etrucktoys.com, cargogear.com); and in bold lettering and/or
with the ™ symbol (see pickupspecialties.com,
cargogear.com).72 Although some of the online
advertisements referring to respondent’s products listed by
sellers who did not purchase directly from respondent and
did not have respondent’s authorization, also show use of
“Backrack” as a noun by itself or in the plural form,73 they
show BACKRACK in prominent bold lettering at the top, and
with capital letters in the text, and sometimes with the ™
symbol. Thus, it is clear that many in the industry have
recognized and used BACKRACK as a trademark.
Comparing the instances of correct use of BACKRACK as a
trademark versus the improper use of BACKRACK as a generic

72 Jayne Disc. Dep. pp. 283-285, 289-298 (Docket # 43);
Petitioner’s Exhibits 52, 53, 55, 56 (Docket # 44); Jayne Test.
Dep. pp. 23-26 (Docket # 56); Backrack Exhibit 119, Nos. 29, 32,
34, 35, 36, 37 (Docket # 57).
73 See Petitioner’s Exhibits 35, 36, 41, 55 (Docket # 44);
notably, Petitioner’s Exhibits 37-40 show use of the descriptive
Cancellation No. 92049332
35
term leads to the conclusion that neither scenario is
dominant. Under these circumstances, we cannot conclude
that the misuse of the term is so widespread and of such
duration that it has caused BACKRACK to lose all
significance as a trademark. Tea Board of India v. Republic
of Tea, Inc., 80 USPQ2d 1881, 1893 (TTAB 2006).
e) Customer’s Understanding of BACKRACK
Although sellers and suppliers of headache racks
testified that “back rack” is a term used to identify a type
of rack, they also recognize that BACKRACK is a trade name
or a brand name.74 However, the term “backrack” is
sometimes used by customers and retailers/jobbers as a term
for a headache rack.75 The record contains several listings
on craigslist.org and plowsite.com that advertise a
“Backrack” for sale, with the product pictured in the
listing being something other than a BACKRACK brand
product.76 A distributor who sold only BACKRACK brand
headache racks received several calls for a “Backrack” with

term headache racks in connection with the BACKRACK trademark,
Jayne Disc. Dep. pp. 233-255 (Docket # 43).
74 Bridges Dep. pp. 12, 14 (Docket # 47); Diassi Dep. p. 17
(Docket # 47); Lichtman Dep. pp. 25-26 (Docket # 49); Ackley pp.
14, 18-19, 45 (Docket # 51); Podesta Dep. p. 15 (Docket # 51).
75 Craig Dep. pp 34-35 (Docket # 49); Lichtman Dep. pp. 26-27, 29,
34-37 (Docket # 49); Ackley Dep. pp. 29-30 (Docket # 51); Laube
Dep. p. 34 (Docket # 51); Podesta Dep. pp. 15, 20 (Docket # 51).
76 Podesta Dep. pp. 24-62 (Docket ## 51-52), STK Exhibit Nos. 69-
75, 77-79, 81-86, 88 (Exhibits 76, 87 and 89 are of little
probative value as they lack sufficient information to ascertain
whether the references made to “BackRack” are to something other
Cancellation No. 92049332
36
a mesh despite the fact that respondent was not
manufacturing a mesh style rack at the time.77 Customers
come into stores or call suppliers requesting a “back
rack.”78 According to one seller of headache racks, about
50% of the time, people come in asking for a “backrack.”79
On occasion, customers that come in requesting a “back
rack” after being shown a picture of a BACKRACK headache
rack, indicate that is not what they are looking for.
Sometimes, customers’ use of term “back rack” is to refer to
a type of product.80 Due to this phenomenon, when customers
come in and request a “backrack,” sellers and retailers show
the customer pictures, displays or catalogs of the BACKRACK
brand product to confirm whether that is the product sought
by the customer.81
Customers have ordered “Backrack” products from Armor
Deck and when they received the product, it was not the
product they were interested in. As a result, Armor Deck
adjusted its sales practices to solicit additional
information from customers in order to “overcome the

than BACKRACK brand headache racks; Exhibit 80 is duplicative of
Exhibit 73) (Docket # 52).
77 Ackley Dep. pp. 22-23 (Docket # 51).
78 McGuire Dep. pp. 63-66 (docket # 47); Bridges Dep. p. 38
(Docket # 47); Diassi Dep. pp. 17, 23-24, 55 (Docket ## 47-48);
Ackley Dep. p. 16 (Docket # 51); Laube Dep. pp. 23-24, 29 (Docket
# 51).
79 McGuire Dep. p. 32 (Docket # 47).
80 Bridges pp. 42-43, 51 (Docket # 47).
81 Bridges Dep. pp. 12, 15-16, 30 (Docket # 47); Diassi Dep. p. 30
(Docket # 48); Craig Dep. pp. 31, 33-34 (Docket # 49); Lichtman
Dep. pp. 38, 60 (Docket # 49); Ackley Dep. p. 48 (Docket # 51).
Cancellation No. 92049332
37
confusion that seems to exist regarding Backrack” and ensure
the customer receives the product they want.82
Some of the customers that come in requesting a
“Backrack” do in fact purchase a BACKRACK brand headache
rack.83 The testimony provided by the sellers of headache
racks concurred that when customers “walk out of their
store” after purchasing a headache rack, they know exactly
which brand of headache rack they have purchased.84
Respondent’s success in the marketplace and strategic
labeling of its headache racks appears to explain any
confusion on the part of purchasers. As observed by several
headache rack sellers:
(testimony by witness McGuire):
A. Well, they’ll come in, they’re
looking for a rack on the back of
their truck, but they won’t know
what it’s called. Some may refer
to it as headache rack or a cab
protector.

I mean, its – sometimes – 50 percent of the
time it probably is referred to as a
Backrack. Because people usually see the
name on the back of the things going down the
road, and they will remember what the name
is. But it’s – it’s all the same thing.85

82 Ackley Dep. pp. 39-41, 46 (Docket # 51).
83 McGuire Dep. pp. 65-66 (Docket # 47); Bridges Dep. p. 13
(Docket # 47); Diassi Dep. pp. 23-24, 52, 55-56 (Docket ## 47-48;
Ackley Dep. pp. 41-42 (Docket # 51); Laube Dep. pp. 62-64 (Docket
# 51).
84 McGuire Dep. pp. 79-81 (Docket # 47); Bridges Dep. p. 51
(Docket # 47); and Ackley Dep. p. 55 (Docket # 51).
85 McGuire Dep. p. 32 (Docket # 47).
Cancellation No. 92049332
38
(testimony by witness Diassi):
Q. Over the years that you have been in this
industry and operating Cap Connection, David,
do you have any opinion on why this practice
has developed of identifying headache racks
by the term Backrack?

* * *

A. It’s because the name is out there. They see
it on the racks all the time. You don’t see
headache rack printed on any of the product
out there. They have seen it, you know, in a
trucking magazine or something like that and
just assume it’s called a Backrack.86

* * *

A. . . . Backrack is probably one of the
heaviest advertised headache racks out there.
You don’t see may of them really advertised
all that much.87

(testimony by witness Craig):

Q. And when you say “generic,” what do you mean
by that?

A. I would just say the public is more aware of
the Backrack name than the others.88

All end-users may not understand the significance of
the term BACKRACK as a trademark or brand name, however, it
is clear that sellers of headache racks recognize the
BACKRACK brand name:
Q. What is your understanding of a
brand name?

A. Backrack is a brand name, but it’s
very common. Everybody asks for a
back rack, but they don’t

86 Diassi Dep. p. 37 (Docket # 48).
87 Diassi Dep. p. 32 (Docket # 48).
88 Craig Dep. pp. 34-35 (Docket # 49).
Cancellation No. 92049332
39
understand when they do, you ask
them are you looking for the brand
or the rack.89

While the testimony of suppliers and retailers
indicates some end-customers use the term “backrack” when
expressing an interest in ordering a headache rack, there is
no evidence which establishes how end-customers are using
this term, i.e., what they mean or understand when using the
term “backrack.”90 Two facts stand out from the testimony.
First, sellers take “extra steps” to solicit additional
information from customers who indicate they wish to order
“Backrack” products. That sellers have adjusted their
practices to solicit this additional information indicates
the term “back rack” has more than one meaning, otherwise
the extra steps would not be necessary. Second, a fair
number of customers that express an interest in purchasing a
“backrack” do in fact purchase a BACKRACK brand headache
rack. When viewed together, these facts strongly suggest
that although “Backrack” may have more than one meaning, one
of the meanings refers to the BACKRACK brand headache rack.
f) Petitioner’s Survey Evidence
Petitioner conducted a “homemade” survey of 18 of its
customers (“a small cross-section of [petitioner’s] customer
base”) that sell headache racks.91 Based on their answers

89 Diassi Dep. pp. 17, 25 (Docket ## 47-48).
90 Craig Dep. p. 74 (Docket # 49).
91 Setteducati Dep. I pp. 114-116, 118-120 (Docket # 53).
Cancellation No. 92049332
40
to two questions, petitioner concludes that an overwhelming
majority of these 18 survey respondents recognize that their
customers (i.e., the end user), generally use the term
“Backrack” as the name of any headache rack or cab guard as
opposed to an identifier as the source of a product.92
Respondent objects to petitioner’s survey evidence on
the grounds that petitioner failed to disclose the survey
during discovery, and that the survey constitutes
inadmissible hearsay. Whether the survey is designated as a
scientific survey93 or simply additional evidence of the
significance of the BACKRACK mark, it is not probative on
the issue of genericness.
Survey evidence is subject to review for its probative
value, based on factors including the design of the survey,
the questions asked, and the experience of the surveyor. In
re Hotels.com LP, 573 F.3d 1300, 91 USPQ2d 1532, 1536 (Fed.
Cir. 2009). While all surveys are necessarily based on some
degree of hearsay, petitioner’s survey is replete with fatal
defects, including a double layer of hearsay. That is, the
survey does not solicit opinions directly from the true
subjects of the survey. Rather, the survey respondents
simply serve as conduits to relay feedback they supposedly

92 Petitioner’s Brief. pp. 12, 31.
93 In fact the survey is not a scientific survey; the survey
designer readily admitted that he is inexperienced and not an
expert with respect to surveys. Setteducati Dep. I p. 120
(Docket # 53); Setteducati Dep. II p. 117 (Docket # 55).
Cancellation No. 92049332
41
received from their customers, i.e., the end users, who are
the true subjects.94
Putting aside the fatal defects pertaining to the small
number of respondents surveyed and the fact that the survey
was not administered to the end users who comprise a
significant portion of the relevant public, the design of
the survey did not test for genericness of the BACKRACK
mark. Rather than ascertaining the term used by the
relevant public to identify a headache rack, the survey
asked what name was used by customers to identify a
“BackRack truck rack.”95 The designer of the survey, Steve
Setteducati, President of Armor Deck, testified that he was
looking to establish whether consumers were improperly using
the term “Backrack” as a noun.96 Whether customers refer to
the rack as a “Backrack,” (i.e., use the term as a noun),
“Backrack truck rack” or a “BackRack cab guard” sheds no
light on the genericness issue. Customers looking for a
BACKRACK brand product will undoubtedly use the term
“Backrack” as a noun:
The fact that buyers or users often call for or
order a product by a term does not necessarily
prove that a term is a “generic name.” The person

94 Setteducati Dep. I p. 113 (Docket # 53); Setteducati Dep. II
pp. 111, 113 (Docket # 55).
95 Survey question No. 1: When customers come into your store or
call you on the phone looking to buy a BackRack truck rack, do
they most often ask for a “BackRack” or do they most often ask
for a “BackRack truck rack” or “BackRack cab guard?” Setteducati
Dep. I p. 118 (Docket # 53); STK Exhibit 68A-R (Docket #54).
96 Setteducati Dep. I pp. 114, 195 (Docket # 53).
Cancellation No. 92049332
42
who orders for lunch a “BIG MAC and a COKE”
undoubtedly has brand knowledge and brand loyalty.
The generic names “hamburger” and “cola” are
understood by all precisely because BIG MAC and
COKE are such strong trademarks identifying
source. Since everyone knows the generic names,
they are dropped in ordinary usage.

J. Thomas McCarthy, 2 McCarthy on Trademarks and Unfair
Competition § 12:27 (4th ed.).
The second survey question is so ambiguous and
speculative that it precludes the possibility of drawing any
conclusions.97 Neither survey question elicited responses
that could provide insight into whether consumers understand
the term BACKRACK to mean a product brand or source, or a
product genus. Additionally, whether respondents are
capable of distinguishing between brand and common names is
an important feature of a genericness survey, and
petitioner’s survey was not designed to detect this
capability. Cf. Country Music Ass’n, 100 USPQ2d at 1832.
In view of the foregoing, petitioner’s imprecise and non-
scientific survey is not probative of the significance of
the term BACKRACK to the relevant public. See Magic Wand,
19 USPQ2d at 1554.

97 Survey question No. 2: Has there ever been instances, even if
only on occasion, that customers have come into your store or
call you asking for a “BackRack” when they really don’t actually
want a “BackRack” at all; rather they want another type of truck
rack? For instance, this could mean a different type of cab
guard or a full truck rack? Setteducati Dep. I p. 118 (Docket #
53); STK 68A-R (Docket # 54).
Cancellation No. 92049332
43
Based on the foregoing, there is a lack of probative
evidence in this record as to the primary significance of
the term BACKRACK to end users which make up a significant
portion of the relevant purchasing public.
g) Uses of BACKRACK in Printed Publications
In assessing genericness, evidence of use of the term
in the media, including books, magazines, newspapers, etc.
may shed light on the significance of the term. Evidence of
this type shows that the term “back rack” is not commonly
used as a generic term for headache racks or cab guards.
None of the 41 references located in respondent’s LexisNexis
search for the terms “backrack/back rack” demonstrated a
generic use of either term for headache racks.98 Similarly,
the printouts from respondent’s internet searches do not
show use of BACKRACK as a generic term.99
h) Respondent’s Efforts to Police Mark

98 See Exhibits B1-B41 to Notice of Reliance for Respondent’s
Exhibits A-P (Docket ## 59-60). Only 4 of the 41 references in
Exhibit B refer to pickup truck racks: Exhibits B1-B3 refer to
respondent’s product and Exhibit B29 does not contain sufficient
information to ascertain whether the product mentioned in the
Canadian publication was respondent’s product. If a document
obtained from the internet identifies its date of publication or
date that it was accessed and printed, and its source (e.g., the
URL), it may be admitted into evidence pursuant to a notice of
reliance in the same manner as a printed publication in general
circulation in accordance with Trademark Rule 2.122(e). Safer
Inc. v. OMS Investments Inc., 94 USPQ2d 1031, 1039 (TTAB 2010).
99 Exhibits A1-A34 to Notice of Reliance for Respondent’s Exhibits
A-P (Docket # 59). Although these Exhibits are dated June 24,
2009, well after the filing of this proceeding, they corroborate
the non-generic use of BACKRACK as shown in other Exhibits that
are dated prior in time.
Cancellation No. 92049332
44
A term may become generic over time through common
usage if it is not policed as a trademark and it is commonly
used to describe a type of product. Bellsouth, 35 USPQ2d at
1557.
i) Unauthorized Use by Third Parties
Although respondent approved the advertisements
published in Armor Deck’s 1994-95, 1996, 1998-99, 2000-01,
2002-03, 2003-04, 2005-06, 2006-07 catalogs,100 until
recently, respondent did not require that it approve or
review promotional materials published by its distributors.
Instead, respondent provided its distributors with
authorized images, templates and layouts for ad copy. Since
2008, authorized images and text are available for download
from respondent’s website upon entry of a password.101
As early as 2006, respondent instructed its attorney to
keep “an eye out” for infringement of its mark.102 In July
2006, respondent’s counsel sent a cease and desist letter to
AWATEC Industries Inc. of Quebec regarding its use of the
term BACKRACK in Canada and the U.S. AWATEC subsequently
agreed to change its website to remove reference to the
BACKRACK trademark.103

100 Setteducati Dep. I. p. 205 (Docket # 53); STK Exhibit 98A-L,
paragraph 22 (Docket ## 53-54).
101 Jayne Disc. Dep. pp. 142-143, 213-216; 229-231; 260-261; 264-
265; 278; 293-298 (Docket # 43).
102 Jayne Test. Dep. p. 206 (Docket # 56).
103 Jayne Test. Dep. pp. 38, 185-196 (Docket # 56); Backrack
Exhibits 119 No. 42 (Docket # 57), 120 (Docket # 58).
Cancellation No. 92049332
45
Respondent’s website bears the following notice which
was published on the site in early 2007:104

In January 2008, respondent filed a Notice of Claimed
Infringement with eBay concerning a person who welded his
own racks and offered them for sale under the name
“Backrack.” The person subsequently agreed to change the
text of his listing.105 During that same month, respondent
also was successful in getting internet retailer BigBoys-
Custom Toys to agree to cease its use of BACKRACK and Back
Rack.106
A few months later in May, 2008, respondent’s attorney
sent a letter to Westcan Manufacturing Ltd. of British
Columbia requesting that it cease use of the term Back Rack
on its website. Westcan entered into a written undertaking

104 Petitioner’s Exhibit 19 (Docket # 44); Jayne Disc. Dep. p. 149
(Docket # 43).
105 Jayne Disc. Dep. pp. 314-316 (Docket # 43); Petitioner’s
Exhibit 60 (Docket # 44).
106 Jayne Disc. Dep. pp. 317-320 (Docket # 43); Petitioner’s
Exhibit 61 (Docket # 44).
Cancellation No. 92049332
46
to remove all references from its website and to destroy
offending print materials.107
In January 2009, respondent’s counsel sent letters to
Domains By Proxy, Inc. regarding the improper use of the
term BACK RACK on the automotivemart.net, commze.com,
topautoteam.com, shiponsite.com, askyouropinion.com
websites. Subsequent checks indicated that all but one of
the references were removed.108
In July 2009, respondent’s counsel sent a cease and
desist letter to BuyAutoTruckAccessories.com regarding its
use of BACKRACK on its website. It followed up with a
September 2009 letter to AT&T WorldNet Services regarding
the use of BACKRACK on the buyautotruckaccessories.com
website.109
In June and July 2010, respondent sent Notices of
Claimed Infringement to eBay regarding use of “Back Racks”
in connection with headache racks of Highway Products and

107 Jayne Disc. Dep. pp. 303-309 (Docket # 43), Petitioner’s
Exhibit 58 (Docket # 44); Jayne Test. Dep. pp. 197-200 (Docket
# 56), Backrack Exhibit 119 No. 43 (Docket # 57).
108 The references on the commze.com and shiponsite.com sites were
not found, technorati.com agreed to remove the blog postings from
commze.com and topautoteam.com, and askyouropinion.com agreed to
remove the reference to “back rack;” there is no indication of
compliance with respondent’s request for removal from
automotivemcar.net. Jayne Test. Dep. pp. 41-47, 51-55, 58-59
(Docket # 56); Backrack Exhibits 122, 123, 125, 126, 127, 129
(Docket # 58).
109 Jayne Test. Dep. pp. 48-51 (Docket # 56); Backrack Exhibit 124
(Docket # 58).
Cancellation No. 92049332
47
others; eBay sent confirmations that offending listings were
removed.110
When questioned about the timing of the flurry of
letters sent to various third parties complaining about
their improper use of the BACKRACK trademark since 2009,
i.e., the letters were sent after this proceeding was
instituted in May 2008, respondent’s president testified
that the misuses of its mark came to its attention in
connection with this cancellation proceeding111 and that
within the last year [i.e., from April, 2009], respondent’s
attorney began to monitor third party websites on behalf of
respondent.112
Even if respondent did not maintain control and misuse
of its mark occurred, it must be shown that the misuse was
of such significance to permit an inference that the mark is
generic. Tea Board of India, 80 USPQ2d at 1887 citing
Formica Corporation v. The Newnan Corp., 149 USPQ 585, 587
(TTAB 1966) (“It is well settled that a party asserting that
an otherwise arbitrary trademark for an article has become a
common descriptive name for the article has the burden of
showing not only that the mark has been misused in the
manner stated but that the misuse thereof has been so
widespread and of such duration that there can be no doubt

110 Jayne Test. Dep. pp. 60-64 (Docket # 56), Backrack Exhibits
130-132 (Docket # 58).
111 Jayne Test. Dep. pp. 203-204 (Docket # 56).
Cancellation No. 92049332
48
that to the trade and/or to the public generally the mark
identifies the article as to kind rather than as to
source”), rev’d on other grounds, 396 F.2d 486, 158 USPQ 104
(CCPA 1968).
Although the timing of respondent’s more recent
policing efforts in 2009 diminishes their impact on the
significance of the mark, respondent took steps to enforce
its trademark rights even prior to the institution of this
proceeding and the fact that many of the recipients complied
with respondent’s request to cease use of the BACKRACK
trademark supports their recognition of BACKRACK as a
trademark rather than a generic term.
ii) Failure to Police Keyword Purchases
According to petitioner, respondent’s failure to police
use of the term “backrack” in connection with certain
internet activities, namely, third parties’ purchase of the
keyword “backrack” and use of the “backrack” term on eBay,
contributes to the genericness of the BACKRACK mark.113 In
support for this position, petitioner cites to Rescuecom
Corp. v. Google, Inc., 562 F.3d 123, 90 USPQ2d 1287 (2d Cir.
2009) and Hearts on Fire Co., LLC v. Blue Nile, Inc., 2009
U.S. Dist. LEXIS 25968 (D. Mass. 2009).
As explained in Rescuecom, internet search engines such
as Google, allow third parties to purchase terms (known as

112 Jayne Disc. Dep. pp. 237-238 (Docket # 43).
Cancellation No. 92049332
49
“keywords”). When entered as a search term, the keyword
triggers the appearance of the advertiser’s ad and link to
its website. Thus, by purchasing “backrack” as a keyword,
sellers of headache racks can cause Google search results to
display their ads and links whenever a user of Google
launches a search based on the search term “backrack.”
Rescuecom, 90 USPQ2d at 1289.
While respondent admitted that it never investigated
whether others use the BACKRACK trademark to attract
purchasers to their site such as by purchasing “backrack” as
a keyword,114 petitioner’s argument is not compelling for
several reasons. First, the Rescuecom and Hearts on Fire
cases cited by petitioner were decided in 2009, well after
this cancellation proceeding was instituted. Second, the
state of the law in this area is far from clear. Only
recently has a federal court of appeals provided a plaintiff
trademark owner with the opportunity to show that Google’s
keyword program creates a likelihood of confusion. And its
decision stopped short of determining whether the plaintiff
is likely to succeed in proving that the sale of trademarks
as keywords infringes its trademark rights. See Rosetta
Stone Ltd. v. Google, Inc., 676 F.3d 144, 102 USPQ2d 1473,
(4th Cir. 2012). In view of the evolving status of the case
law in this area, respondent’s failure to pursue purchasers

113 Petitioner’s Brief pp. 11-12, 29-30.
Cancellation No. 92049332
50
of “backrack” as a keyword is not evidence of failure to
police its mark.
Moreover, the fact that other parties purchase
“backrack” as a keyword is not probative of the significance
of the term without evidence of why they purchased it as a
keyword. If parties purchase “backrack” as a keyword due to
its trademark significance, i.e., its association with
respondent’s products, this undermines the alleged
genericness of the mark.
Interestingly, it appears that competitors and
distributors have purchased “backrack” as a keyword. When
“backrack” is entered into an internet search, websites
other than respondent’s site are identified in the search
results. Clicking through to these websites reveals that
they identify competitive products as truck racks, cab
racks, truck headache racks, headache racks, but not as
“back racks.”115 This is consistent with other evidence
discussed above that shows sellers of headache racks do not
use the term BACKRACK as the generic term for headache racks
in their promotional materials.
In an effort to protect its BACKRACK trademark,
respondent has recovered domain name registrations that
include the term “backrack” from third parties, redirecting

114 Jayne Disc. Dep. P. 302 (Docket # 43).
115 Setteducati Dep. I. pp. 78-80, 83-89, 102-111 (Docket # 53),
STK Exhibit 99A-C, G (Docket # 54).
Cancellation No. 92049332
51
such domains to its own website, and maintains at least 13
different domain name registrations that include its
BACKRACK trademark to ensure they are not registered to
others:116
backrack.biz
backrack.bz
backrack.ca
backrack.cc
backrack.com
backrack.de
backrack.info
backrack.mobi
backrack.org
backrack.tv
backrack.us
backrack.us.com
backrack4trucks.com.
Petitioner points to consumers’ alleged use of
“backrack” as a noun on various internet sources such as
eBay, plowsite.com, craigslist.org and blogs, arguing this
evidences that “backrack” has become a generic term for a
headache rack.117 A review of this evidence reveals that the
vast majority of it is so ambiguous that is impossible to
draw any reliable conclusions. For example, of the 23
exhibits in STK Exhibit 100, four specifically refer to
respondent’s product, six show the term “Backrack” with a
capital letter “B” indicating possible trademark

116 Jayne Test. Dep. pp. 21-22 (Docket # 56); Backrack Exhibit
119, No. 26 (Docket # 57); STK Exhibit 118 Registrant’s
Objections and Answers to Petitioner’s First Set of
Interrogatories to Registrant Nos. 8 and 13 (Docket # 45).
117 Petitioner’s Brief pp. 11, 29-30; Setteducati Dep. I pp. 128-
169 (Docket # 53), Exhibit 100A-W (Docket # 54). Petitioner did
not contact any of the persons placing the listings and does not
Cancellation No. 92049332
52
significance, and eleven others are inconclusive in that it
is not possible to ascertain whether the “backrack” product
referred to in the listing is an actual BACKRACK brand
product. Thus, of the 23 listings, 10 support the trademark
significance of BACKRACK and 11 are inconclusive. The
remaining two exhibits in STK Exhibit 100 are copies of
postings from internet chat forums selected by petitioner to
show misuse of the BACKRACK trademark. Although a number of
the postings appear to utilize the term “backrack” as a noun
(“where is the cheapest place to get a backrack,” “I plan on
getting a backrack . . .”) they lack critical information
such as whether the person was referring to a BACKRACK brand
product, and are therefore not probative. Similarly, in an
eBay search identifying 44 results for “back rack,” only 5
of those listings have accompanying images that do not
feature the BACKRACK brand product.118
The foregoing evidence does not show either that the
public uses, or understands, the term “backrack” to be
generic and therefore does not support the genericness of
the mark. See In re 1800Mattress.com IP LLC, 586 F.3d 1359,
92 USPQ2d 1682, 1685 (Fed. Cir. 2009).

know if what is shown in the images corresponds to the listings.
Setteducati Dep. II pp. 121-122 (Docket # 55).
118 It is noted that 3 of these 5 listings appear to be on behalf
of Highway Products and thus do not constitute additional uses by
a third party. Setteducati Dep. I. pp. 181-189 (Docket # 53),
STK Exhibit 103 (Docket # 54).
Cancellation No. 92049332
53
C. Summary
Petitioner has the burden of overcoming the
registration's presumption of validity and showing by a
preponderance of the evidence that the term BACKRACK is used
or understood by the relevant public primarily to refer to
headache racks rather than a particular headache rack
manufactured and sold by respondent. Magic Wand, 19 USPQ2d
at 1554; Dan Robbins & Assoc., 202 USPQ at 105.
As revealed by the foregoing discussion, there is a
mixed record in this case. However, this does not preclude
us from holding that BACKRACK has not become a generic term
for headache racks. See In re America Online, Inc., 77
USPQ2d 1618, 1623 (TTAB 2006). The determination of
genericness is heavily dependent on the factual
circumstances. The cases on which petitioner relies are
distinguishable from the present case. Unlike the
circumstances in this case, several of the cases cited by
petitioner found the term at issue to be generic due to the
lack of use of another term that described the product at
issue. See, Colt Defense LLC v. Bushmaster Firearms Inc.,
486 F.3d 701, 82 USPQ2d 1759 (1st Cir. 2007) (Colt did not
identify any term that described the characteristics of its
type of gun; articles written for consumers utilized term in
generic sense; term used generically by several competitors
in their advertising); Pilates Inc. v. Current Concepts
Cancellation No. 92049332
54
Inc., 120 F.Supp2d 286, 57 USPQ2d 1174 (S.D. N.Y. 2000)
(evidence established that no other word was used to
describe the products and services based on the Pilates
method, PILATES is necessary to describe the exercises and
teachings that comprise the Pilates method); Bayer Co., Inc.
v. United Drug Co., 272 F. 505 (S.D.N.Y. 1921) (consumers
only knew product as “Aspirin”); Kellogg Co. v. National
Biscuit Co., 305 U.S. 111 (1938) (competitor entitled to use
name by which product generally known “Shredded Wheat”); In
re Sports Tigers, 213 USPQ 670, 671 (TTAB 1982) (HOCKER used
as apt and only name for athletic game), and in other cases,
the trademark owner failed to take steps to identify the
mark as a trademark, see Birtcher Electro Medical Systems
Inc. v. Beacon Laboratories Inc., 738 F.Supp. 417, 16 USPQ2d
1411 (D. Colo. 1990) (none of the publicly disseminated
literature designated the term as a trademark by using the ™
symbol; application for registration of the term claimed as
a trademark was never made).
We find that the evidence of generic use of
respondent’s BACKRACK mark is offset by evidence of the
overall context of respondent’s trademark use of the term
BACKRACK, a less than rigorous but sufficient level of
policing and control over use of the mark by others,
recognition of the trademark significance of the mark by
competitors and sellers, and a lack of evidence that the
Cancellation No. 92049332
55
primary understanding of the term BACKRACK to end-purchasers
of headache racks is as a generic term.

Decision: The petition for cancellation of
Registration No. 3014986 is dismissed with prejudice.