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TTAB Continues to Rule on Genericness

In In re Hikari Sales USA, Inc., the Trademark Trial and Appeal Board (TTAB) issued a second precedential decision involving genericness, this year, just two days after issuing its first one. In doing so, the TTAB sent a strong message to brand owners hoping to obtain exclusive rights in highly descriptive or otherwise common terms.

Hikari Sales USA (Hikari) filed a trade- mark application to register the mark ALGAE WAFERS covering fish food, expressly claiming acquired distinctiveness under Section 2(f ) based on use since 1991. A USPTO examiner initially refused to register the mark on the ground that the term was merely descriptive, disregarding Hikari’s 2(f) claim. In response, Hikari submitted a declaration, advertisements and survey evidence to support its claim of acquired distinctiveness. The examiner maintained the refusal to register, asserting that the mark was generic, and noting that Hikari’s additional evidence of acquired distinctiveness showed the term being used descriptively. Hikari appealed the refusal to the TTAB.

The burden of showing that Algae Wafers is a generic name was with the USPTO. In order to succeed, clear and convincing evidence was needed that the primary significance of the term Algae Wafers to the relevant public is a product name (i.e. fish food), and not the product’s source (i.e. Hikari). The TTAB used a two-step inquiry to make the determination: “First, what is the genus of goods or services at issue? Second, is the term sought to be registered ... understood by the relevant public primarily to refer to that genus of goods or services?” The undisputed answer to the first question was fish food – the recitation of goods in the application. As for the second question, it had to be decided whether the term Algae Wafers was understood by the public as primarily referring to fish food – including fish food offered in wafer form and containing algae – requiring the TTAB to assess a wide variety of evidence.

The TTAB investigated use of the term Algae Wafers by competitors, use of the term by Hikari, dictionary definitions, media usage, use by people in the trade and the survey conducted by Hikari. Concluding that the term was generic, the TTAB pointed out that (i) a number of competitors used “algae wafers” descriptively; (ii) Hikari’s own advertising materials used the term descriptively; (iii) dictionary definitions for “algae” and “wafer” matched Hikari’s packaging, which pictured algae in disk (i.e. wafer) form; (iv) third parties used the term algae wafers in books, news stories and on websites; and (v) lawsuits filed by Hikari to stop competitors from using the term, while allegedly successful, could not be properly considered because Hikari never adduced copies of the final orders. Rejecting Hikari’s survey evidence, the TTAB pointed out a number of flaws, prior to stating the survey “is not entitled to any weight.”

This case serves as a cautionary tale to those considering using a trademark which provides an understandable message to consumers about an attribute of a product or service. Similarly, it serves as a reminder for brand owners and attorneys to consider whether, or to what extent a proposed term is descriptive, when assessing the risks of adopting a term as a trademark.

©2020 Katten Muchin Rosenman LLPNational Law Review, Volume IX, Number 114


About this Author

Karen Artz Ash, Intellectual Property Attorney, Katten Muchin

Designers, apparel manufacturers and other clothing businesses seek out Karen Artz Ash, national co-chair of Katten’s Intellectual Property department and co-head of the Trademarks and Trademark Litigation practice, because of her experience in all aspects of intellectual property, trademarks and copyrights.

Karen handles the structuring and administration of intellectual property, including establishing holding companies and trusts, and the creation, development, implementation and administration of licensing, servicing and manufacturing for companies worldwide....

Jerry Jakubovic Intellectual Property Lawyer Katten Law Firm
Staff Attorney

Jerry Jakubovic concentrates his practice on intellectual property issues and transactions, with particular focus on trademark clearance, prosecution, maintenance and enforcement, both domestically and internationally. His work includes advising clients in relation to trademark applications, refusals, renewals, licensing and all aspects of trademark disputes, including infringement, opposition and invalidity actions in the United States and abroad. Jerry's experience extends to general licensing, privacy and brand protection matters, as well as researching and negotiating copyright disputes. An extremely passionate pro bono publico advocate, Jerry serves as a liaison to various organizations, such as those supporting entrepreneurs and microbusinesses in New York City, assisting with placement and operation, and frequently handles matters personally.

Prior to joining the firm, Jerry had gained experience in intellectual property and licensing issues by working as a legal intern throughout law school at boutique law firms concentrating in intellectual property and licensing matters. Jerry primarily worked for clients in the global fashion and financial services industries. Jerry also worked as a corporate paralegal before entering law school, where he was involved in complex commercial transactions.

Jerry received his JD from New York Law School, where as an Innovation Center associate, he earned a certificate in Intellectual Property Law, which awards students who have focused considerable time and energy on vanguard issues in trademark, copyright and patent law, and was also a member of the Media, Entertainment, & Fashion Law Association as well as the International Law Society.

As an undergraduate, Jerry attended Tulane University in New Orleans, where he majored in Philosophy: Law, Morality & Society, and served as a debate team coach for local disadvantaged youth.