Usage of a trademark in the relevant industry is an important factor to determine whether the term would be found to be generic.
In a non-precedential decision, the Board found that DENTAL EMPORIUM is not generic for online retail services offering dental supplies. The Board recognized that the Examiner did not meet the Office’s burden of proving by clear evidence that the relevant public would perceive the term EMPORIUM of the trademark to be generic. The Board pointed out that the Examiner did not put forth any evidence showing that the term EMPORIUM is commonly used in the dental field. The Board found that the Examiner’s dictionary definition references for each term, namely, DENTAL and EMPORIUM, did not satisfy the clear evidence standard to find the mark to be generic for the applied for services.
This decision highlights a factor that appears to be one of usage of a term to deem it generic as one way to determine what the relevant public understands a term to mean.
The Board, however, did find DENTAL EMPORIUM to be “highly descriptive” and thus rejected Applicant’s 2(f) affidavit of over 5 years of continuous use. The Board noted cases where 10 years of continuous use was not enough to show that a highly descriptive tradeemark had acquired distinctiveness. Instead, the Board found that the Applicant would have to show more evidence that the trademark had acquired distinctiveness such as widespread advertising teaching the relevant public that the trademark is a distinctive source identifier.
An important teaching point in this decision is that the Board did not provide the Applicant with an opportunity to amend the mark to the Supplemental Register since the Applicant did not plead it as an option for the Board to consider. The Applicant will likely have to file a new trademark application on the Supplemental Register and rely on a non-precedential decision during the prosecution.
Practice Tip: Always plead in the alternative to allow amending the application to the Supplemental Register.