Trademark Trial and Appeal Board
Patent and Trademark Office (P.T.O.)
*1 IN RE RECKITT & COLMAN, NORTH AMERICA, INC.
Serial No. 73/736,589
February 13, 1991
Hearing: December 11, 1990
Frederick H. Rabin for applicant
David E. Shallant
Trademark Examining Attorney
Law Office 7
(Thomas G. Howell, Managing Attorney)
Before Simms, Hanak and Quinn
Reckitt & Colman, North America, Inc. (a company into which the original applicant, Airwick Industries, Inc., was merged) has appealed from the final refusal of the Trademark Examining Attorney to register the mark PERMA PRESS for soil and stain removers for permanent press fabrics. [FN1] The original application was filed pursuant to the provisions of Section 2(f) of the Act, 15 USC 1052(f), asserting that applicant's mark has become distinctive as a result of substantially exclusive and continuous use thereof for at least five years preceding the filing of the application. The Examining Attorney has refused registration on the ground that the words sought to be registered are generic or, in the alternative, are so highly descriptive as to be incapable of distinguishing applicant's goods from those of others. In this regard, the Examining Attorney has submitted evidence of generic use of the words "perma press." However, the Examining Attorney has held that, if the Board determines that the term PERMA PRESS sought to be registered is capable of distinguishing applicant's goods, then applicant's evidence with respect to sales of its goods under the mark since 1982 shows de facto secondary meaning, that is, the mark has acquired distinctiveness as a result of its use in the marketplace.
Applicant, on the other hand, while conceding that the words "perma press" are generic for permanent press fabrics, contends that these words are only merely descriptive of applicant's goods because they describe only the use of applicant's soil and stain remover--for permanent press fabrics or clothing. Because the Examining Attorney has assertedly not shown that PERMA PRESS is generic for applicant's soil and stain removers, applicant's attorney contends that the term is capable of distinguishing its goods from those of others.
The Examining Attorney's position may be summarized as follows. The term "perma press" is generic because it is a shortened form of the phrase "permanent press." Used in connection with a soil and stain remover for perma press garments, these words are generic because they would be perceived by the relevant public as being a nonproprietary name of a genus or category in which the goods fall--perma press products.
The examining attorney believes that if a term generically identifies the article or the type of surface or fabric a cleaning preparation is formulated for, the term is legally generic in relation to the cleaning preparation. The term which identifies the article, surface or fabric would be the [species] of the goods (here, perma press), while the [genus] of the goods would be the broader category of the basic type of cleaning preparation (here, soil and stain remover). Examples: METAL (cleaning preparation for metal surfaces), WOOL (cleaning preparation for wool fabrics), DENIM (cleaning preparations for denim fabrics), GLASS (cleaning preparation for glass), DELICATE FABRICS (cleaning preparations for delicate fabrics), NO-WAX FLOORS (cleaning preparation for no-wax floors), VINYL (cleaning preparation for vinyl surfaces), SILK (cleaning preparation for silk fabrics), WOOD (cleaning/polishing preparation for wood surfaces), CARPETS (cleaning preparation for carpets), and the like. (Examining Attorney's brief, 3-4 [FN2]
*2 While conceding that the words sought to be registered are not the common or apt name for applicant's goods (soil and stain removers), the Examining Attorney maintains that these words are in the nature of a "generic adjective," similar to others which have been refused registration, including marks involved in the following cited cases: In re Northland Aluminum Products, Inc., 777 F.2d 1556, 227 USPQ 961 (Fed.Cir.1985) (BUNDT); In re Sun Oil Company, 426 F.2d 401, 165 USPQ 718 (CCPA 1970) (CUSTOM-BLENDED); In re Helena Rubinstein, Inc., 410 F.2d 438, 161 USPQ 606 (CCPA 1969) (PASTEURIZED); Roselux Chemical Co., Inc. v. Parsons Ammonia Co., Inc., 299 F.2d 855, 132 USPQ 627 (CCPA 1962) (SUDSY); Fluid Energy Processing & Equipment Company v. Fluid Energy, Inc., 212 USPQ 28 (TTAB 1981) (FLUID ENERGY); Ethicon, Inc. v. Deknatel, Inc., 183 USPQ 503 (TTAB 1974) (COTTONY); and In re Preformed Line Products Company, 139 USPQ 271 (TTAB 1963) (PREFORMED). Much of the Examining Attorney's brief is devoted to the argument that the Board should eliminate the "hybrid category of ultra-descriptive/incapable terms" from the spectrum of terms (generic, highly descriptive/incapable, descriptive, suggestive and arbitrary). In this connection, it is the Examining Attorney's position that terms which are found to be so highly descriptive as to be incapable of distinguishing applicant's goods should be held "generic" even though they are not nouns but adjectives. Briefly, it is the Examining Attorney's position that a term which is so descriptive of a central characteristic, purpose or ingredient of a product that it tends to categorize that product is "generic" because it identifies a genus in which the product falls. According to the Examining Attorney, a genus may be any class, group or kind of things with one or more common attributes, and a product or service may be in more than one genus. That is to say (if we correctly understand the Examining Attorney's position), applicant's goods are included in the genus of all soil and stain removers as well as the genus of all perma press products (including products to be used in connection with perma press clothing). Accordingly, the fact that the term "perma press" is not the common name of one genus of applicant's goods (stain removers) does not mean that the term is registrable. Generic terms, therefore, are not to be limited to those which identify one common name of a genus in which the goods fall, but may also include terms which identify in a nonproprietary sense a different genus or category in which the particular goods also may be placed. Because the term PERMA PRESS directly describes the most important or central aspect or purpose of applicant's goods--that it is formulated for perma press fabrics or clothing--this term should be held generic and be freely available for use by competitors.
*3 Applicant, on the other hand, argues that while the term is generic of goods which may be associated with applicant's product and while its product is designed to be used on permanently pressed or perma press clothing or fabrics, the term is not generic because it does not identify a soil and stain remover.
The term PERMA PRESS is admittedly descriptive of Applicant's goods because they are designed for use on permanent press fabric; however, the term is not generic because it is not the name of a soil and stain remover. (Applicant's response, 7, filed September 14, 1987)
Counsel argues, therefore, that such terms as GLASS and COTTON would be registrable for cleaning preparations and detergents designed to clean those goods. Indeed, according to counsel's argument at oral hearing, such terms and the involved term are misdescriptive when applied to cleaning preparations and stain removers because they misidentify the product on which they are used. (That is, the product is not "perma press" but "stain remover.") Despite this argument, however, applicant's counsel conceded at the oral hearing that, if the mark sought to be registered were PERMA PRESS FABRIC, those words would be generic for applicant's soil and stain remover for use on such goods.
It is clear that the term "perma press" is a relatively common shortened form of the words "permanent press" and is generic with respect to a type of fabric or article of clothing. The evidence of record and applicant's admission establish this fact. Moreover, applicant has admitted that these words merely describe its soil and stain remover designed for use on such fabrics.
While the discussion of the Examining Attorney concerning the line of cases involving generic and highly descriptive terms which have been held incapable of distinguishing a party's goods or services is interesting, we do not find it necessary to address this matter. Suffice it to say that we believe that the term "perma press" may be considered a term identifying a category of goods at issue--perma press products (including perma press soil and stain removers). Also, in view of applicant's admission and the evidence of record, we believe that the words sought to be registered are understood by the relevant public as referring to that category of goods. H. Marvin Ginn Corporation v. International Association of Fire Chiefs, Inc., 782 F.2d 987, 228 USPQ 528, 530 (Fed.Cir.1986). See also Remington Products Inc. v. North American Philips Corp., 892 F.2d 1576, 13 USPQ2d 1444, 1449 (Fed.Cir.1990) (stating that TRAVEL CARE has "gone into the public domain as a category of goods designation"). Accordingly, we hold that the term sought to be registered is generic with respect to applicant's goods. In addition, we find that the term "prema press" is a generic term for a particular species of goods within the genus of soil and stain removers--namely, soil and stain removers for use on perma press fabrics.
*4 Decision: The refusal of registration is affirmed.
R. L. Simms
E. W. Hanak
T. J. Quinn
Members, Trademark Trial and Appeal Board
FN1. Application Serial No. 73/736,589, filed June 27, 1988, claiming use since October 1967.
FN2. It appears that the Examining Attorney has misused the terms "genus" and "species." Where the term "genus" appears, the word "species" should appear, and where the Examining Attorney uses "species," "genus" should appear. In quoting the Examining Attorney, we have inserted the correct terms in brackets.