Generic terms “are by definition incapable of indicating a particular source of the goods or services.” In re Dial-A-Mattress Operating Corp., 240 F.3d 1341 (Fed. Cir. 2001). “[R]egistration is properly refused if the word is the generic name of any of the goods or services for which registration is sought.” In re Cordua Rests., Inc., 823 F.3d 594 (Fed. Cir. 2016).

A generic term “is the common descriptive name of a class of goods or services.” Princeton Vanguard, LLC v. Frito-Lay N. Am., Inc., 786 F.3d 960 (Fed. Cir. 2015) (citing H. Marvin Ginn Corp. v. Int'l Ass'n of Fire Chiefs, Inc., 782 F.2d 987 (Fed. Cir. 1986)).

Two-Part Test for Genericness

There is a two-part test used to determine whether a designation is generic: (1) what is the genus (class or category) of goods or services at issue; and (2) does the relevant public understand the designation primarily to refer to that genus of goods or services? Princeton Vanguard, 786 F.3d at 965; Couch/Braunsdorf Affinity, Inc. v. 12 Interactive, LLC, 110 USPQ2d 1458, 1462 (TTAB 2014).

“[A] term is generic if the relevant public understands the term to refer to part of the claimed genus of goods or services, even if the public does not understand the term to refer to the broad genus as a whole.” Cordua, 823 F.3d at 605 (holding CHURRASCOS, a type of grilled meat, referred to a key aspect of restaurant services); see also In re Nordic Nat., Inc., 755 F.3d 1340 (Fed. Cir. 2014) (CHILDREN'S DHA generic for DHA supplements for children); In re Northland Aluminum Prods., Inc., 777 F.2d 1556 (Fed. Cir. 1985) (BUNDT generic for ring cake mixes, i.e., the subcategory “bundt cakes”).

Any term that the relevant public uses or understands to refer to the genus of goods, or a key aspect or subcategory of the genus, is generic. Royal Crown Co., Inc. v. Coca-Cola Co., 892 F.3d 1358 (Fed. Cir. 2018). “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.” Marvin Ginn, 228 USPQ at 530.

Whether MULLET is Generic for a Subcategory of Bicycles

The Trademark Trial and Appeal Board (“TTAB”) found that “the evidence of record, when viewed in its entirety, fails to establish that the primary significance of MULLET to the relevant public is a type of bicycle, rather than a bicycle provided by a particular entity.” In re Mr. Bator LLC, Ser. No. 88244852 (Jun. 7, 2022).

The U.S. Patent and Trademark Office (“USPTO”) had asserted that the word “mullet” refers to a specific type or subcategory of bicycles, namely, a bicycle with two different sized wheels. Screenshots from various websites showed the use of “mullet” as the generic name of a subgenus of bicycles.

The Applicant, on the other hand, argued that industry professionals commonly refer to a bicycle with different sized wheels as a “mixed wheel” bike or an MX.

The TTAB noted that any doubts raised by the lack of evidence or mixed usage of a term must be resolved in the Applicant's favor, and the evidence of mixed use of “mullet” makes it unclear on this record whether the term “mullet” is generic for a subcategory of bicycles.

Further, on a different and more complete record, such as might be adduced by a competitor in an opposition proceeding, we might arrive at a different result on the issue of genericness, but we must base our determination herein on the record now before us.

Thus, the TTAB held the record failed to establish that the designation MULLET is generic for the identified goods of “bicycles” in International Class 12.

The trademark attorneys at Thomas P. Howard, LLC prosecute trademark applications before the USPTO, as well as enforce trademarks or defend against infringement claims in litigation nationwide including in Colorado.