Whales may be rare, but even rarer is a USPTO quadrifusal! The Office refused to register four marks comprising or containing the term PACIFIC WHALE FOUNDATION for promotional, educational, fundraising, and research services in the field of marine wildlife conservation [FOUNDATION disclaimed] on the ground that Applicant failed to comply with a requirement that it disclaim WHALE FOUNDATION. The Examining Attorney, citing dictionary definitions and third-party registrations, maintained that WHALE FOUNDATION is the generic name of a specific sub-category of Applicant’s services. Applicant cited other third-party registrations (e.g., AMERICAN HORSE FOUNDATION) in which no similar disclaimer is found. How do you think this came out? In re Pacific Whale Foundation, Serial Nos. 87891322, 87891333, 87891351, and 87891363 (December 18, 2020)[not precedential] (Opinion by Judge George C. Pologeorgis).

The Board found the genus of services at issue to be “the promotion of ocean and marine wildlife conservation and the scientific research and consultation, educational, and charitable fundraising services associated therewith.” The Examining Attorney argued for a narrower genus; the Board noted that a term or phrase may be generic if it refer to a subcategory or key aspect of the services. The relevant public consists of ordinary consumers who are interested in ocean and marine wildlife conservation.

To established genericness, the USPTO must make a “substantial showing” based on “clear evidence.” The Examining Attorney submitted dictionary definitions of “whale” and “foundation,” third party registration that include a disclaimer of “foundation” preceded by a qualifying term, Internet excerpts using the term “whale foundation,” and Applicant’s own website where Applicant “consistently uses the term WHALE to identify a central feature and key aspect of its identified services.”

Applicant argued that there was no evidence of its use of the entire phrase WHALE FOUNDATION in a generic manner. It submitted third-party registrations in which only FOUNDATION was disclaimed, not together with the qualifying term. And, finally, it asserted that the Office’s evidence was “woefully inadequate.”

The Board found that the eleven website excerpts and blog posts submitted by the Examining Attorney “showing limited generic use of the designation ‘whale foundation’ are insufficient to demonstrate that the designation is the generic name of Applicant’s identified services.” The Board also noted that Applicant does not use the term WHALE FOUNDATION generically. And the third-party registrations submitted by Applicant lessen the probative impact of the Office’s citations.

Quite simply, based on this record, we find that the Examining Attorney has not met his difficult burden of making the substantial or strong showing required to establish by clear evidence that the designation WHALE FOUNDATION is generic for Applicant’s identified services. At a minimum, we have doubts, on this limited record, as to whether relevant consumers would perceive the designation WHALE FOUNDATION as the generic name of Applicant’s identified services, and such doubts on the issue of genericness should be resolved in Applicant’s favor. In re DNI Holdings Ltd., 77 USPQ2d 1435, 1437 (TTAB 2005); In re Waverly Inc., 27 USPQ2d 1620, 1624 (TTAB 1993)

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TTABlogger comment: What do you think a survey would show? So does this applicant own some rights to the word “whale”?

Text Copyright John L. Welch 2020.