Recently, the Trademark Trial and Appeal Board (TTAB) decided against a petitioner seeking to cancel a registration on the Supplemental Register in SY Custom, Inc. v. The Tailory, LLC, Cancellation No. 92070568 (TTAB Aug. 12, 2021) (not precedential). The mark involved was THE TAILORY for “custom tailoring or dressmaking.” The case is noteworthy about how one can fail to prove a genericness case before the TTAB.
The petitioner, SY Custom, had the burden of proving that THE TAILORY was generic, by a preponderance of the evidence, with the ultimate test of genericness being its “primary significance to the relevant public.” Id. at 7. The TTAB had a “two-step inquiry” before it, namely, determining: a) “the genus (category or class) of the services at issue”; and b) whether THE TAILORY is “understood by the relevant public primarily to refer to that genus of services.” Id. at 8.
The genus of the services at issue was not disputed by the parties, and the TTAB determined the genus to be “coextensive” with the services in The Tailory’s trademark application, “custom tailoring or dressmaking.” Id.
The TTAB next set forth the types of evidence it considers probative of the relevant public’s understanding of a term, which “may be obtained from any competent source, including testimon[ies], surveys, dictionaries, trade journals, newspapers and other publications.” Id. at 9. To demonstrate the relevant purchasing public’s understanding of THE TAILORY, SY Custom submitted one dictionary definition for “tailory,” 32 testimony declarations from persons “involved in the clothing industry in one capacity or another” and Internet evidence. The TTAB considered the definition “probative” but the remaining evidence “much less so.” Id. at 10.
- The dictionary definition. While SY Custom adduced a dictionary definition that “tailory” is “the word or business of a tailor” and “clothing made by a tailor,” which the TTAB wrote was “strong evidence” that the word was “at best merely and highly descriptive” and that TAILORY was “quite apt” at least for “custom tailoring” and perhaps for “dressmaking services,” the TTAB did not consider it controlling on the issue of genericness. Rather, the TTAB had to consider whether the record before it demonstrated the public’s use or understanding of THE TAILORY to refer to “custom tailoring services.” at 11.
- The 32 testimony declarations. The TTAB stated that the quantity of such declarations was “impressive” but their quality was not. Id. It disparaged the declarations because 31 of them were “essentially identical and drafted by someone other than the witness, presumably [SY Custom’s] counsel,” Id., and their “form” or “cookie cutter” nature was “inherently suspect.” Id. at 15. The declarations consisted of a form with blank spaces for a declarant to fill in and alternative answers about whether “‘tailory,’ ‘tailor,’ ‘tailoring’ and/or other similar terms related to clothing services and products” were used by the declarant. The TTAB generally found the declarations “unintelligible to one extent or another.” Id. at 12-13. The declarations thus were not clear about whether the declarants had used TAILORY and they only specified that a declarant’s company “conducts business in the clothing industry” – as opposed to stating their precise business activity – which the TTAB deemed “unhelpful” because of the overbreadth of such a term; it gave no information about what a declarant’s “company does, whether it is part of the relevant public” or whether the declarant “was in a position to know how the relevant public perceives the term in question.” Id. at 15. The declarations also did not specify whether a declarant’s company was in the U.S. or whether a declarant was testifying about the use of TAILORY in the U.S. or its understanding of the term in the U.S. The declarants were also found to represent “a very small part of the relevant purchasing public,” as general consumers who seek to have tailoring done should have been considered. While one declarant did state that his company “uses and hereby states the terms, ‘tailory,’ ‘tailor,’ ‘tailoring,’ are generic to the industry for custom tailored clothing and clothing accessories,” the TTAB gave little weight to his statement because it was a legal, not factual, conclusion. The TTAB stated that it, “not a witness, must reach its own ‘ultimate conclusion on the entire record.’” [Citations omitted]. Id. at 17.
- The Internet evidence. SY Custom adduced truncated results from Google searches for six terms including “tailory.” The TTAB stated such evidence “has little probative value, because it does not typically show how a term is used in connection with any particular genus.” Id. at 18. SY Custom’s Internet evidence showed use of tailory but not how the term was used nor its context of use nor whether the uses related “to tailoring or the use of understanding of TAILORY in the United States.” Id. at 20. Some Internet evidence also showed use of TAILORY in video games as well as appearances of uses of TAILOR or TAILORING as a name of an app, a restaurant, a singer-songwriter, an element in a film name and in a name of a healthcare concern, all of which were deemed to be of limited value as bearing on the meaning of the word vis-à-vis the genus of the services. Id. at 20. Additionally, Internet evidence showing use of TAILORY by SY Custom and The Tailory just referred to their trade names and not their business activities.
Weighing all the evidence, the TTAB found SY Custom failed to meet its burden of proof that consumers of custom tailoring services in the U.S. “use or understand THE TAILORY to refer to tailoring services.” Id. at 22. The dictionary definition alone was insufficient to prove genericness and was not supported by the remaining evidence of record. Id. The TTAB noted that SY Custom could have had a different result if it had built “a more extensive record and directly relevant record” in light of the dictionary definition. Id. at 23.
The basic takeaways from the case are:
- Make sure your record is complete about the issue of genericness.
- Do not use form declarations. Interview your declarants, use their words and ensure each declarant explains the nature of his or her business and its activities in the U.S.
- Ensure your evidence about the relevant public’s understanding of a term includes all potential customers and not just one market segment, such as the trade alone.
- Ensure your evidence shows the understanding of a term in the U.S. and not abroad.
- Ensure your evidence is relevant and probative of genericness.