TTAB Reverses Genericness Refusal Of "DOCK BLOCKS" For Modular Floating Non-Metal Docks Due To Mixed Evidentiary Record

• Published date: 12 September 2022
• Subject Matter: Intellectual Property, Trademark
• Law Firm: Wolf, Greenfield & Sacks, P.C.
• Author: Mr John L. Welch

In 57-page decision that includes an exhaustive review of the evidence, the Board reversed a genericness refusal of the proposed mark DOCK BLOCKS for "modular floating non-metal docks" due to a mixed evidentiary record of uses of the term by Applicant. However, the Board affirmed a Section 2(e)(1) mere descriptiveness refusal because Applicant's Section 2(f) evidence for this highly descriptive term fell "far short" of establishing acquired distinctiveness . In re Dock Blocks of North America, LLC, Serial No. 88320379 (September 8, 2022) [not precedential] (Opinion by Judge Chritopher Larkin).

Genericness: The Board, in agreement with applicant and Examining Attorney April Roach, found that the genus of the goods is "modular floating non-metal docks." Applicant did not appear to dispute that "dock" and "blocks" are each individually generic for the goods, but it argued that the examining attorney had failed to provide "any examples where the combination mark having the constituent terms 'dock blocks' is used by any third party in association with their products." The Board, however, found that argument unavailing: "The fact that there is no evidence of third-party use of the precise term [DOCK BLOCKS] is not, by itself, necessarily fatal to a finding of genericness." Mecca Grade Growers, 125 USPQ2d at 1957.

In Mecca Grade Growers [MECHANICALLY FLOOR-MALTED], Empire Tech. [COFFEE FLOUR], and Gould [SCREENWIPE), the Board looked to the applicant's own use of the proposed mark in finding each mark to be generic names for the involved goods. Here, Applicant uses "Dock Blocks" both as a compound noun and as an adjective modifying "floating dock systems" in its public-facing materials. The former is a generic use of the term, while the latter is not.

Applicant's own uses of "Dock Blocks," which are by far the strongest evidence of the possible genericness of the proposed mark, are in the nature of what the Federal Circuit and the Board have called "mixed use" of the proposed mark as both a generic name of the goods and a putative source-indicator for them. See, e.g., In re Merrill Lynch, Pierce, Fenner & Smith, Inc., 828 F.2d 1567, 4 USPQ2d 1141, 1143 (Fed. Cir. 1987); Alcatraz Media, Inc. v. Chesapeake Marine Tours Inc., 107 USPQ2d 1750, 1765 (TTAB 2013), aff'd mem., 565 F. App'x 900 (Fed. Cir. 2014). "Mixed" use of this sort is incompatible with a finding that the primary significance of the proposed mark is as the generic name for the involved genus of...