In Re Precision Cuts, Inc. ( 2005 )

NOTE: Pursuant to Fed. Cir. R. 47.6, this disposition
is not citable as precedent. It is a public record.
United States Court of Appeals for the Federal Circuit
05-1024
(Serial No. 76/342,048)
IN RE PRECISION CUTS, INC.
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DECIDED: May 11, 2005
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Before NEWMAN, CLEVENGER, and GAJARSA, Circuit Judges.
GAJARSA, Circuit Judge.
The appellant, Precision Cuts, Inc., appeals the Trademark Trial and Appeal
Board ruling regarding the proposed composite mark “PRECISION CUTS”. The
trademark examiner ruled that the mark was generic for barbership services, and
imposed a final disclaimer requirement. The Board affirmed. In re Precision Cuts, No.
76342048, slip op. (TTAB Jun. 30, 2004). The Board’s ruling is supported by
substantial evidence, and we affirm.
I.
Precision Cuts, Inc. (“PCI”) provides “hair care preparations” and barbering
services. On November 21, 2001, PCI filed registration application no. 76/342,048 for
the mark “PRECISION CUTS” as used with those services. The application related to
both the words “precision cuts” and certain stylized lettering.
The owner of a trademark used in commerce can apply to register the mark with
the Patent and Trademark Office (”PTO”). See 15 U.S.C. § 1051. Although the statute
precludes registration of certain marks, see 15 U.S.C. § 1052, such exceptions do not
extend to “the registration of a mark used by the applicant which has become distinctive
of the applicant's goods in commerce.” 15 U.S.C. § 1052(f). PCI sought to register its
“PRECISION CUTS” mark on the basis of such secondary meaning under § 1052(f).
The examiner found that the term “precision cuts” was generic for “barbershop
services.” In support of this conclusion, the examiner cited sixty representative
examples among hundreds returned to a NEXIS search on “precision cut”. Under 15
U.S.C. § 1056(a), the examiner required PCI to disclaim the words in the application
before he would allow the mark. In response PCI disclaimed the word “cuts”, but not
the term “precision cuts” at issue. The examiner refused to register the mark, and PCI
appealed. The Trademark Trial and Appeal Board (“TTAB” or “Board”) affirmed. In re
Precision Cuts, No. 76342048, slip op. at 14 (“[T]he Examining Attorney has shown by
clear evidence that these words are generic for applicant’s services.”).
PCI timely appealed. This court has jurisdiction under 28 U.S.C. § 1295(a)(4)(B).
II.
The court reviews de novo the Board’s legal conclusions. Hoover Co. v. Royal
Appliance Mfg. Co., 238 F.3d 1357, 1360 (Fed. Cir. 2001). Whether “precision cuts” is
a generic term for haircuts or haircutting services, or whether the words have acquired
distinctiveness, are factual issues. See In re Oppedahl & Larson LLP, 373 F.3d 1171,
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1173 (Fed. Cir. 2004); Hoover, 238 F.3d at 1360; G.H. Mumm & Cie v. Desnoes &
Geddes, Ltd., 917 F.2d 1292, 1294 (Fed. Cir. 1990). The court will affirm the Board’s
factual findings if they are supported by substantial evidence. In re Pacer Tech., 338
F.3d 1348, 1349 (Fed. Cir. 2003); Hoover, 238 F.3d at 1359. “Substantial evidence is
more than a mere scintilla. It means such relevant evidence as a reasonable mind
might accept as adequate to support a conclusion.” Consolidated Edison Co. of New
York v. N.L.R.B., 305 U.S. 197, 229 (1938).
The statute provides that “service marks shall be registrable[ ] in the same
manner and with the same effect as trade-marks.” 15 U.S.C. § 1053. However, the
statute does not permit registration of a trademark or service mark in generic terms.
See 15 U.S.C. §§ 1052 (setting forth exceptions to registration). A generic term is one
that is “common” and descriptive, as opposed to “merely descriptive”. A generic term
describes the genus of goods being sold. See In re Merrill Lynch, Pierce, Fenner, and
Smith, Inc., 828 F.2d 1567, 1569 (Fed. Cir. 1987). Although a “merely” descriptive term
can acquire secondary meaning to the consuming public, within 15 U.S.C. § 1052(f), a
generic term cannot. Id. Instead, “[a] generic term cannot be registered as a trademark
because such a term cannot function as an indication of source.” Bellsouth Corp. v.
DataNational Corp., 60 F.3d 1565, 1569 (Fed. Cir. 1995). “A generic term * * *
describes a product generally, and cannot inform the public that the product has a
particular source.” Id. As this court has stated, “[g]eneric terms, by definition incapable
of indicating source, are the antithesis of trademarks, and can never attain trademark
status.” Merrill Lynch, 828 F.2d at 1569.
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The difference between a generic and “merely descriptive” mark thus turns on
“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.” H. Marvin Ginn
Corp. v. International Ass'n of Fire Chiefs, Inc., 782 F.2d 987, 989 -990 (Fed. Cir. 1986)
(collecting cases). The court approaches the problem in a two-part analysis. The first
question, identifying genus of goods or services at issue, is not disputed – the services
are haircuts. In this case the focus is on the second step – whether the relevant public
primarily understands “precision cuts” to refer to haircuts or haircut services. Id. It was
the examiner’s burden to establish, by “clear evidence,” that the term “precision cut”
was generic. Merrill Lynch, 828 F.2d at 1571; see also Trademark Manual of Examining
Procedure § 1209.01(c)(i) (citing Merrill Lynch).
This court recently stated that “[a]ny competent source suffices to show the
relevant purchasing public's understanding of a contested term, including purchaser
testimony, consumer surveys, dictionary definitions, trade journals, newspapers and
other publications.” In re Dial-A-Mattress Operating Corp., 240 F.3d 1341, 1344-
45 (Fed. Cir. 2001). Here, the examiner concluded that the returns to a NEXIS search
on the term “precision cut” established a prima facie case that the term was generic for
haircuts. Among more than sixty representative articles, from hundreds of search
returns, “precision cut” or “precision cuts” were used to refer to a type of haircut (as in,
“that kind of precision cut requires … very little styling”, or “her specialty is the precision
cut”), or a haircare service (as in, “precision cuts, weaves, up-dos”, or “precision cuts
and hair styling, permanents, hair relaxing, …”). Relying on this evidence, the Board
affirmed, concluding that “the public would primarily understand the term ‘precision
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cut(s)’ to [identify a type or style of haircut] as a result of exposure to the uses of this
term in the excerpts from newspapers and magazines distributed to the general public.”
PCI argues this was not substantial evidence to support the finding that
“precision cut(s)” was generic. First, PCI argues that the search returns, while
numerous, were not numerous enough. Second, PCI argues that because “haircut”
might have more common usage, “precision cut” cannot be generic. Third, PCI argues
that the evidence only shows use of “precision cut(s)” by “haircare professionals, rather
than the consuming public. We find none of these contentions convincing.
The quantum of evidence required is “such relevant evidence as a reasonable
mind might accept as adequate to support a conclusion.” A reasonable person’s
credulity would be satiated by the hundreds of NEXIS search returns that the examiner,
and the Board, relied upon to establish a prima facie case that the terms are generic.
Neither the substantial evidence standard, nor the class of competent evidence under
Dial-A-Mattress, require the PTO to administer consumer surveys to discharge its
burden, and the absence of survey results from this record does not alter the sufficiency
of the evidence.
PCI’s second contention is likewise unconvincing. First, the attempt to compare
the currency of “haircut” to “precision cut(s)” fails because PCI’s evidence is not a
matter of record. Second, even were the evidence in the record, it would not disturb the
conclusion that “precision cut(s)” has generic usage for haircuts. Goods or services can
have multiple generic descriptions. See Roselux Chem. Co. v. Parsons Ammonia Co.,
299 F.2d 855, 860-61 (C.C.P.A. 1962) (“One common descriptive name of the product
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to which 'sudsy' is applied is 'detergent ammonia' but proof of this fact does not
establish that 'sudsy ammonia' is not also a common descriptive name.”).
PCI’s final argument concerning the relevance of the Board’s evidence misstates
the record. First, various advertisements by haircare professionals included in the
record are directed to the consuming public. Second, multiple references in the record
lay in articles directed to the general public and discuss services provided by various
barber shops or hair stylists. The Board did not rely solely on communications between
practitioners in a trade, or uses drawn solely from trade journals.
In short, substantial evidence supports the Board’s finding that “precision cut(s)”
is a generic term for haircuts or haircut services. Because it is generic, the term cannot
have secondary meaning under § 1052(f). See Merrill Lynch, 828 F.2d at 1569. PCI’s
evidence of secondary meaning is irrelevant.
As a result, the Board properly concluded that the term could not be registered.
Because in such circumstances the Board can require the applicant to disclaim those
portions of the proposed mark, there was no error in the Board affirming the examiner’s
final disclaimer requirement. See 15 U.S.C. § 1056(a) (“The Director may require the
applicant to disclaim an unregistrable component of a mark otherwise registrable.”).
III.
The decision of the Board is affirmed. Each side shall bear its own costs.
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