The Board first found the genus of the goods to include those identified in the challenged registration, plus synonymous names for headache racks (headache guards, cab guards, window guards, cab protectors, cab racks, truck racks, and cab protection). The relevant public includes distributors, retailers/jobbers, and commercial and non-commercial end users.
Petitioner STK asserted that this case is like In re Gould, where SCREENWIPE was held to be generic for ... guess what? - based on definitions of the constituent words. Here, however, the word "back" and "rack" have many meanings, and BACKRACK is registered and used for various goods completely unrelated to headache racks..
Although Respondent occasionally misuses the term BACKRACK, these misuses have not destroyed the mark. Based on the overall manner in which Respondent has marketed its products, the Board found it "more likely than not that the relevant public recognizes BACKRACK as a brand name."
The evidence did not show a competitive need to use the term "backrack," since there are a number of synonymous names available. As to third-party usage of the term, some used it as a trademark, others as a generic term. But the misuse was not so widespread and of such a duration as to deprive BACKRACK of all trademark significance.
As to consumer understanding of the term, there was no evidence establishing how end-customers use the term. Petitioner's "homemade" survey was flawed throughout and proved nothing. BACKRACK was not used generically in the printed publications placed in evidence.
Turning to Respondent's policing efforts, much of the activity occurred after this case began, but Respondent did in fact attempt to enforce its rights earlier, and many complied with Respondent's requests. Respondent has also recovered various domain name registrations that include the term "backrack."
Petitioner STK asserted that Respondent had failed to police keyword purchasing, but the Board found that argument not compelling:
Only recently has a federal court of appeals provided a plaintiff trademark owner with the opportunity to show that Google's keyword program creates a likelihood of confusion. In view of the evolving status of the case law in this area," respondent's failure to pursue purchasers of 'backrack' as a keyword is not evidence of a failure to police its mark.
Moreover, other parties may be purchasing "backrack" as a keyword because of its trademark significance and association with Respondent's products.In fact, the keyword l"backrack" leads to websites where competitive products are referred to by other names, not as "back racks."
On this mixed record, the Board concluded that the evidence of generic use was offset "by evidence of the overall context of respondent's trademark use of the term BACKRACK, a less than rigorous but sufficient level of policing and control over use of the mark by others, recognition of the trademark significance of the mark by competitors and sellers, and a lack of evidence that the primary understanding of the term BACKRACK to end-purchasers of headache rack is as a generic term."
And so the Board dismissed the petition for cancellation.
TTABlog comment: Why wasn't this opinion precedential?
Text Copyright John L. Welch 2012..
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