Tuesday, November 28, 2017

CAFC affirms Board: MAGNESITA is generic for refractory products

From within In re Magnesita:

MRC contends that this court should reconsider our
allocation of the burden of proof on the applicant to show
acquired distinctiveness in view of the Supreme Court’s
decision in B & B Hardware, Inc. v. Hargis Industries,
Inc., 135 S. Ct. 1293 (2015). In B & B Hardware, the
Supreme Court held that district courts should give
preclusive effect to Trademark Trial and Appeal Board
decisions in inter partes proceedings if the elements of
issue preclusion are met. 135 S. Ct. at 1299. B & B
Hardware is inapplicable. MRC makes no issue preclusion
argument, but rather attempts to import regulations
governing the evidentiary burdens that apply to adversarial
parties into this ex parte appeal. B & B Hardware
does not address the evidentiary burdens involved in ex
parte proceedings. Indeed, the regulations setting forth
the content requirements for a trademark application
obligate an applicant to submit proof supporting any
claim of acquired distinctiveness. 37 C.F.R. § 2.41; see La.
Fish Fry, 797 F.3d at 1336; In re Steelbuilding.com, 415
F.3d 1293, 1297 (Fed. Cir. 2005). Accordingly, we do not
read B & B Hardware as disrupting our well-settled law.


To establish that a term has acquired
distinctiveness, a trademark applicant must show
that “the primary significance of term in the minds of the
consuming public is not the product but the producer.”
Kellogg Co. v. Nat’l Biscuit Co., 305 U.S. 111, 118 (1938);
Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d
1356, 1379 (Fed. Cir. 2012). If a term is highly descriptive,
the applicant faces an elevated burden to show
acquired distinctiveness. La. Fish Fry, 797 F.3d at 1336.
To meet its elevated burden, an applicant can submit
advertising expenditures and sales success, as well as
length of exclusivity of use. Id. at 1336–37. But the
precise amount and character of evidence necessary
varies on case-specific facts and the nature of the mark.
See Roux Labs, Inc. v. Clairol, Inc., 427 F.2d 823, 829
(C.C.P.A. 1970).
As an initial matter, an applicant’s claim asserting a
term has acquired distinctiveness acts as an admission
that the term is merely descriptive. Yamaha Int’l Corp. v.
Hoshino Gakki Co., 840 F.2d 1572 (Fed. Cir. 1988); see
Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763, 772
(1992) (recognizing that § 2 of the Lanham Act “requires
secondary meaning only as a condition to registering
descriptive marks”). By claiming that MAGNESITA has
acquired distinctiveness for Class 37 services, MRC
concedes that MAGNESITA is merely descriptive for
those services. Thus, absent a showing of acquired distinctiveness,
MRC cannot register MAGNESITA as a


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