Rocheux Int’l. of New Jersey, Inc.

Trademark Trial and Appeal Board

Aug 18, 2005

No. 78262721 (T.T.A.B. Aug. 18, 2005)

Mailed: August 18, 2005

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Rocheux International of New Jersey, Inc.
________

Serial No. 78262721
_______

Myron Amer, PC for Rocheux International of New Jersey,
Inc.

Kelley F. Boulton, Trademark Examining Attorney, Law Office
102 (Thomas V. Shaw, Managing Attorney).
_______

Before Walters, Chapman and Kuhlke, Administrative
Trademark Judges.

Opinion by Chapman, Administrative Trademark Judge:
On June 16, 2003, Rocheux International of New Jersey,
Inc. (a New Jersey corporation) filed an application to
register on the Principal Register the mark SYNTHETEK for
“synthetic paper” in International Class 16, based on
applicant’s claimed date of first use and first use in
commerce of January 1, 1998. Applicant included in its
original application a claim of acquired distinctiveness
THIS DISPOSITION IS
NOT CITABLE AS PRECEDENT
OF THE TTAB
Ser. No. 78262721
2
under Section 2(f) of the Trademark Act, 15 U.S.C.
§1052(f).
In the first Office actions (both dated December 31,
2003), the Examining Attorney refused registration of the
mark as merely descriptive of applicant’s goods under
Section 2(e)(1) of the Trademark Act, 15 U.S.C.
§1052(e)(1), and rejected applicant’s claim of acquired
distinctiveness under Section 2(f) as insufficient. In
response, on June 28, 2004, applicant filed an amendment to
the Supplemental Register. The Examining Attorney then
refused registration on the Supplemental Register under
Section 23 of the Trademark Act, 15 U.S.C. §1091, on the
basis the applied-for mark is generic and incapable of
serving as a source identifier for applicant’s goods.
When the refusal to register the proposed mark on the
Supplemental Register was made final, applicant appealed to
the Board. Both applicant and the Examining Attorney have
filed briefs. Applicant did not request an oral hearing.
The issue before the Board is whether the term
SYNTHETEK is generic for applicant’s identified goods
“synthetic paper,” and thus, is incapable of serving as a
source identifier therefor and hence is unregistrable on
the Supplemental Register.
Ser. No. 78262721
3
The Examining Attorney’s position is that the term
“SYNTHETEK” is generic for synthetic paper because
consumers “would understand that the applicant’s paper is
synthetic”; that the evidence shows that “synthetic paper”
is a “specific type of paper”; and that “applicant
presented the [proposed mark] as a phonetic misspelling,
[but] the phonetic equivalent of a generic term is also
generic.” (Brief, unnumbered pages 3-4.)
During the examination process for this application,
the Examining Attorney submitted (i) The American Heritage
Dictionary (Fourth edition 2004) definition of “synthetic”
as “3b. Prepared or made artificially: synthetic leather.
…”; (ii) photocopies of several excerpted stories retrieved
from the Nexis database relating to “synthetic paper”; and
(iii) printouts from some websites on the Internet
referring to “synthetic paper.” A few examples of the
Nexis and Internet evidence are reproduced below (emphasis
added):
Headline: Gear & Guides
…And if you spill a cup of coffee while
panning a day’s journey, no problem.
They’re printed on a non-toxic synthetic
paper with a special coating that’s
designed to keep them dry and durable. …
“San Jose Mercury News (California),”
November 2, 1003;

Ser. No. 78262721
4
Headline: What’s New With Boats
…About the product: Designed for
recreational boaters, fisherman and
divers, Waterproof Charts are printed on
synthetic paper. “Asbury Park Press,”
July 11, 2003;

Headline: Local Artist Brings New Style,
Techniques To Canvas
…The latest endeavor for Mailloux is
using Yupo paper, a smooth, synthetic
paper that feels like plastic to the
touch. … “Journal and Courier (Lafayette,
IN),” May 30, 2003;

Synthetic Substrates
Durable films that feel like paper are
widely used in labels and tags, as well
as in emerging applications.
…
Brands and hybrids
“Synthetic paper is a fancy name for
plastic film with a coating on it,
typically,” says Steve Nimz, president of
Protect-All Print Media….
www.labelandnarrowweb.com; and

Synthetic Paper Industry
Publication Date: April 2001
Pages: 138
Price: $3967.50
Description:
Synthetic papers are specially treated
plastic films designed to be used by most
printing processes. These plastic-type
papers are especially useful where
moisture and/or contamination would
damage traditional paper, and are
finding increasing use in labels, tags,
maps, menus, posters, manuals, books,
covers, ID and other cards, etc. …
www.bbcresearch.com.

Applicant argues that the Examining Attorney has
established only that “synthetic paper” is generic
Ser. No. 78262721
5
according to common usage; that the Examining Attorney has
not demonstrated the word SYNTHETEK names the genus or
class of goods at issue here or that the relevant public
understands the word to refer to that class of goods; that
the mark SYNTHETEK is not the generic term for applicant’s
identified goods; that the suffix “TEK” in applicant’s mark
is the phonetic equivalent of “tech” and could refer to
“technical”; and that applicant’s applied-for mark is
capable of functioning as a mark and is entitled to
registration on the Supplemental Register.
The USPTO bears the burden of proving that the
proposed trademark is generic, and genericness must be
demonstrated through “clear evidence.” See In re Merrill
Lynch, Pierce, Fenner, & Smith, Inc., 828 F.2d 1567, 4
USPQ2d 1141 (Fed. Cir. 1987); and In re Analog Devices
Inc., 6 USPQ2d 1808 (TTAB 1988), aff’d, unpubl’d, but
appearing at 10 USPQ2d 1879 (Fed. Cir. 1989). The evidence
of the relevant public’s perception of a term may be
acquired from any competent source, including newspapers,
magazines, dictionaries, catalogs and other publications.
See Magic Wand Inc. v. RDB Inc., 940 F.2d 638, 19 USPQ2d
1551 (Fed. Cir. 1991); and In re Leatherman Tool Group,
Inc., 32 USPQ2d 1443 (TTAB 1994).
Ser. No. 78262721
6
The test for determining whether a designation is
generic, as applied to the goods or as used in connection
with the services in an application, turns upon how the
term is perceived by the relevant public. See Loglan
Institute Inc. v. Logical Language Group, Inc., 962 F.2d
1038, 22 USPQ2d 1531 (Fed. Cir. 1992). Determining whether
an alleged mark is generic involves a two-step analysis:
(1) what is the genus of the goods or services in question?
and (2) is the term sought to be registered understood by
the relevant public primarily to refer to that genus of
goods or services? See In re The American Fertility
Society, 188 F.3d 1341, 51 USPQ2d 1832 (Fed. Cir. 1999);
and H. Marvin Ginn Corporation v. International Association
of Fire Chiefs, Inc., 782 F.2d 987, 228 USPQ 528 (Fed. Cir.
1986).
In this case, while there is clear evidence that the
phrase “synthetic paper” is generic for a particular type
of plastic film used for a wide variety of products, there
is no evidence that the word SYNTHETEK is the name of the
genus for “synthetic paper.” That is, the Nexis and
Internet evidence does not establish that the term
SYNTHETEK names the genus of applicant’s involved goods.
In fact, the stories retrieved from the Nexis database and
Ser. No. 78262721
7
the websites from the Internet do not show use of
SYNTHETEK.
As the Examining Attorney stated in the final refusal:
“The evidence previously attached was located using the
applicant’s identification of goods, e.g., ‘synthetic
paper.’” Of course, the issue is whether the applied-for
mark is generic, and for whatever reasons, the Examining
Attorney made no searches on Nexis or the Internet for the
term comprising the applied-for mark, SYNTHETEK.
With regard to the second prong of the genericness
test, the record is also devoid of evidence as to how the
relevant purchasers and users would perceive the term
SYNTHETEK in relation to applicant’s identified goods,
“synthetic paper.”
Even assuming “SYNTHETEK” is a phonetic misspelling of
the word “synthetic,” we find the case now before us
distinguishable from the cases cited by the Examining
Attorney involving misspellings of terms held to be
generic. In the cases cited by the Examining Attorney, the
misspelled word mark was the generic name for the goods.
For example, In re Stanbel Inc., 16 USPQ2d 1469 (TTAB
1990), aff’d unpub’d but appearing at 20 USPQ2d 1319 (Fed.
Cir. 1991) (ICE PAK held generic for nontoxic reusable ice
substitute for use in food and beverage coolers); and In re
Ser. No. 78262721
8
Hubbard Milling Co., 6 USPQ2d 1239 (TTAB 1988) (MINERAL-LYX
held generic for molasses-based feed supplement for
livestock animals containing minerals).
Decision: The refusal to register on the Supplemental
Register is reversed.