THUMBDRIVE: Not Generic of Flash Drives and Hence Registrable

In a precedential decision, the USPTO Trademark Trial and Appeals Board (TTAB) rules that the 10 year old THUMBDRIVE mark is not generic of flash drives even though some commentators use “thumb drive” as synonymous with “flash drive.” In re Trek 2000 Int’l Ltd., Ser. No. 77099785 TTAB (Nov. 30, 2010) (precedential) (available here). The TTAB said:

“The critical issue is to determine whether the record shows that members of the relevant public primarily use or understand the term sought to be registered to refer to the category or class of goods or services in question. H. Marvin Ginn Corp. v. International Ass’n of Fire Chiefs, Inc., 782 F.2d 987, 228 USPQ 528, 530 (Fed. Cir. 1986); In re Women’s Publishing Co. Inc., 23 USPQ2d 1876, 1877 (TTAB 1992). Making this determination involves a two step inquiry: First, what is the genus of goods or services at issue? Second, is the term sought to be registered … understood by the relevant public primarily to refer to that genus of goods or services? Ginn, 228 USPQ at 530. Evidence of the public’s understanding of a term may be obtained from any competent source, including testimony, surveys, dictionaries, trade journals, newspapers and other publications. See Merrill Lynch, 4 USPQ2d at 1143, and In re Northland Aluminum Products, Inc., 777 F.2d 1556, 227 USPQ 961, 963 (Fed. Cir. 1985).” TTAB opn. Pg. 5-6.

The burden is on the Trademark Examining Attorney, who must “prov[e] genericness by ‘clear evidence.’” TTAB opn. pg. 5 (citing In re Merrill Lynch, Pierce, Fenner & Smith, Inc., 828 F.2d 1567 (Fed. Cir. 1987) and In re Gould Paper Corp., 834 F.2d 1017 (Fed. Cir. 1987)).

Trek 2000 International Ltd. (Applicant) (www.thumbdrive.com/trek2) filed an application to register THUMBDRIVE in standard characters for “portable digital electronic devices for recording, organizing, transferring, storing, and reviewing text, data, image, audio and video files; computer software for use in recording, organizing, transferring, storing, and reviewing text, data, image, audio and video files on portable digital electronic devices” in International Class 9. Trek 2000 claimed ownership of Supplemental Register Registration No. 3175651, issued on November 21, 2006, for the mark THUMBDRIVE. The Examining Attorney initially refused registration under Section 2(e)(1) of the Trademark Act, 15 U.S.C. § 1052, on the ground that Applicant’s mark is merely descriptive and further found the Trek 2000’s declaration of acquired distinctiveness was not sufficient to establish acquired distinctiveness under Section 2(f).

Applicant Trek 2000 submitted the following evidence in support of the 2(f) claim of distinctiveness:

(1) Declaration of C.F.O. Singh providing some background as to origin of the mark THUMBDRIVE.
(2) In 2000, Trek coined the term THUMBDRIVE and continuously used it for ten (10) years.
(3) Trek designed, manufactured and sold portable storage devices under the brand name THUMBDRIVE since 2000.
(4) Between 2002 and 2007 its U.S. sales totaled over $4.3 million.
(5) Trek advertises its products under the mark THUMBDRIVE in print media and the Internet and has also promoted its products under the brand THUMBDRIVE at industry trade shows in the United States.
(6) Trek authorized other companies to co-brand and sell USB storage devices bearing the THUMBDRIVE trademark in the United States, including Memorex, Creative Technology Ltd., Imation, Iomega and TEAC.
(7) Trek designed, manufactured and sold a family of THUMBDRIVE branded products, including THUMBDRIVE Touch, THUMBDRIVE Swipe and THUMBDRIVE Tuner portable USB storage devices.
(8) Trek submitted evidence that it policed its mark.

The TTAB focused on the origin of the term as a trademark and its extensive use of the term as a trademark. TTAB opn. pg. 18

“We begin by finding that the genus of goods at issue in this case is adequately defined by applicant’s identification of goods, namely, portable digital electronic devices for recording, organizing, transferring, storing, and reviewing text, data, image, audio and video files; computer software for use in recording, organizing, transferring, storing, and reviewing text, data, image audio and video files on portable digital electronic devices. Magic Wand Inc. v. RDB Inc., 940 F.2d 638, 19 USPQ2d 1551, 1552 (Fed. Cir. 1991) ([A] proper genericness inquiry focuses on the description of [goods or] services set forth in the [application or] certificate of registration.) More specifically, the genus includes portable digital storage devices and software used in connection therewith.” TTAB opn. 17-18.

The record showed that “flash drive” is the commonly used term of art for these portable digital storage devices. The TTAB noted that several media references presented by the Examining Attorney involved publications that agreed to stop using THUMBDRIVE in a generic manner. Opn. pg. 18-19. Mainstream dictionary definitions from, for example, Merriam-Webster Online, did not have a listing for THUMBDRIVE and several listings supplied by the Examining Attorney had definitions for another term, “flash drive,” where “thumb drive” was “merely listed as a synonym.” This was viewed as weak evidence of genericness. TTAB opn. pg. 19.

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