IP Law Daily, TRADEMARK—TTAB: Proposed mark ‘BAGCORP’ rejected as generic for company that offers bags, (Jun 26, 2017)

By Linda O’Brien, J.D., LL.M.

A bulk handling and supply chain solutions provider’s application to register the mark "BAGCORP" was properly refused because the mark was generic and had not acquired distinctness, the Trademark Trial and Appeal Board has determined (In re BAG Corp., LLC, June 20, 2017, Adlin, M.).

BAG Corp., LLC, a provider of industrial bulk packaging solutions, ("the applicant") sought to register on the Principal Register the mark "BAGCORP" for "flexible intermediate sacks or bags for storage and transportation of materials in bulk." In the application, the applicant identified as a related property, its registration for the mark "B.A.G. CORP. (in typed format, with BAG CORP. disclaimed and a Section 2(f) claim as to the entire mark) for "bags for transporting goods in bulk."

The examining attorney refused the registration on the ground that the term BAGCORP was merely descriptive of the applicant’s goods under Section 2(e)(1) and the mark had not acquired distinctiveness under Section 2(f). The Applicant appealed the descriptiveness refusal. On remand, the examining attorney issued a second refusal based on genericness. The applicant appealed both refusals to register.

Genericness. The applicant’s mark was generic in connection with and incapable of distinguishing the identified gods or their source, the Board determined. First, it was undisputed that the category or class of goods or services at issue was described in the applicant’s identification of the goods—flexible intermediate sacks or bags for storage and transportation of materials in bulk ." Next, the Board explained, the applicant established that the relevant purchasing public was the wide range of businesses in the agricultural, construction, waste, transportation, food, and landscaping industries that use bags for storage and transportation.

The examining attorney relied on the dictionary definition that "bag" means a container of flexible material that is used for carrying or storing items and "corp" is an abbreviation for "corporation." Further, the applicant prominently used the term generically in selling its identified goods. When the terms "bag" and "corp" are combined into the proposed mark BAGCORP, the relevant public would understand the term to refer to a company that offers bags. In addition to the generic uses of BAG CORP and variations in bag company trade names, the examining attorney introduced evidence that several newspapers refer to bag companies generically as "bag corporations." The record as a whole left no doubt that BAGCORP considered in its entirety was generic for bags. In addition, the applicant’s disclaimer of "bag corp" in its registration was further evidence of genericness, the Board noted.

Acquired distinctiveness. The Board also found that the applicant failed to establish that the mark had acquired distinctiveness. The finding that the term "bagcorp" was generic subsumed a finding that the term was merely descriptive. Moreover, the applicant’s evidence—that the company made substantially exclusive and continuous use in commerce of its registered B.A.G. CORP. mark for 45 years, over $678,000 was spent from 2010-2015 to build awareness of the registered mark, and the company and its customers used B.A.G. CORP. and BAGCORP interchangeably—was insufficient to prove acquired distinctiveness. B.A.G. CORP. has a different commercial impression and is not the same mark as BAG CORP. Finally, the evidence of widespread use of "bag corp.," "bag corp," and variations by numerous third parties, and "bag corporation" by the media established that the applicant’s mark was not substantially exclusive and had not acquired distinctiveness. Thus, the refusals to register the applicant’s mark were affirmed.

The case is Serial No. 86438780.

Attorneys: Daniel Chalker and Jesica R. Flores (Chalker Flores, LLP) for BAG Corp., LLC.

Companies: BAG Corp., LLC

Cases: Trademark USPTO