IP Law Daily, TRADEMARK—TTAB: Proposed mark MENTCHEES held generic and merely descriptive of toy figures, (Feb 12, 2025)

By Justin Marcus Smith, J.D.

The mark was “vernacular” and equally generic as to toy figures and a subgenus of toy figures represented in traditional Jewish attire.

Chazak Kinder, Inc. showed that the relevant public primarily viewed Mitzvah Kinder, Inc.’s proposed mark, MENTCHEES, as a generic designation for toy figures, held Trademark Trial and Appeal Board (T.T.A.B.), in a non-precedential opinion. The finding of genericness applied equally to a subgenus of toy figures dressed and coiffed in traditional ethnic Jewish attire. The T.T.A.B. sustained the opposition. Both parties focused on whether MENTCHEES is a diminutive, despite the fact that neither party submitted expert testimony from a linguistics or etymology expert. The T.T.A.B. said it did not rely on any party testimony. Instead, it based the finding of genericness on retailer screenshots. MENTCHEES was also merely descriptive, and applicant Mitzvah Kinder did not submit any evidence on the question of acquired distinctiveness (Chazak Kinder Inc. v. Mitzvah Kinder, Inc., No. 91272685 (T.T.A.B. Jan. 28, 2025)).

Background. Brooklyn, New York-based applicant Mitzvah Kinder, Inc. (applicant), a seller of toy figurines, sought to register on the Principal Register the standard character mark MENTCHEES for “Toy figures; modeled plastic toy figurines; Molded toy figures” in International Class 28. Opposer Chazak Kinder, Inc. (opposer), a Brooklyn, New York-based toy designer and wholesaler of toys sold under the brand KINDERVELT, opposed registration of the proposed mark on the basis that it was merely descriptive under 15 U.S.C. § 1052(e)(1) and had not acquired any distinctiveness under 15 U.S.C. § 1052(f). Applicant and opposer were direct competitors.

The opposer said it needed to use the term “mentchies” to describe its toy figurines. It argued registration of MENTCHEES would impede description of its own toy figurines and cause financial harm. The applicant admitted that “mentch” is one spelling of a colloquial Yiddish word for a person who is good to other people or who has integrity and honor. The applicant otherwise denied the opposition.

The T.T.A.B. found it could try the claim of genericness by implied consent under Fed. R. Civ. P. 15(b)(2) insofar as opposer did not assert a genericness claim in notice of opposition, but argued genericness throughout its brief, and the applicant substantively countered the opposer’s arguments without objection.

The T.T.A.B. disregarded all “expert” opinion because neither party telegraphed any intent to call witnesses at trial. For example, the T.T.A.B. disregarded any opinion testimony about whether the proposed mark was Yiddish. Rather than strike the testimony altogether, the T.T.A.B. considered it for factually probative value. The T.T.A.B. sustained the opposition.

Genericness. The T.T.A.B. applied the Marvin Ginn two-step genericness inquiry and sustained the opposition on the genericness claim. See H. Marvin Ginn Corp. v. Int’l Ass’n of Fire Chiefs, Inc., 782 F.2d 987, 228 USPQ 528, 530 (Fed. Cir. 1986).

First, as to the genus of the goods and services at issue, the T.T.A.B. found the record showed the applicant’s toy figures and figurines, for example, the Zeidy and Bubby grandparent characters, “dressed in traditional Jewish attire and/or coiffed with traditional Jewish hairstyles.” The T.T.A.B. therefore found the genus defined by the identification, “Toy figures; Modeled plastic toy figurines; Molded toy figures.” This unrestricted genus was sufficiently broad to encompass the narrower category of traditionally-attired and coiffed Jewish figurines at issue here.

Second, the relevant public comprised ordinary buyers of toy figures, including, again, the ethnic toys at issue here. As to whether that relevant public would understand MENTCHEES as primarily referring to the toys at issue here, was a question of fact, the T.T.A.B noted there are “no English or Yiddish dictionary definitions in the record for the proposed mark MENTCHEES or its phonetic equivalent.” Even so, the absence of a dictionary definition was not controlling on the question of genericness if the record showed that the term has a “well understood and recognized meaning.” Evidence of current usage may carry more weight than dictionary evidence, and the T.T.A.B. said such was the case here.

The record included many third-party website screen captures or excerpts showing use of the term “mentchees” or the phonetic equivalent thereof as a designation for the subcategory of ethnic toy figures at issue here. The most persuasive third-party website evidence included a screen capture from online retailer Judaica Plaza. That screen capture showed a mix of the applicant’s and opposer’s products, including various “family packs” representing various members of a typical family (e.g., cousins) or family members in holiday contexts (e.g., Sabbath, Purim). An Eichlers screenshot showed “Menchies” as a standalone category of products containing a comparable mix of both parties’ products. The T.T.A.B. cited other examples, including a Walmart screenshot, and it embedded various exemplar screenshots in the body of its opinion. The opposer’s competing uses were also probative, and the opinion included examples of these, too.

The T.T.A.B. concluded the third-party and competitor evidence belied the applicant’s contention that MENTCHEES should be viewed as a Yiddish neologism, i.e., an essentially meaningless ethnic expression. On the contrary, the evidence showed “mentchee” or its phonetic equivalent is “now part of the U.S. English vernacular to denote a subtype of ‘toy figure; modeled plastic toy figurines; molded toy figure.’” The T.T.A.B. clarified that singular or plural use was irrelevant.

The T.T.A.B. said it was “unpersuaded” by the applicant’s submission of copies, by notice of reliance, of third-party registrations consisting of standard character marks comprised of the term MENSCH or its phonetic equivalent on the Principal Register. Examples included, perhaps most notably, MENSCH ON A BENCH. The T.T.A.B. distinguished the registrations that included the word “mench” or “mensch” as “not the same” as applicant’s proposed mark MENTCHEES. The other registrations pertained to entirely different goods and services, like restaurants.

Descriptiveness. “For sake of completeness,” the T.T.A.B. considered the opposer’s alternate claim that MENTCHEES was merely descriptive of toy figures and lacked acquired distinctiveness under Trademark Act Section 2(f). The T.T.A.B. said the record evidence, which, again, consisted of online retailer screenshots, showed that MENTCHEES “immediately” conveyed to prospective consumers that the items are “dressed in traditional Jewish clothing and attire and/or coiffed with traditional Jewish hairstyles.” Moreover, consumer discernment of the nature of applicant’s goods did not require any imagination, thought, conjecture, or speculation. The T.T.A.B. accordingly found that the opposer showed, by a preponderance of the evidence, that MENTCHEES was “merely descriptive of the identified goods” and therefore “ineligible for registration” on the Principal Register without Section 2(f) acquired distinctiveness.

Acquired distinctiveness. Last, and consistent with the finding of genericness, the T.T.A.B. found the evidence showed, on a sliding scale of mere descriptiveness, that the applicant’s mark was “highly descriptive of the identified goods.”

As to whether the mark had acquired distinctiveness, there was no evidence of such in the prosecution or trial records. The applicant urged this was because it did not file its application on that basis, but the T.T.A.B. said the applicant was “mistaken.” The T.T.A.B. applicant did not make a record of any evidence of acquired distinctiveness under the Converse factors during the assigned trial period and did not submit a testimonial declaration attesting to substantial and exclusive use of its mark. See Converse, Inc. v. ITC, 909 F.3d 1110, 128 USPQ2d 1538, 1546 (Fed. Cir. 2018). Testimony alone would have been “insufficient to prove acquired distinctiveness for Applicant’s highly descriptive mark” anyway.

In lieu of competent evidence, the applicant argued the opposer failed to meet its burden by failing to show the applicant lacked substantially exclusive use of its mark. The T.T.A.B. said that was unpersuasive. The evidence showed that third-party use of “mentchees” or its phonetic equivalent to refer to the applicant’s goods satisfied the opposer’s initial burden of showing that the applicant’s use was not substantially exclusive. The burden then shifted to the applicant, but the applicant did not submit any evidence, hence the T.T.A.B. said it was compelled to sustain the opposer’s alternate claim that “mentchees” was merely descriptive and lacked acquired distinctiveness.

The Case is Opposition No. 91272685.

Judge: Lykos, A.

Attorneys: Matthew De Preter (Aronberg Goldgehn Davis & Garmisa) for Chazak Kinder Inc. Brian Roffe (Law Office of Brian Roffe) for Mitzvah Kinder, Inc.

Companies: Chazak Kinder Inc.; Mitzvah Kinder, Inc.

Cases: Trademark USPTO GCNNews