Trademark Trial and Appeal Board
Patent and Trademark Office (P.T.O.)
*1 IN RE MINNETONKA, INC.
Serial No. 458,195
April 9, 1987
Hearing: January 6, 1987
Arthur J. Greenbaum and Steven M. Weinberg for applicant
David Shallant
Trademark Examining Attorney
Law Office 7
(Lynne Beresford, Managing Attorney)
Before Rice, Krugman, and Cissel
Members
Member
An application has been filed by Minnetonka, Inc. to register 'SOFTSOAP' as a trademark for liquid hand soap in a pump-type dispenser. [FN1] Applicant has claimed that the mark has become distinctive of the goods for purposes of Section 2(f) of the Act as a result of substantially exclusive and continuous use of the mark in commerce for the five years next preceding the application filing date, and as evidenced by a separate evidentiary showing of acquired distinctiveness.
Registration has been refused under Section 2(e)(1) of the Act on the ground that the mark sought to be registered is merely descriptive or deceptively misdescriptive as applied to the recited goods. While conceding that applicant has shown that its mark has acquired de facto secondary meaning, it is the Examining Attorney's position that the mark is a generic designation for certain types of industrial soaps, some of which are used in the manufacture of personal soap products, and that, therefore, the mark is unregistrable in that it constitutes generic matter for products closely related to the goods involved herein.
Applicant has appealed.
This represents applicant's second attempt to register the mark SOFTSOAP for the recited goods and a brief recital of the circumstances leading up to this appeal is in order. Applicant filed its first application to register SOFTSOAP for liquid hand soap in a pump-type dispenser on November 15, 1978. Registration was finally refused by the Examining Attorney on the ground that the mark was a generic designation as applied to the goods. On appeal, the Board affirmed the refusal of registration, holding that the term SOFTSOAP was a common descriptive name of applicant's goods '. . . . and that, being generic for the goods, it is so highly descriptive that no quantum of evidence of acquired distinctiveness is sufficient to qualify it for registration under Section 2(f) . . . .' See: In re Minnetonka, Inc., 212 USPQ 772, 782 (TTAB 1981).
Applicant then sought review of the Board's decision by way of a civil action filed pursuant to Section 21(b) of the Act and Trademark Rule 2.145(c) in the U. S. District Court for the district of Minnesota (Civil Action No. 3-81- 1071). In connection with the civil action, applicant gathered a large amount of evidentiary material which was not of record either at the time registration was finally refused by the Examining Attorney or at the time the Board affirmed the refusal of registration. In view of this new evidentiary material, the Court, the applicant and the Patent and Trademark Office agreed to stay the civil action and further agreed that applicant would file a second application to register SOFTSOAP. As part of this agreement, applicant was to submit the additional evidence not of record prior to the civil action and the Office agreed that the Board's decision in connection with the first application would not be res judicata, stare decisis or raise any issues of collateral estoppel against applicant with respect to the examination of the new application.
*2 Pursuant to the terms of the agreement and the Order of the Court, this application, together with the additional evidentiary material, was filed. The Examining Attorney, as stated in his appeal brief at p.3, has treated the present application without any reference to either the examination or the Board decision in the first application. Our decision which follows will similarly make no reference to the prior proceeding.
It is the Examining Attorney's position that the term SOFTSOAP is not an apt name or an apt descriptive name for the recited goods and, therefore, the term is not generic on that basis. The Examining Attorney concedes that the term does not accurately describe the form or viscosity of applicant's liquid hand soap since the goods are not 'soft' in the ordinary meaning of the term. The Examining Attorney further admits that SOFTSOAP, as applied to the recited goods, can refer to characteristics other than the form or viscosity of them, such as the concepts of flattery and gentleness, both of which admittedly have positive connotations in relation to soap. The Examining Attorney states that to be legally generic as an apt name, a term should be unambiguous in relation to the goods and should not have a double entendre, citing In re Colonial Stores Incorporated, 394 F.2d 549, 157 USPQ 382 (CCPA 1968) and In re Priefert Mfg. Co., Inc., 222 USPQ 731 (TTAB 1984).
While conceding that the designation SOFTSOAP is not a legally generic term for the recited goods, the Examining Attorney nevertheless contends that registration must be refused regardless of any amount of evidence of 'de facto' secondary meaning because the term 'soft soap' is a generic designation for a type of industrial soap and hence that the term is a recognized generic term in the soap industry and in the genus in which applicant's goods fall. The Examining Attorney maintains that a recognized generic term in a particular field is absolutely unregistrable for goods in that field, citing H. Marvin Ginn Corp. v. International Association of Fire Chiefs, Inc., 782 F.2d 987, 228 USPQ 528 (Fed. Cir. 1986); In re Steel Sash Service, Inc., 160 USPQ 345 (TTAB 1960).
In support of his position, the Examining Attorney has made of record a substantial amount of evidence taken from various general references as well as specific publications relevant to the soap industry. These include excerpts from Perfumes, Cosmetics and Soaps; Soap and Detergents; American Soaps; ASTM (American Society For Testing Materials) Standards on Soaps and other Detergents; Soap Manufacture; The Modern Soap and Detergent Industry; Soap/Cosmetics/Chemical Specialties; general and specialized encyclopedic references, such as the Encyclopedia of Chemical Technology, The Encyclopedia Brittanica, and a number of soap making references, such as Making Soap With Lye and The Art of Soap Making. The Examining Attorney has further introduced a number of United States trademark registrations for various marks wherein 'soft soap' appears as one of the items in the identification of goods, as well as a number of articles taken from the NEXIS research database. The sum and substance of the evidence submitted by the Examining Attorney, only a portion of which has been referred to above, is persuasive to demonstrate that the term 'soft soap' is a recognized term in the soap industry; that said soap is an industrial type soap made from potash; that this type of soap can be used in the manufacture of some liquid shampoos and shaving cream; that liquid soap can be made from a potash type soft soap; and that soft soap is useful in cleaning environmental surfaces and inanimate objects, such as floors and automobiles, and is further used in the textile industry. One reference, American Soaps, states that soft soap is little used in the United States outside of the textile industries. It also appears that soft soap has medicinal utility in connection with pre-surgery scrubbing and in connection with some skin disorders.
*3 In the face of the foregoing evidence relating to the significance of the term 'soft soap,' applicant has submitted a large amount of evidence comprising affidavits, consumer surveys, advertising materials and articles concerning soap. This body of evidence is persuasive, and the Examining Attorney does not claim otherwise, to show that there exists a fairly substantial number of competitors in the business of selling liquid hand soap; that none of these competitors uses the term 'soft soap' descriptively, generically or otherwise in connection with its product; that the predominant common descriptive or generic designation for these goods is 'liquid soap' and that the significance of SOFTSOAP to the consuming public and to competitors in the field is that of a trademark indicating origin in applicant. Applicant has submitted a large amount of evidence relating to its sales, advertising and promotion of its SOFTSOAP product and the success it has enjoyed.
The Examining Attorney, while conceding that applicant has, in fact, demonstrated that SOFTSOAP has acquired distinctiveness, nevertheless does not believe registration may be allowed in view of the term's significance not as the generic name of applicant's goods but as the generic designation for a certain product in the soap industry, which product it appears could be used in the manufacture of applicant's liquid hand soap. It appears, then, that the crux of the Examining Attorney's refusal is that, looking at the genus of goods as being soap, under the test set forth in the Fire Chief case, supra, the term SOFTSOAP is a recognized term in that industry and refers to goods within that genus. Further, aside from the 'genus-species' test set out in the Fire Chief case, the Examining Attorney also appears to be making the argument that since SOFTSOAP is not generic as applied to applicant's liquid hand soap, but is generic of a different kind of soap product, the term is deceptively misdescriptive of applicant's goods.
We turn first to the genus-species test set out in Fire Chief. As stated by the Court, the critical issue in genericness cases is whether members of the relevant public primarily understand the term to refer to the genus of goods in question. To determine genericness, then, the Court set out a two part inquiry. First, what is the genus of goods (or services) at issue? Second, is the term understood by the relevant public primarily to refer to that genus of goods? Recognizing, as do the applicant and the Examining Attorney, that an inherent difficulty in this test is how broadly or narrowly to define the genus, we nevertheless hold that liquid hand soaps, rather than soaps per se, comprise the genus or class of goods at issue. The next question is whether SOFTSOAP is understood by the relevant public primarily to refer to that genus of goods, that is, liquid hand soaps. We think the record overwhelmingly compels us to answer this question negatively. While there is some evidence that the industrial potash soap known as soft soap has some usefulness in the manufacture of some liquid soaps, the record does not demonstrate the frequency of the use of soft soap in the manufacture of liquid hand soaps sold in the United States, or how significant an ingredient soft soap is in liquid hand soap. Contrast: In re Hask Toiletries, Inc., 223 USPQ 1254 (TTAB 1984) (HENNA 'N' PLACENTA held to be the generic name of the two key ingredients of hair conditioner and, hence, generic for hair conditioner and incapable of indicating origin).
*4 With respect to the Examining Attorney's deceptive misdescriptiveness argument, suffice it to say that we agree with applicant that to the extent a relatively small number of members of the purchasing public may be aware of the technical meaning of soft soap as an industrial or commercial type potash soap, these people would likely be members of the industry or soap maker hobbyists and the like and that, to those people, the mark SOFTSOAP as applied to liquid hand soaps might be misdescriptive, but not deceptively so since it is likely that these people would know that a soft soap would not be marketed as a liquid hand soap in a pump-type dispenser. Moreover, to the extent that SOFTSOAP may be deceptively misdescriptive as applied to applicant's goods, the inherent deceptive misdescriptiveness of the mark has long since been overtaken by the secondary meaning of the term as a distinctive indicium of origin, as evidenced by the evidentiary showing of acquired distinctiveness.
We further agree with applicant that the dictum in the Steel Sash case, supra, relied on by the Examining Attorney, to the effect that a term generic for one product cannot function as a trademark for related products is, indeed, illogical and unsupportable as a general proposition since genericness is a question of fact determined from the relevant public's perception of a given term. We note, moreover, that subsequent decisions have effectively ignored the Steel Sash dictum. See, for example, Abercrombie & Fitch Co. v. Hunting World, Inc., 537 F.2d 4, 189 USPQ 759 (2nd. Cir. 1976); In re Priefert Mfg. Co., Inc., supra.
In conclusion, it is the view of the Board that the issue of genericism is based in the basic tenet of trademark law that competitors must not be hampered from the free use of generic terms to name their goods. The record fails to show that competitors have a need to use the term SOFTSOAP as a generic designation for liquid hand soap; on the contrary, the record shows the opposite, namely, that a fairly substantial number of competitors exist and that none of them use the term but, rather, appear to use the terms 'liquid soap,' 'liquid hand soap' or variants thereof as the common name for the goods. We find, therefore, that SOFTSOAP has not been shown to be of such a nature as to preclude registration on the Principal Register upon a satisfactory showing of acquired distinctiveness; that such a showing has, without question, been made and that, therefore, the mark must be published for opposition pursuant to Section 2(f) of the Act.
Decision: The refusal of registration is reversed and the mark will be published pursuant to Section 2(f) of the Act.
J. E. Rice
G. D. Krugman
Members, Trademark Trial and Appeal Board
FN1. Application Serial No. 458,195 filed December 27, 1983.