Magic Wand, Inc. v. RDB, Inc.

• Decision Date: 30 July 1991
• Docket Number: No. 90-1512,90-1512
• Citation: 19 USPQ2d 1551,940 F.2d 638
• Parties: MAGIC WAND, INC., Appellant, v. RDB, INC., Appellee.
• Court: U.S. Court of Appeals — Federal Circuit

Page 638

940 F.2d 638

19 U.S.P.Q.2d 1551

MAGIC WAND, INC., Appellant, v. RDB, INC., Appellee.

No. 90-1512.

United States Court of Appeals Federal Circuit.

July 30, 1991.

Susan B. Flohr, of Lalos & Keegan, Washington, D.C., argued for appellant. With her on the brief was Peter N. Lalos.

J. Triplett Mackintosh, of Coudert Brothers, Washington, D.C., argued for appellee. With him on the brief were Milo G. Coerper and Robert A. Lipstein.

Before ARCHER, MICHEL and RADER, Circuit Judges.

RADER, Circuit Judge.

Magic Wand, Inc. petitioned the United States Patent and Trademark Office's Trademark Trial and Appeal Board (TTAB) to cancel the registration of the service mark TOUCHLESS for "automobile washing services." The TTAB denied the petition. Magic Wand, Inc. v. RDB, Inc., Cancellation No. 16,878 (TTAB Aug. 7, 1990). Because Magic Wand did not show that TOUCHLESS was generic in the mind of the relevant public, this court affirms.

Background

Hot Springs Auto Wash Corporation of America obtained Registration No. 1,394,353 for the TOUCHLESS mark in 1986. Later Hot Springs assigned the registration to appellee RDB, Inc. Magic Wand and RDB both manufacture automatic automobile washing systems. Their systems clean cars without brushes, cloths, or brooms contacting the car body. Instead chemicals and high-pressure water clean the vehicle.

Of the estimated 22,000 car washes in the United States, about 1,750 use this cleaning method. Twelve to fifteen companies manufacture these brushless car washes for drive-in bays. Another ten to twelve companies manufacture these chemical wash systems for conveyorized tunnel units. Some companies supply brushless technology for both kinds of automatic car wash.

Since 1983, RDB (or its predecessor) has used the TOUCHLESS service mark to identify its chemical washing system. In seeking cancellation, Magic Wand contended that TOUCHLESS had become the generic name for both chemical washing services and chemical washing equipment.

Magic Wand presented evidence that car wash manufacturers and dealers use the term generically in trade articles and advertisements. Magic Wand presented articles from the trade publications Professional Carwashing and Detailing, Professional Carwashing, American Clean Car, Auto Laundry News, and Self-Service Car Wash News. Further, the parties stipulated that 150 car washes owned or operated by Super Wash, Inc., without RDB's authorization, displayed the term TOUCHLESS over one of the car wash bays. Magic Wand presented no consumer surveys, consumer affidavits, or other evidence showing generic use or understanding by vehicle owners who purchase washing services.

The TTAB denied Magic Wand's petition. Magic Wand did not convince the TTAB that the relevant purchasing public, namely automobile owners and operators, considered the term TOUCHLESS generic for a type of automobile washing service. According to the TTAB, Magic Wand's evidence, at most, addressed the usage of operators and manufacturers of car washing equipment, not the relevant purchasing public.

Discussion

Section 1064(3) of Title 15, United States Code, permits a party to petition for cancellation of a registration for a trademark that has become generic. 15 U.S.C. Sec. 1064(3) (1988). Because determinations of genericness depend upon facts, this court must accept the TTAB's findings unless clearly erroneous. In re Advertising & Marketing Dev., Inc., 821 F.2d 614, 621, 2 USPQ2d 2010, 2015 (Fed.Cir.1987).

The TTAB determined that Magic Wand had not shown that TOUCHLESS had become generic in the minds of the relevant purchasing public. In reaching that conclusion, the TTAB limited its inquiry to automobile washing services, not washing equipment. Therefore, the TTAB found that Magic Wand's evidence did not reveal how purchasers of automobile washing services, namely owners and operators of automobiles, understood the term.

The description in the registration certificate identifies the services in connection with which the registrant uses the mark. The Lanham Act permits cancellation when a "registered mark becomes the generic name for the goods or services ... for which it is registered...." 15 U.S.C. Sec. 1064(3). Thus, a proper genericness inquiry focuses on the description of services set forth in the certificate of registration. Octocom Sys., Inc. v. Houston Computer Servs., Inc., 918 F.2d 937, 942, 16 USPQ2d 1783, 1787 (Fed.Cir.1990).

According to the registration, the mark TOUCHLESS is used in connection with automobile washing services. The TTAB appropriately considered evidence about the meaning of TOUCHLESS in the minds of the relevant public for automobile washing services. The TTAB properly based its genericness analysis on the description of services in the registration.

The Trademark Clarification Act of 1984 (1984 amendment) set forth the test for genericness:

The primary significance of the registered mark to the relevant public rather than purchaser motivation shall be the test for determining whether the registered mark has become the generic name of goods or services on or in connection with which it has been used.

15 U.S.C. Sec. 1064(3). This 1984 amendment codified the time-honored test for genericness articulated by Judge Learned Hand in Bayer Co. v. United Drug Co., 272 F. 505 (S.D.N.Y.1921): "What do the buyers understand by the word for whose use the parties are contending?". Id. at 509.

The 1984 amendment makes the understanding of the "relevant public" central to the genericness inquiry. By the words "relevant public" for a product sold in the marketplace, the Clarification Act means the relevant public which does or may purchase the goods or services in the marketplace. This meaning is evident from the context and history of the 1984 amendment.

The language of the 1984 amendment juxtaposes the "primary significance of the registered mark to the relevant public" and "purchaser motivation" tests. The amendment endorses the former and rejects the latter. The juxtaposition nonetheless suggests that both tests consider the impact of the mark on the same target group--purchasers.

The history of the 1984 amendment makes this meaning clear. Congress enacted the 1984 amendment to repudiate a new judicial doctrine which deviated from Judge Learned Hand's traditional formulation of the genericness standard. This new test for genericness centered on the motivation rather than the understanding of purchasers. See Anti-Monopoly, Inc. v. General Mills Fun Group, Inc., 684 F.2d 1316 (9th Cir.1982). The 1984 amendment restored and codified the traditional purchaser understanding test. The original sponsor of the legislation, Senator Hatch, stated:

The bill is not intended to effect important substantive changes in the mainstream of trademark law. Thus its purpose remains primarily that of clarifying and rendering more precise in the statute what the law is today an[d] should be in the years to come, undisturbed and undiverted by the troubling and potentially dangerous elements of the Anti-Monopoly case.

129 Cong.Rec. 28,866 (1983). The...