In Re: Magnesita Refractories Company
16-2345
| Fed. Cir. | Nov 27, 2017Background
- Magnesita Refractories Company (MRC) filed two U.S. trademark applications to register the standard-character mark MAGNESITA for: (1) Class 19 refractory products (nonmetallic, heat‑resistant materials like bricks and mixes) and (2) Class 37 services (online information/repair services related to refractory products).
- Both applications included translations stating MAGNESITA means “magnesia” or “magnesite.” The PTO applied the doctrine of foreign equivalents, translating the mark to English for descriptiveness/genericness analysis.
- The examining attorney rejected registration for Class 19 as generic, and for Class 37 as highly descriptive; MRC’s §2(f) claim of acquired distinctiveness and sales/declarations were rejected as insufficient.
- The Trademark Trial and Appeal Board (TTAB) affirmed: it found MAGNESITA generic for the identified genus of refractory goods (refractory bricks, mixes, pre‑cast shapes) and highly descriptive for the Class 37 services; it also found MRC failed to prove acquired distinctiveness.
- MRC appealed. The Federal Circuit reviewed legal issues de novo and factual findings for substantial evidence and affirmed the TTAB’s decisions.
Issues
| Issue | Plaintiff's Argument | PTO/TTAB's Argument | Held |
|---|---|---|---|
| Whether MAGNESITA is generic for Class 19 refractory products | MAGNESITA at most indicates that magnesite/magnesia can be used in refractory materials; it is not the generic name of the goods | Record shows translations and independent sources use “magnesite/magnesia” to refer to refractory bricks/materials; relevant public would translate and understand MAGNESITA as the product genus | MAGNESITA is generic for the identified Class 19 genus (affirmed) |
| Whether MAGNESITA is highly descriptive for Class 37 services | (Implicit) MAGNESITA should be able to acquire distinctiveness for services based on use and sales | MAGNESITA is highly descriptive of information/repair services; sales and declarations submitted do not show source‑identifying perception by the public | MAGNESITA is highly descriptive for Class 37 services (affirmed) |
| Whether five years’ substantially exclusive use and sales figures compel a §2(f) prima facie showing of acquired distinctiveness | Five years’ substantially exclusive continuous use and sales statutory language mandates prima facie evidence of distinctiveness | The statutory “may” gives PTO discretion; for highly descriptive marks the TTAB may require more evidence of public perception/source identification | Board permissibly required more than five years/sales; MRC failed to prove acquired distinctiveness (affirmed) |
| Whether B&B Hardware changes burdens/evidence rules in ex parte appeal | B&B Hardware supports shifting evidentiary burdens or gives preclusive effect to TTAB standards here | B&B Hardware concerns issue preclusion in inter partes suits and does not alter evidentiary burdens in ex parte PTO proceedings | B&B Hardware inapplicable; existing burden rules and PTO regulations remain controlling (affirmed) |
Key Cases Cited
- Palm Bay Import., Inc. v. Veuve Clicquot Ponsardin Maison Fondee en 1772, 396 F.3d 1369 (Fed. Cir.) (doctrine of foreign equivalents explained)
- In re La. Fish Fry Prods., Ltd., 797 F.3d 1332 (Fed. Cir.) (acquired distinctiveness standard; elevated burden for highly descriptive marks)
- In re Nordic Nats., Inc., 755 F.3d 1340 (Fed. Cir.) (genericness principle and bar to registration)
- Park ’N Fly, Inc. v. Dollar Park & Fly, Inc., 469 U.S. 189 (U.S.) (definition of generic mark based on public understanding)
- B & B Hardware, Inc. v. Hargis Indus., Inc., 135 S. Ct. 1293 (U.S.) (issue‑preclusion principles for TTAB decisions — distinguished)
- Kellogg Co. v. Nat’l Biscuit Co., 305 U.S. 111 (U.S.) (secondary meaning/acquired distinctiveness statement)
- In re Cordua Rests., Inc., 823 F.3d 594 (Fed. Cir.) (words referring to key aspects of a genus can be generic)