Jose Felgueroso
Abogado | Attorney
A Court Rules that the Term "Magnesita" Cannot Be Registered as a Trademark for Refractory Products or Related Services
info@josefelgueroso.com
2018-01-19
The United States Court of Appeals for the Federal Circuit has ruled that the term “magnesita” cannot be registered as a trademark because it is a generic term for refractory products and a highly descriptive term for information services related to those products.
The applicant, the Brazilian company Magnesita Refractories Company, had filed two trademark applications to register the term “magnesita”, each one for both refractory products (class 19) and related services (class 37). The English translation of “magnesita” is “magnesia” or “magnesite.”
Refractory materials have high melting points and maintain their properties at high temperatures, and they are used for lining the interior of devices that operate at high temperatures, such as furnaces and incinerators.
The trademark examiner refused registration, finding the term was generic or highly descriptive for refractory products and highly descriptive for services related to those products. The examiner, however, allowed registration of the term in the Supplemental Register regarding one of the applications for services; the Supplemental Register contains descriptive marks that are capable of becoming distinctive.
The applicant appealed to the Trademark Trial and Appeal Board (TTAB), which affirmed the trademark examiner’s refusal to register; the TTAB concluded that potential purchasers familiar with Italian, Portuguese, or Spanish would understand the term “magnesite” to refer to a magnesite brick.
The applicant then appealed to the court of appeals, arguing that the TTAB’s genericness finding was not supported by evidence and that the term “magnesita” has acquired distinctiveness.
“Magnesita” is a generic term for refractory products
The court held that “magnesita” cannot be registered as a trademark for refractory products because the term is generic for those products.
Terms cannot be registered as trademarks if they are generic for the products in question; a term is generic if the relevant public uses it primarily to refer to the class or genus in question. In particular, words referring to key aspects of a genus of certain products are generic for those products. In the case of non-English terms, the doctrine of foreign equivalents requires their translation into English to assess their descriptiveness.
The court found that the relevant public understands that “magnesia” and “magnesite” refer to the genus of refractory products. Magnesite is used as a key component in refractory products; the Industrial Minerals Association of America, for example, defines “magnesia” as a primary component in refractory materials. In addition, “magnesia brick” and “magnesite brick” are synonyms for refractory bricks.
“Magnesita” is highly descriptive for services related to refractory products
The court held that “magnesita” cannot be registered as a mark for information services related to refractory products because the term is highly descriptive for those services and the applicant failed to prove that its mark had acquired distinctiveness.
A merely descriptive term provides information about the function, characteristics, ingredients, or qualities of the goods or services. In order to foster competition and protect the freedom of the public to use the term in question, federal trademark law prohibits the registration of merely descriptive marks. This prohibition, however, can be overcome if the mark has acquired distinctiveness, that is, if the consuming public over time perceives the term to refer primarily not to the product, but to its producer; for example, the term “Coca-Cola” originally referred to two ingredients of the drink, but over time the public came to perceive that the term indicated a drink from a specific source rather than a type of drink. Highly descriptive terms require an elevated burden of proof on the part of the applicant; the evidence that may be considered for this purpose includes advertising expenditures, sales, and the length of exclusive use.
The court found that the evidence provided by the applicant was not sufficient to show acquired distinctiveness. The applicant had submitted evidence related to its gross sales for the period 2010-2014 and to its continuous, exclusive use of the term since 2008. The court, however, found that the term “magnesita” is highly descriptive, requiring more evidence to show acquired distinctiveness; in particular, the court noted that the applicant had failed to submit evidence that the public perceives “magnesita” as indicating the source of the services rather than the services themselves.
Supplemental Registration
The applicant had filed two trademark applications for the term “magnesita,” each one for refractory products (class 19) and related services (class 37). The trademark examiner had accepted that the mark in one of those applications could be registered for class 37 in the Supplemental Register, which contains descriptive marks that cannot be registered in the Principal Register, but that are capable of becoming distinctive. Thus, this aspect of the case was not at issue before the court of appeals, and the registration in the Supplemental Register for class 37 will go forward.