The Board granted a petition for cancellation of a registration (issued in 2010) for the purported mark SMART WALLET for "wallets," on the ground of genericness. "Significant evidence" convinced the Board that "wallets containing RFID blocking are referred to and understood by the public as 'smart wallets' -a sub-group of wallets." Ekster Holding B.V. v. LE Holdings LLC, Cancellation No. 92076013 (January 6, 2023) [not precedential] (Opinion by Judge Cheryl S. Goodman).
The Board first found that the genus of goods at issue is "wallets," but it could "by definition, encompass more-narrowly defined goods or a sub-category such as wallets with technological and/or design features." The second part of the Marvin Ginn test requires a determination as to whether the term in question is understood by the relevant public primarily to refer to that genus. The relevant consumers consist of the public at large.
The Board observed that "[t]o determine if a mark is generic, we examine the evidence up through the time of trial." Petitioner provided dictionary definitions of "smart" and "wallet," internet references to "smart wallets," third-party websites offering "smart wallets," product listings, YouTube videos, and social media excerpts using the term.
Petitioner's witness testified that Petitioner uses "the term smart wallet to inform the public, potential customers and others, that our wallet includes smart technologies in order to be able to find your wallet after loss or theft and to protect you against RFID skimming."
Respondent argued that there are other available terms: minimalist wallet, slim wallet, or alternative wallet. According to its witness, the "term SMART is not used to describe any intellectual capability of the products themselves because the products themselves do not contain computer chips or technology."
The Board, however, found that the evidence supported Petitioner's position that the public will perceive a "smart wallet" as a "category of wallet that incorporates technology, or provides a means for incorporating technology such as GPS, and includes a wallet that prevents technology-based credit-card skimming by RFID blocking materials."
Although Respondent uses the term SMART WALLET in the manner of a trademark, that "does not overcome the wide use of 'smart wallet' in a generic sense as a sub-category of wallets by the media, bloggers, other online publications and video reviews, by consumers, and in the marketplace." Respondent asserted it has used SMART WALLET as a source identifier for its wallet for over ten years and has used SMART as a source identifier for its line of products, and as a result, consumers recognize its SMART marks on its various product lines. The Board was not impressed: "even if the relevant public associates SMART WALLET with Respondent's licensee, this cannot rebut a finding of genericness."
It is irrelevant whether Respondent was the first user of the term. "The law does not permit 'anyone to obtain a complete monopoly on use of a descriptive [or generic] term simply by grabbing it first.'" KP Permanent Make-Up. Although there may be other names for the type of wallet at issue, "it is well settled that there can be more than one generic term to name a product."
And so, the Board granted the petition for cancellation.
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