Daniel Cohen

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB

Mailed: June 20, 2019

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Daniel Cohen
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Serial No. 87212859
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Erik M. Pelton of Erik M. Pelton Associates PLLC,
for Daniel Cohen.

Jeffrey Sjogren, Trademark Examining Attorney, Law Office 122
(John Lincoski, Managing Attorney).
_____

Before Wellington, Lynch, and Coggins, Administrative Trademark Judges.

Opinion by Wellington, Administrative Trademark Judge:

Daniel Cohen (Applicant) seeks registration on the Supplemental Register of the

term BULKOFFERS, in standard characters, for “providing a website featuring

online retail store services for the resale of bulk or wholesale merchandise, namely,

a wide variety of consumer goods, including electronics, books, watches and clothing”

in International Class 35.1

1Application Serial No. 87212859 filed on October 24, 2016, originally seeking registration
on the Principal Register based on Applicant’s allegation of use in commerce under Section
1(a) of the Trademark Act, 15 U.S.C. § 1051(a). The application was then amended, on May
12, 2017, to change the filing basis to a bona fide intent to use the proposed mark in commerce
under Section 1(b) of the Trademark Act, 15 U.S.C. § 1051(b). On August 10, 2017, Applicant
Serial No. 87212859

The Trademark Examining Attorney finally refused registration of the proposed

mark on the Supplemental Register under Section 23(c) of the Trademark Act (“the

Act”), 15 U.S.C. § 1091(c), on the ground that Applicant’s proposed mark is a generic

term for the identified services, and thus incapable of distinguishing them. After the

refusal became final, Applicant appealed. The appeal has been fully briefed by

Applicant and the Examining Attorney.

Refusal of registration on the Supplemental Register under Section
23(c) of the Act

“In order to qualify for registration on the Supplemental Register, a proposed

mark ‘must be capable of distinguishing the applicant’s goods or services.’” In re

Emergency Alert Sols. Grp., LLC, 122 USPQ2d 1088, 1089 (TTAB 2017) (quoting 15

U.S.C. § 1091(c)). Generic terms do not qualify for registration because “by definition

[they] are incapable of indicating a unique source.” In re La. Fish Fry Prods., Ltd.,

797 F.3d 1332, 116 USPQ2d 1262, 1267 (Fed. Cir. 2015) (citing In re Merrill Lynch,

Pierce, Fenner, & Smith, Inc., 828 F.2d 1567, 4 USPQ2d 1141, 1142 (Fed. Cir. 1987)

(“Generic terms… are the antitheses of trademarks, and can never attain trademark

status.”)); see also Clairol, Inc. v. Roux Distrib. Co., 280 F.2d 863, 126 USPQ 397, 398

(CCPA 1960) (“The generic name by which a product is known is not a mark which

can be registered on the Supplemental Register under [S]ection 23 because such a

name is incapable of distinguishing applicant’s goods from goods of the same name

filed an amendment to allege use, alleging a date of first use anywhere and in commerce as
of January 22, 2016, and amended the application to seek registration on the Supplemental
Register.

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Serial No. 87212859

manufactured or sold by others.”).

A generic term “is the common descriptive name of a class of goods or services.”

Royal Crown Co. v. Coca-Cola Co., 892 F.3d 1358, 127 USPQ2d 1041, 1045 (Fed. Cir.

2018) (quoting H. Marvin Ginn Corp. v. Int’l Ass’n of Fire Chiefs, Inc., 782 F.2d 987,

228 USPQ 528, 530 (Fed. Cir. 1986)). When a proposed mark is refused registration

as generic, the examining attorney has the burden of proving genericness by clear

and convincing evidence. In re Cordua Rests., Inc., 823 F.3d 594, 118 USPQ2d 1632,

1635 (Fed. Cir. 2016). “The critical issue in genericness cases is whether members of

the relevant public primarily use or understand the term … to refer to the genus of

goods or services in question.” Royal Crown, 127 USPQ2d at 1046 (quoting Marvin

Ginn, 228 USPQ at 530).

The Federal Circuit has set forth a two-step inquiry to determine whether a

mark is generic: First, what is the genus (category or class) of goods or services at

issue? Second, is the term sought to be registered understood by the relevant

public primarily to refer to that genus of goods or services? Marvin Ginn, 228 USPQ

at 530. The relevant public’s perception is the chief consideration in determining

whether a term is generic. See Princeton Vanguard, LLC v. Frito-Lay N. Am., Inc., 786

F.3d 960, 114 USPQ2d 1827, 1833 (Fed. Cir. 2015). Evidence of the public’s

understanding of a term may be obtained from “any competent source, such as

consumer surveys, dictionaries, newspapers and other publications.” Id. at 1830

(quoting In re Northland Aluminum Prods., Inc., 777 F.2d 1556, 227 USPQ 961, 963

(Fed. Cir. 1985)).

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Serial No. 87212859

With respect to the first part of the Marvin Ginn inquiry, the genus may be defined by

the services identified in the application. See In re Reed Elsevier Props. Inc., 482

F.3d 1376, 82 USPQ2d 1378, 1380 (Fed. Cir. 2007); Magic Wand Inc. v. RDB Inc., 940

F.2d 638, 19 USPQ2d 1551, 1552 (Fed. Cir. 1991) (a proper genericness inquiry

focuses on the identification set forth in the application or certificate of registration).

Here, both Applicant and the Examining Attorney agree that the recitation of services

adequately describes the relevant genus of services – online retail store services for

the resale of bulk or wholesale merchandise.2 There is also no dispute that the

relevant consumers are members of the general public inasmuch as there is no

restriction on Applicant’s trade channels and the goods being offered via the online

retail store services are described in the application as “a wide variety of consumer

goods.”

With regard to how the general public will understand BULKOFFERS in the

context of the online retail store services featuring a wide variety of bulk

merchandise, the following relevant evidence has been submitted by the Examining

Attorney (bold added for emphasis):

• Definition of the term “Bulk” as “being in large quantities or not divided into
separate units.”3

• Definition of the term “Offer(s)” as “to make available,” or “to place
merchandise on sale.”4

2 See 4 TTABVUE 10 (Applicant’s brief) and 6 TTABVUE 5 (Examining Attorney’s Brief).
3Taken from MERRIAM-WEBSTER online dictionary (www.merriam-webster.com); printouts
attached to Office Action issued on February 3, 2017 Office Action, TSDR pp. 24-31.
4 Id., TSDR pp. 33-42.

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Serial No. 87212859

• Printouts from the “Friends & Farmers Cooperative” website that offers food
products, including allowing wholesale customers access to “the bulk quantity
items . . . we will have special bulk offers specific to our wholesale customers
on a first come first serve basis.”5

• Printouts from an online retail website selling various goods, including
sparklers for weddings, with the following information, “If you wish to place a
custom order, rest assure[d] that we will honor our sparkler bulk offers for
combination orders.”6

• Printouts from an online retail linen website “SF Linen Outlet” featuring
“Bulk Offers . . . Our Bulk Offers page features bulk lots and wholesale lots
of high quality home merchandise. Anything from window curtains to show
curtains or tablecloths to towels . . .”7

• Printouts from a website “Omni Comp,” a wholesale dealer of used laptops and
refurbished notebooks. The company states that “Generally, we are selling our
equipment through the wholesale-bulk offers sent to our wholesale
customers. These bulk offers are sent using electronic mail.”8

• The following printout excerpt from the “Nature Pacific” website:9

5 Printouts from website (www.friendsandfarmers.coop); Id., TSDR p. 2-4.
6 Printouts from website (www.welovesparklers.com); Id., TSDR pp. 5-6.
7 Printouts from website (www.sflinenoutlet.com); Id., TSDR p. 7.
8 Printouts from website (www. omnicomp.us); Id., TSDR p. 8.
9 Printouts from website (www.usa.naturepacific.com); Id., TSDR pp. 11-12.

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Serial No. 87212859

• The following excerpt of an advertisement placed on Ebay website:10

• Printouts from the “Highway Entertainment” website offering various arcade
game and electronic goods for sale, with a “Bulk offers” menu advertising
“Here you can find all the latest bulk offers being offered by Highway
Entertainment. These include bulk buys for . . . please review the below bulk
offers.”11

10Printout from website (www.ebay.com) attached to Office Action issued on July 28, 2017,
TSDR p. 6.
11 Id., pp. 8-17. Although “Australian Website” is listed at the top of the first website page,
the prices are in US dollars and advertises the goods as “ships from [Japan or Australia].”
We therefore conclude that this is a website that a US consumer may peruse and shop for
electronic goods. In re Florists’ Transworld Delivery Inc., 106 USPQ2d 1784, 1786 (TTAB
2013) (a website located outside the United States may have probative value depending on
the circumstances, including whether the consuming public in the United States is likely to
have been exposed to the foreign website). See also, In re Bayer AG, 488 F.3d 960, 82 USPQ2d
1828, 1835 (Fed. Cir. 2007) (foreign websites and foreign news publication evidence possess
some probative value as to prospective consumer perception in the US because of the
“growing availability and use of the internet as a resource for news, medical research results,
and general medical information”); In re Well Living Lab Inc., 122 USPQ2d 1777, 1781 n.10
(TTAB 2017) (foreign website evidence relevant because potential consumers would likely
encounter English language websites when searching for companies offering services similar
to applicant). Thus, this Australian website is relevant to demonstrate the manner in which
the term “bulk offers” would be encountered by US consumers.

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Serial No. 87212859

• Printouts from the “American Library Association” store website offering
various book and book-related items for sale. Consumers may browse the retail
offerings by “Bundles and Bulk offers.”12

• Printouts from the “Bold-Products” website offering various haircare products
for sale, including “Bulk offers . . . Bigger and Better” before listing “products
that have been combined in a package to save you some $$$ . . .”13

• Printouts from the “Bee Budget” website offering various consumers products
for sale, including “Bulk offers . . . Buy quantity for big discounts . . .”14

• Printouts from the “Facility Solutions Depot” retail website offering various
cleaning products for sale, touting “buy in bulk . . . you can take advantage of
any of our bulk offers on your needed cleaning supplies . . . Buying in bulk is
becoming increasingly popular … our customers have a place where they can
enjoy buying cleaning supplies in bulk from the comfort of their office . . .”15

• An online article “Flexible individual or bulk offers for products in Magento
Store,” from the website Module Bazaar, describing “Magento . . . open source
eCommerce software platform” for e-merchants to attract and encourage
customers with multiple purchase “offers.”16

• An online article “Black Friday Special . . . Snatch the offers and buy products
at low cost,” giving the following advice regarding online shopping “be more
sure about the purchases with bulk offers, in that case you have to make sure
about the quality of the product . . .” 17

• An online forum “Discogs” with the question “When will Bulk offers be
available?” and a discussion of “being able to offer buyers a bulk load of
records.”18

12 Office Action issued on July 28, 2017, TSDR pp. 20-22.
13Printouts from website (www.bold-products.com) attached to Office Action issued on April
18, 2018, TSDR p. 2-4.
14 Printouts from website (www.beebudget.com), Id., TSDR p. 6-9.
15 Printouts from website (www.facility solutionsdepot.com), Id., TSDR p. 12-13.
16 Printouts from website (www.modulebazaar.com), Id., TSDR p. 14-16.
17 Printouts from website (www.entrarnomeeuface.com), Id., TSDR p. 17-18.
18 Printouts from website (www.www.discogs.com), Id., TSDR p. 24-25.

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Serial No. 87212859

• Printouts from the “K’nex” website offering toy parts, including “10 Bulk
offers on new K’NEX parts” describing this as “offers on K’NEX parts in
bulk.”19

Applicant’s website contains language that also helps demonstrate the generic

nature of the proposed mark:20

The language “Bulk Wholesale Closeout Offers” (in the top left corner) makes clear

that Applicant uses “bulk offers” to refer to the same type of online retail service for

which third parties commonly use the same wording – namely, merchandise being

sold via bulk offers. See In re Reed Elsevier Props., 82 USPQ2d 1380 (Appropriate to

consider the applicant’s website to provide context for and inform the understanding

19Printouts from website (www.knexusergroup.org.uk), Id., TSDR p. 35-36. Again, although
this is evidently a UK website, the prices are in US dollars and the website describes the
availability of shipping the products via “Airmail.” Accordingly, we find that this is website
directed, at least in part, to US consumers and thus is relevant. See Note 11.
20 Original screenshot specimen filed by Applicant with application on October 24, 2016.

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Serial No. 87212859

of the identification); In re Steelbuilding.com, 75 USPQ2d 1420 (examining the

subject website in order to understand the meaning of terms); In re Hikari Sales USA,

Inc., 2019 BL 111514, *8-9 (TTAB 2019) (Applicant’s specimen probative in indicating

how the public perceives the term).

Based on this record, we agree with the Examining Attorney that BULKOFFERS

is “shown to be generic for online retail store services for the resale of bulk or

wholesale merchandise, leaving no alternative meanings or interpretations.”21

Specifically, the record clearly and convincingly demonstrates that the combination

of the words BULK and OFFERS “into a single composite conveys the exact

definitions above — the act of making available, or placing on sale, goods and

merchandise that come in large quantities or have not been divided down into smaller

separate units for individual purchase.”22 Accordingly, we find that the consuming

public readily understands “bulk offers” to refer to a key aspect of the genus of

services by describing the particular manner in which products are sold and

purchased. See Royal Crown, 127 USPQ2d at 1047 (in a genericness determination,

the Board must “consider whether the relevant consuming public would consider the

term … to be generic for a subcategory of the claimed genus of [services]”); see also In

re Cordua, 118 USPQ2d at 1638 (“[A] term is generic if the relevant public

understands the term to refer to part of the claimed genus of goods or services, even

if the public does not understand the term to refer to the broad genus as a whole.”).

21 6 TTABVUE 13.
22 Id. at 6.

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Serial No. 87212859

Put simply, providing “bulk offers” to consumers is a class of online retail store

services featuring bulk merchandise sales.

The evidence also clearly and convincingly demonstrates a competitive need for

others to use “bulk offers” to refer to how they offer goods for sale via their online

retail services. Applicant should not be allowed to register this term and thus possibly

prevent others in the industry from using “bulk offers” in connection with their retail

store services. See In re Bos. Beer Co. L.P., 198 F.3d 1370, 53 USPQ2d 1056 (Fed. Cir.

1999); see also “Our society is better served if … highly descriptive or generic terms

remain available for use among competitors.” In re Water Gremlin Co., 635 F.2d 841,

208 USPQ 89, 91 (CCPA 1980) (footnote omitted).

We have considered Applicant’s arguments and evidence in support of

registration, but we remain convinced that the applied-for mark is unregistrable.

Specifically, we are not persuaded by the existence of the 12 third-party registrations

submitted by Applicant.23 These registrations are for marks that either contain the

term BULK or include wholesale services in their recitations; however, they have

very little or no probative value inasmuch as not one is for the same mark nor can we

find any pattern for registration of marks that could somehow apply to Applicant’s

proposed mark. In any event, as often stated, each case must stand on its

own record and be decided on its own merits, and “[n]either the

Trademark Examining Attorney nor the Board are bound to approve for registration

an Applicant’s mark based solely upon the registration of other assertedly similar

23 Copies of the registrations were attached to Applicant’s response filed on March 8, 2018.

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Serial No. 87212859

marks … having unique evidentiary records.” In re Datapipe, Inc., 111 USPQ2d 1330,

1336 (TTAB 2014); see also, In re Nett Designs, 236 F.3d 1339, 57 USPQ2d 1564.

1566 (Fed. Cir. 2001) (“Even if some prior registrations had some characteristics

similar to [Applicant’s] application, the PTO’s allowance of such prior registrations

does not bind the Board or this court.”).

Applicant also asserts that, “[t]o support a generic refusal, the Examining

Attorney must show substantial evidence that BULKOFFERS – as a compound term

– is clearly generic,” citing In re Steelbuilding.com, 75 USPQ2d 1424.24 To the extent

that Applicant argues that the proposed mark is not generic because of the lack of

space between the component words, it has long been held that a compound term does

not lose its genericness when spaces are removed if purchasers would understand the

resulting compound to be generic. To wit, the term SCREENWIPE was

held generic despite the lack of a dictionary definition for the mark as a whole: “[T]he

PTO has satisfied its evidentiary burden if, as it did in this case, it produces evidence

including dictionary definitions that the separate words joined to form

a compound have a meaning identical to the meaning common usage would ascribe

to those words as a compound.” In re Gould Paper Corp., 834 F.2d 1017, 5 USPQ2d

1110, 1111-12 (Fed. Cir. 1987). Although it is possible for “the whole [of a mark to] be

greater than the sum of its parts,” Princeton Vanguard, 114 USPQ2d at 1831, this is

not the case merely because the words “bulk” and “offers” have been joined without a

space. Rather, “the entire formulation does not add any meaning to the otherwise

24 4 TTABVUE 22.

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Serial No. 87212859

generic mark.” See Steelbuilding, 75 USPQ2d at 1421. In this case, we find that

consumers will easily and readily find BULKOFFERS is merely the compound of the

expression “bulk offers” without the space, and that it refers to a class of the genus of

services.

Decision: The refusal to register Applicant’s proposed mark on the ground that it is

a generic designation for the relevant genus of services is affirmed.

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