The recent United States Trademark Trial and Appeal Board decision of In re Wm. B. Coleman Co., Inc. highlights the absolute necessity for all brand owners to select distinctive and legally protectable company and brand names. Wm B. Coleman Co., Inc. found out the hard way that selecting a generic "trademark" does not – in the end – have any rewards.
The mark at issue was ELECTRIC CANDLE COMPANY for light bulbs; lighting fixtures; and lighting accessories, namely, candle sleeves. The issue in the case was whether the record showed that members of the relevant public would primarily use or understand the term sought to be registered as refering to the category of goods or services in question – which in this case were those goods listed above.
The two prong inquiry as to whether a term or terms are generic for certain goods or services is (1) what is the genus of goods or services at issue and (2) is the term sought to be registered understood by the relevant public primarily to refer the that genus of goods or services.
Based upon the evidence of record, the Board found that the genus of goods at issue is defined by the Applicant’s identification of goods, namely light bulbs; lighting fixtures; and lighting accessories, namely, candle sleeves. The Board further noted that the identification of goods encompasses products known as “electric candles.” The Board further noted that electric candles are a type of good sold by the Applicant, as evidenced by its web site: “This part is used to keep the electric candle from moving during shipment and may be discarded…Electric Candles are Safe and Convenient.”
Turning to the second inquiry, the public’s understanding of the term ELECTRIC CANDLE COMPANY, the Board found that the relevant public, when they consider ELECRIC CANDLE COMPANY in conjunction with the class of goods involved, would readily understand that term to identify a type of lighting fixture, namely an electric candle. The Board further held that the addition of the non-distinctive, generic term COMPANY to the generic term ELECTRIC CANDLE does not somehow mysteriously render the generic wording ELECTRIC CANDLE COMPANY into a distinctive and legally protectable “mark.”
Accordingly, the Board held that the Wm B. Coleman Co., Inc. did not own a legally protectable mark.
The Wm B. Coleman Co., Inc. started use of the “mark” ELECTRIC CANDLE COMPANY in 2002. Eight years later, it has nothing to show for it. And unfortunately, competitors themselves can likely freely use the term ELECTRIC CANDLE COMPANY without fear of infringement (assuming that Wm B. Coleman Co., Inc. doesn’t appeal the decision and prevail). And there’s really nothing the Wm B. Coleman Co., Inc. can do about it.
What do you think about a new competitor using the name "The Original Electric Candle Company”? Is that permissible? Why not?
Will Wm B. Coleman Co., Inc. start over and re-brand the company and products? I surely hope so.