THIS OPINION
`
`IS NOT A PRECEDENT
`OF THE TTAB
`
`
`
`
`
`
`
`
`
`
`Mailed: June 21, 2017
`
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____
`
`Trademark Trial and Appeal Board
`______
`
`Rheinzink GmbH & Co., KG
`
`v.
`
`Western States Decking, Inc.
`_____
`
`
`
`
`
`
`Cancellation No. 92059862
`
`_____
`
`Karl F. Milde, Jr. of Eckert Seamans Cherin & Mellott LLC
`for Rheinzink GmbH & Co., KG
`
`
`Erin C. Bray of Lee Lee & Associates PC
` for Western States Decking, Inc.
`______
`
`Before Quinn, Ritchie and Pologeorgis,
`Administrative Trademark Judges.
`
`
`Opinion by Pologeorgis, Administrative Trademark Judge:
`
`
`Western States Decking, Inc. (“Respondent”) owns a registration on the
`
`Supplemental Register for the mark PATINA, in standard characters, for
`
`

`

`Cancellation No. 92059862
`
`
`“Metal roofing; Metal roofing panels; Metal roofing tiles; Metal tiles for walls,
`
`ceilings” in International Class 6.1
`
`Rheinzink GmbH & Co., KG (“Petitioner”) filed a petition (as amended) to
`
`cancel Respondent’s registration on the following grounds: (1) the PATINA
`
`mark is generic for the goods identified in the registration; (2) the PATINA
`
`mark is incapable of indicating source inasmuch as it fails to function as a
`
`trademark; and, in the alternative, (3) likelihood of confusion with Petitioner’s
`
`pleaded common law mark PATINA LINE and Petitioner’s registered mark
`
`RHEINZINK-PREPATINA, used together in the sale of a variety of metal goods
`
`and services.2
`
`In its answer to the amended petition to cancel, Respondent denied most of
`
`the salient allegations.3 Respondent, however, did admit the following: (1) that
`
`Respondent, by its attorney JungJin Lee, Esq., wrote a letter to Petitioner’s
`
`U.S. subsidiary RHEINZINK America, Inc., dated July 25, 2014, demanding
`
`that Petitioner cease and desist using the expression “THE PATINA LINE” in
`
`Petitioner’s advertising; (2) that Petitioner’s “PATINA LINE” designation
`
`includes a variety of metal surfaces; (3) that Respondent claimed that
`
`Petitioner’s use of the “THE PATINA LINE” infringed its rights in the mark of
`
`Respondent’s registration on the Supplemental Register for “PATINA”
`
`(Registration No. 4,408,887); that Respondent alleged that “THE PATINA
`
`
`1 Registration No. 4408887, registered on September 24, 2013, claiming June 1, 2013
`as both the date of first use and the date of first use in commerce.
`2 25 TTABVUE. See also PREPATINA, discussed in fn 7, infra.
`3 26 TTABVUE.
`
`- 2 -
`
`

`

`Cancellation No. 92059862
`
`
`LINE” and “PATINA” were confusingly similar and likely to cause confusion
`
`among consumers, “especially in combination with goods that are [alleged to
`
`be] identical or associated with the goods described in [Respondent’s]
`
`trademark registration; (4) that Registration No. 4408887 on the Supplemental
`
`Register is for the word “PATINA” as used in connection with “Metal roofing;
`
`Metal roofing panels; Metal roofing tiles; Metal tiles for walls, ceilings;” (5) that
`
`Respondent cannot claim a use date earlier than June 1, 2013 of its subject
`
`PATINA mark; and (6) that Petitioner is the owner of Registration No. 4303432
`
`for the mark RHEINZINK-PREPATINA.4
`
`Additionally, Respondent asserted five affirmative defenses.5 We construe
`
`Respondent’s Affirmative Defense Nos. 1-4 as mere amplifications of the
`
`denials in its answer. See Order of Songs of Italy in America v. Profumi Fratelli
`
`Nostra AG, 36 USPQ2d 1221, 1223 (TTAB 1995). With regard to Respondent’s
`
`Affirmative Defense No. 5, i.e., Petitioner lacks standing, we note that “lack of
`
`standing” is not an affirmative defense. Standing is an element of Petitioner’s
`
`claims. Petitioner must prove standing as part of its case. See Blackhorse v. Pro
`
`Football Inc., 98 USPQ2d 1633, 1637 (TTAB 2011).
`
`I.
`
`The Record
`
`The record includes the pleadings and, pursuant to Trademark Rule
`
`2.122(b), Respondent’s subject registration.
`
`
`4 26 TTABVUE 5-6, and 11.
`5 26 TTABVUE 15.
`
`- 3 -
`
`

`

`Cancellation No. 92059862
`
`
`Petitioner has submitted the following evidence:
`
`Petitioner’s Notice of Reliance (“NOR”) No. 1 consisting of (i)
`Respondent's answers to Petitioner's First Set of lnterrogatories
`Nos. 3, 5, 6 and 9, and Exhibits 3 and 8 attached thereto; (ii)
`Respondent's answers
`to Petitioner's Second Set
`of
`lnterrogatories Nos. 14, 18, 19, 22, 23 and 27, including
`Respondent’s
`supplemental
`responses
`thereto; and
`(iii)
`Respondent's answers to Petitioner's First Set of Requests for
`Admission Nos. 1, 2, 3, 4, 7, 8, 9 and 12, including Respondent’s
`supplemental responses thereto;6
`
`Petitioner’s NOR No. 2 consisting of status and title copies of
`Petitioner’s U.S. Registrations for the marks REHINZINK-
`PREPATINA and PREPATINA;7
`
`Petitioner’s NOR No. 3 consisting of status and title copies of
`three third-party registrations that include the term PATINA as
`part of the registered mark and which provide a disclaimer of said
`term;8
`
`Petitioner’s NOR No. 4 consisting of copies of printed publications
`from newspapers, periodicals and journals downloaded from
`Lexis-Nexis.com purportedly showing generic use of the term
`PATINA by persons in the relevant trade and the general public
`for metal goods having a desirable, aged, weathered appearance;9
`
`6 36 TTABVUE. Although Petitioner, as identified on the cover sheet of its notice of
`reliance, has indicated that it is relying on certain responses provided by Respondent,
`Petitioner nonetheless submitted Respondent’s responses to all of Petitioner’s written
`discovery. Notwithstanding, the Board only deems the responses specifically identified
`and relied upon Petitioner to be relevant. Moreover, the Board notes that Petitioner
`failed to indicate generally the relevance of these discovery responses to the issues in
`this proceeding, as required by Trademark Rule 2.122(g). However, since Respondent
`did not object to Petitioner’s notice of reliance on this ground, such an objection is
`deemed waived.
`7 37 TTABUVE. The Board notes that Petitioner did not plead ownership of the
`registered mark PREPATINA in its amended petition to cancel. See 25 TTABVUE.
`However, since Respondent did not object to the submission of this unpleaded
`registration and because Respondent addressed this mark in its brief, see 66
`TTABVUE 62-63, we consider the unpleaded registration to have been tried by implied
`consent pursuant to Fed. R. Civ. P. 15(b), and that Petitioner’s amended petition to
`cancel is deemed amended to conform to the evidence.
`8 38 TTABVUE.
`9 39 TTABVUE.
`
`- 4 -
`
`

`

`Cancellation No. 92059862
`
`
`
`Petitioner’s NOR No. 5 consisting of copies of printed publications
`from newspapers, periodicals and journals downloaded from the
`NEXIS computerized library purportedly showing that the
`generic use of the term PATINA by persons in the relevant trade
`and the general public is not restricted to a green or blue patina,
`but that patina metals have a range of colors;10
`
`Petitioner’s NOR No. 6 consisting of copies of printed publications
`from newspapers, periodicals and journals downloaded from the
`NEXIS computerized library purportedly showing generic use of
`the term PATINA by persons in the relevant trade and the
`general public for metals where the patina is induced or coated or
`painted on the metal, and for the synthetic treatment of metal,
`whether by chemical process or coating or painting, that create
`the desirable weathered appearance;11
`
`Petitioner’s NOR No. 7 consisting of a status and title copy of a
`third-party registration for the mark VARI-COOL purportedly
`used by Respondent as a mark for coatings and/or paints for
`application on metal goods;12
`
`Testimony Deposition of Charles McGowan, president of
`Rheinzink America, Petitioner’s U.S. subsidiary, with Exhibits 1-
`12, 14-15 (confidential information redacted);13
`
`Testimony Deposition of Charles McGowan, with Exhibit 13 (filed
`under seal as confidential);14
`
`Testimony Deposition of John F. Metzger, paralegal employed by
`Petitioner’s counsel’s law firm, with Exhibits 1-50;15
`
`Supplemental Testimony Deposition of John F. Metzger, with
`Exhibits 51-71;16
`
`
`
`10 40 TTABVUE.
`11 41 TTABVUE.
`12 42 TTABVUE.
`13 50 TTABVUE.
`14 51 TTABVUE.
`15 44 TTABVUE.
`16 49 TTABVUE.
`
`- 5 -
`
`

`

`Cancellation No. 92059862
`
`
`Expert Testimony Deposition of Todd Miller, with Exhibits 1-6;17
`
`Expert Testimony Deposition of Robert Haddock, with Exhibits 1-
`6;18 and
`
`Expert Testimony Deposition of Brian D. McHugh, with Exhibits
`1-3.19
`
`Respondent did not submit any testimony. Respondent, however, did submit
`
`an amended notice of reliance (filed September 23, 2016)20 that provides the
`
`following evidence: (1) status and title copies of Registration Nos. 4408887,21
`
`4211538, 4385806 and 4622810 owned by Respondent (Exhibits A, S, T and U);
`
`(2) Respondent’s responses and/or amended responses to Petitioner’s First Set
`
`of Interrogatories, including documentary Exhibits 3, 4, and 8 (Exhibit B), First
`
`Set of Requests for Admissions (Exhibit C), Respondent’s responses to
`
`Petitioner’s Second Set of Interrogatories (Exhibit D), and Respondent’s
`
`amended responses to Petitioner’s Second Set of Interrogatories (Exhibit E),
`
`which Respondent indicates should be considered as to make not misleading
`
`responses previously provided by Petitioner; (3) printouts from Respondent’s
`
`websites (Exhibits F and G); (4) dictionary definitions of the terms PATINA
`
`(Exhibit H), VINTAGE (Exhibit L) and RUST (Exhibit M); (5) an entry from the
`
`Encyclopedia Britannica regarding the term “patina” (Exhibit K); (6) articles
`
`
`17 53-54 TTABVUE.
`18 52 TTABUVE.
`19 43 TTABVUE.
`20 59 TTABVUE.
`21 Respondent’s Registration No. 4408887 for the mark PATINA is the subject
`registration to this proceeding and is automatically of record under Trademark Rule
`2.122(b). Accordingly, Respondent’s submission of a status and title copy of this
`registration under a notice of reliance was unnecessary.
`- 6 -
`
`

`

`Cancellation No. 92059862
`
`
`downloaded from the internet (Exhibits I and J); and (7) copies of third-party
`
`registrations for the marks PATINAFORMA, PATINA HOME, PATINA, and
`
`VINTAGE. (Exhibits N-R.).
`
`II. Evidentiary Issue – Petitioner’s Motion to Strike Respondent’s Notice of
`Reliance
`
`On August 12, 2016, Respondent filed its original notice of reliance.22 On
`
`
`
`August 24, 2016, Petitioner filed a motion to strike all the evidence in Exhibit
`
`B, including Exhibits 1-8 attached thereto, and Exhibits C, D and E of
`
`Respondent’s original notice of reliance on the ground that these exhibits do not
`
`comply with the Board’s procedural requirements for the submission of
`
`interrogatory and admission responses under Trademark Rule 2.120(j)(5).
`
`Additionally, Petitioner sought to strike the documentary exhibits to Exhibit B
`
`on the ground that these exhibits consist of documents produced by Respondent
`
`in response to Petitioner’s First Requests for Production of Documents, and as
`
`such may not be made of record by notice of reliance alone. Petitioner also
`
`moved to strike all of the evidence in Exhibits G, I, and J for failure to comply
`
`with the Board's procedural requirements for submission of Internet materials
`
`as set forth in Safer Inc. v. OMS Investments, Inc., 94 USPQ2d 1031, 1037-40
`
`(TTAB 2010). Finally, Petitioner moved to strike all of the evidence in Exhibits
`
`S, T, and U for failure to comply with the Board's procedural requirements for
`
`submission of third-party registrations as set forth in Trademark Rule 2.122(e).
`
`
`22 55 TTABVUE.
`
`- 7 -
`
`

`

`Cancellation No. 92059862
`
`
`On September 23, 2016, during the pendency of Petitioner’s motion to strike,
`
`Respondent filed an amended notice of reliance.23 By order dated October 20,
`
`2016 (and corrected on October 24, 2016), the Board, inter alia, struck Exhibits
`
`G, I and H from Respondent’s amended notice of reliance24 and deferred
`
`consideration of Petitioner’s motion to strike Exhibits B-E, including Exhibits
`
`3, 4, and 8 to Exhibit B, of Respondent’s amended notice of reliance.25
`
`We now turn to Petitioner’s motion to strike as it solely relates to Exhibits
`
`B-E (including Exhibits 3, 4, and 8 attached to Exhibit B) submitted with
`
`Respondent’s amended notice of reliance. As noted above, Exhibits B-E consist
`
`of Respondent’s responses to all of Petitioner’s written discovery. Exhibits 3, 4,
`
`and 8 attached to Exhibit B consist of documents produced by Respondent in
`
`response to Petitioner’s document requests. In its amended notice of reliance,
`
`Respondent states that the Board should consider all the exhibits, which in
`
`fairness should be considered as to make not misleading what responses were
`
`
`23 Respondent’s amended notice of reliance includes the same exhibits as submitted
`with its original notice of reliance, except to the extent that only Exhibits 3, 4 and 8
`are now submitted with Exhibit B.
`24 In light of this order, the Board has given no consideration to Respondent’s Exhibits
`G, I, and J in our determination herein.
`25 In its reply brief in support of its motion to strike, Petitioner maintained its
`objections to Exhibits B-E and G, I and J submitted with Respondent’s amended notice
`of reliance but did not argue that Respondent’s amended notice of reliance remained
`deficient with respect to the third-party registrations submitted as Exhibits S-U.
`During the telephone conference with the Board held on October 6, 2016 concerning
`the merits of Petitioner’s motion, Petitioner confirmed that it no longer objected to
`Exhibits S-U. See 62 TTABVUE 2. Accordingly, the Board deems Petitioner’s motion
`to strike as moot with regard to Exhibits S-U submitted with Respondent’s amended
`notice of reliance.
`
`- 8 -
`
`

`

`Cancellation No. 92059862
`
`
`previously offered by Petitioner.26 Respondent also states that since Petitioner
`
`included Exhibit 8 in its own notice of reliance which was produced in response
`
`to Petitioner’s Interrogatory Request No. 4, Respondent’s written response to
`
`Interrogatory No. 4 should be considered.27 Respondent also states in its
`
`amended notice of reliance that Respondent’s responses to Petitioner’s
`
`Interrogatories 7 and 8 are related to Respondent’s awareness of Petitioner’s
`
`use of “The Patina Line” and ownership it its “RHEINZINK-Prepatina”
`
`registration, including Exhibit 4 which is made part of the answer to
`
`Interrogatory 7 and that its response to Petitioner’s Interrogatory No. 10
`
`relates to Respondent’s use or non-use of the term “patina” in any generic
`
`sense.28
`
`A party may not make its own discovery responses of record except to the
`
`extent necessary to make not misleading the discovery responses submitted by
`
`the inquiring party. Trademark Rule 2.120(k)(5). To the extent a disclosing or
`
`responding party does submit additional discovery responses under a notice of
`
`reliance for the purpose of not to make misleading responses submitted by the
`
`inquiring party, such notice must be supported by a written statement
`
`explaining why the disclosing or responding party needs to rely upon each of
`
`the additional discovery responses listed in the disclosing or responding party’s
`
`notice. Id.
`
`
`26 59 TTABVUE 2.
`27 Id.
`28 Id.
`
`- 9 -
`
`

`

`Cancellation No. 92059862
`
`
`We first turn to Exhibits 3, 4, and 8 to Exhibit B submitted by Respondent
`
`in its amended notice of reliance. As noted above, these exhibits consist of
`
`documents produced by Respondent in response to Petitioner’s document
`
`requests. Documents responsive to document requests may not be submitted by
`
`notice of reliance alone by the disclosing party. See Trademark Rules 2.120(k)
`
`and 2.122(g). Accordingly, Petitioner’s motion to strike is granted with respect
`
`to Exhibits 3, 4, and 8 to Exhibit B of Respondent’s amended notice of reliance.
`
`With regard to Exhibit C (Respondent’s responses to Petitioner’s First Set
`
`of Requests for Admission), Exhibit D (Respondent’s responses to Petitioner’s
`
`Second Set of Interrogatories), and Exhibit E (Respondent’s amended responses
`
`to Petitioner’s Second Set of Interrogatories), we find that although Respondent
`
`has requested that the Board consider all the responses contained in Exhibits
`
`C-E, Respondent nonetheless failed to explain specifically why it needs to rely
`
`upon each of these additional discovery responses so as not to make misleading
`
`the responses submitted by Petitioner in its notice of reliance. Accordingly,
`
`Petitioner’s motion to strike Exhibits C, D and E submitted with Respondent’s
`
`amended notice of reliance is granted and said exhibits will be given no
`
`consideration.
`
`We finally turn to Respondent’s Exhibit B which consists of all of
`
`Respondent’s responses to Petitioner’s First Set of Interrogatories. We are
`
`persuaded by Respondent’s argument that the Board should consider
`
`Respondent’s written response to Petitioner’s Interrogatory No. 4 since
`
`- 10 -
`
`

`

`Cancellation No. 92059862
`
`
`Petitioner submitted Respondent’s Exhibit 8 which was produced in response
`
`to Interrogatory No. 4. In view thereof, Petitioner’s motion to strike
`
`Respondent’s written response to Petitioner’s Interrogatory No. 4 contained in
`
`Exhibit B is denied. With regard to the remaining responses to Petitioner’s First
`
`Set of Interrogatories, including responses to Interrogatories 7, 8 and 10,
`
`Respondent has failed to explain specifically why it needs to rely upon each of
`
`these additional discovery responses so as not to make misleading the responses
`
`submitted by Petitioner in its notice of reliance. Accordingly, Petitioner’s
`
`motion to strike is granted with regard to all the written responses contained
`
`in Exhibit B, except for Respondent’s response to Interrogatory No. 4.
`
`As a final matter, we additionally note that Respondent attached copies of
`
`portions of the evidentiary record, previously submitted with its amended
`
`notice of reliance, to its appeal brief. Because this evidence is already of record
`
`to the extent indicated herein, its re-submission with Respondent’s brief was
`
`unnecessary. See ITC Ent. Group Ltd. v. Nintendo of America Inc., 45 USPQ2d
`
`2021, 2022-23 (TTAB 1998) (submission of duplicative papers is a waste of time
`
`and resources, and is a burden upon the Board).
`
`Parties
`
`to Board cases occasionally seem
`
`to
`
`labor under
`
`the
`
`misapprehension that attaching previously-filed evidence to a brief and citing
`
`to the attachments, rather than to the original submissions, is a courtesy or a
`
`convenience to the Board. It is neither. The entire record is readily available to
`
`the panel. Because we must determine whether such attachments are properly
`
`- 11 -
`
`

`

`Cancellation No. 92059862
`
`
`of record, citing to the attachments requires us to examine the attachments and
`
`then attempt to locate the same evidence in the record developed during
`
`prosecution of the application, requiring more time and effort than would have
`
`been necessary if citations were directly to the prosecution history. Therefore,
`
`Respondent should refrain from this practice in any future Board cases. See
`
`TBMP 704.05(b) (June 2017); Life Zone, Inc. v. Middleman Group, Inc., 87
`
`USPQ2d 1953, 1955 n.4 (TTAB 2008) (attaching previously-filed evidence to a
`
`brief is neither a courtesy nor a convenience to the Board).
`
`III. Standing
`
`Standing is a threshold issue that must be proven by the plaintiff in every
`
`inter partes case. See Empresa Cubana Del Tabaco v. Gen. Cigar Co., 753 F.3d
`
`1270, 111 USPQ2d 1058, 1062 (Fed. Cir. 2014), cert. denied, 135 S. Ct. 1401
`
`(2015). Our primary reviewing court, the U.S. Court of Appeals for the Federal
`
`Circuit, has enunciated a liberal threshold for determining standing, namely
`
`that a plaintiff must demonstrate that it possesses a “real interest” in a
`
`proceeding beyond that of a mere intermeddler, and “a reasonable basis for his
`
`belief of damage.” Empresa Cubana Del Tabaco 111 USPQ2d at 1062 (citing
`
`Ritchie v. Simpson, 170 F.3d 1902, 50 USPQ2d 1023, 1025-26 (Fed. Cir. 1999)).
`
`A “real interest” is a “direct and personal stake” in the outcome of the
`
`proceeding. Ritchie v. Simpson, 50 USPQ2d at 1026.
`
`- 12 -
`
`

`

`Cancellation No. 92059862
`
`
`The record shows that Rheinzink America is a “daughter company” or
`
`“subsidiary” of Petitioner.29 In the United States, Petitioner’s products,
`
`including metal cladding for roofing and walls, which are part of the “Patina
`
`Line” of products, are marketed and sold by Rheinzink America under license
`
`from Petitioner.30 Petitioner uses the “Patina Line” designation in connection
`
`with goods sold under
`
`its registered
`
`“RHEINZINK-Prepatina” and
`
`“prePATINA” marks.”31 The record further demonstrates that Respondent has
`
`objected, by means of a cease-and-desist letter, to Rheinzink America’s use of
`
`the designation THE PATINA LINE on the ground that it purportedly causes
`
`a likelihood of confusion with Respondent’s PATINA mark. These facts are
`
`sufficient to demonstrate that Petitioner, as parent corporation of Rheinzink
`
`America and/or licensor of its pleaded marks, has a real interest in this
`
`proceeding and therefore has standing.32 See Universal Oil Products Co. v.
`
`Rexall Drug & Chem. Co., 463 F.2d 1122, 174 USPQ 458 (CCPA 1972) (parent
`
`corporation has standing to protect the interests of its wholly owned subsidiary
`
`inasmuch as damage to the subsidiary will naturally lead to financial injury of
`
`the parent company); Compuclean Marketing and Design v. Bershire Products
`
`Inc., 1 USPQ2d 1323, 1325 (TTAB 1986) (owner and licensor of a mark
`
`establishes the commercial nexus for standing in a Board proceeding). See also
`
`
`29 McGowan Dep. 6:21-7:5, 50 TTABUVE 8-9.
`30 Id., 7:6-8:18, 50 TTABVUE 9-10; Id. Exhibit 3, ¶¶ 6-15, and Exhibits C and D
`thereto, 50 TTABVUE 91-94, 106-135.
`31 Id., 7:6-8:18, 50 TTABVUE 9-10.
`32 We further note that Respondent does not contest Petitioner’s standing.
`- 13 -
`
`

`

`Cancellation No. 92059862
`
`
`Miller v. Miller, 105 USPQ2d 1615, 1619 (TTAB 2013) (determining that the
`
`cease and desist letters applicant sent to opposer “provide[d] additional
`
`evidence that opposer has business interests that have been affected, i.e., a real
`
`interest in the proceeding, and thus, has standing.”).
`
`IV. Genericness
`
`Section 14 of the Trademark Act provides:
`
`A petition to cancel a registration of a mark... may... be filed...
`
`(3) At any time if the registered mark becomes the generic name
`for the goods or services, or a portion thereof, for which it is reg-
`istered. ... If the registered mark becomes the generic name for
`less than all of the goods or services for which it is registered, a
`petition to cancel the registration for only those goods or services
`may be filed. A registered mark shall not be deemed to be the ge-
`neric name of goods or services solely because such mark is also
`used as a name of or to identify a unique product or service. The
`primary significance of the registered mark to the relevant public
`rather than purchaser motivation shall be the test for determin-
`ing whether the registered mark has become the generic name of
`goods or services on or in connection with which it has been used.
`
`15 U.S.C. § 1064(3).
`
`A mark is a generic name if it refers to the class or category of goods and/or
`
`services on or in connection with which it is used. In re Dial-A-Mattress Oper-
`
`ating Corp., 240 F.3d 1341, 57 USPQ2d 1807 (Fed. Cir. 2001), citing H. Marvin
`
`Ginn Corp. v. International Association of Fire Chiefs, Inc., 782 F.2d 987, 228
`
`USPQ 528 (Fed. Cir. 1986) (“Marvin Ginn”). The test for determining whether
`
`a mark is generic is its primary significance to the relevant public. Trademark
`
`Act § 14(3); In re American Fertility Society, 188 F.3d 1341, 51 USPQ2d 1832
`
`(Fed. Cir. 1999); Magic Wand Inc. v. RDB Inc., 940 F.2d 638, 19 USPQ2d 1551
`
`- 14 -
`
`

`

`Cancellation No. 92059862
`
`
`(Fed. Cir. 1991); and Marvin Ginn, supra. Making this determination “involves
`
`a two-step inquiry: First, what is the genus of goods or services at issue? Second,
`
`is the term sought to be registered ... understood by the relevant public primar-
`
`ily to refer to that genus of goods or services?” Marvin Ginn, 228 USPQ at 530.
`
`Our primary reviewing court has stated that a party charging genericness must
`
`prove its claim by a preponderance of the evidence.33 Princeton Vanguard LLC
`
`v. Frito-Lay N. Am., Inc., 796 F.3d 960, 114 USPQ2d 1827, 1830 (Fed. Cir. 2015)
`
`(“In an opposition or cancellation proceeding, the opposer or petitioner bears
`
`the burden of proving genericness by a preponderance of the evidence.”) (citing
`
`Magic Wand Inc., 19 USPQ2d at 1554); Alcatraz Media, Inc. v. Chesapeake Ma-
`
`rine Tours Inc., 107 USPQ2d, 1750, 1761 (TTAB 2013), aff’d, 565 Fed. Appx.
`
`900 (Fed. Cir. 2014)).
`
`The Genus of Goods
`
`As noted above, our first task under Marvin Ginn is to determine, based on
`
`the evidence of record, the genus of Respondent's goods. We find that the
`
`identification of goods properly sets forth the genus of goods. See Magic Wand
`
`Inc., 19 USPQ2d at 1552 (“[A] proper genericness inquiry focuses on the
`
`description of [goods] set forth in the certificate of registration.”). Accordingly,
`
`we find that the genus of goods at issue in this case is adequately defined by
`
`Respondent’s identification of goods, namely, “metal roofing; metal roofing
`
`panels; metal roofing tiles; metal tiles for walls, ceilings.”
`
`
`33 Respondent’s contention that Petitioner must prove its genericness claim by “clear
`and convincing” evidence, see Respondent’s Brief, p. 6, 66 TTABVUE 64, is incorrect.
`- 15 -
`
`

`

`Cancellation No. 92059862
`
`
`Although Respondent concedes that the genus of goods is that as identified
`
`by the goods in its subject registration, Respondent nonetheless argues that
`
`because the goods, as identified, could include metal goods without patina, the
`
`term cannot be generic for all the goods identified in its subject registration.34
`
`Respondent’s argument is unavailing. It is settled law that genericness may be
`
`found for a term that is generic of a category or class of products where some
`
`but not all of the goods identified fall within that category. In re Analog Inc., 6
`
`USPQ2d 1808, 1810 (TTAB 1988), aff’d, unpublished at 10 USPQ2d 1979 (Fed.
`
`Cir. 1989) (ANALOG DEVICES found to be generic for at least some of the
`
`category of goods in the identification). Thus, if Petitioner can prove that the
`
`term PATINA is generic for a subset of the goods as described in Respondent’s
`
`subject registration, then it can prevail on this claim. Haas Outdoors Inc. v.
`
`Jordan Outdoor Enterprises Ltd., 72 USPQ2d 1282 (TTAB 2004).
`
`The Relevant Public
`
`The second part of the genericness test is whether the relevant public
`
`understands the designation primarily to refer to that class of goods. The
`
`relevant public for a genericness determination is the purchasing or consuming
`
`public for the identified goods. Magic Wand Inc., 19 USPQ2d at 1553.
`
`Respondent contends that the relevant public is comprised primarily of
`
`professional building contractors, or individuals experienced in general
`
`
`34 Respondent’s Brief, p. 9, 66 TTABVUE 67.
`
`- 16 -
`
`

`

`Cancellation No. 92059862
`
`
`contracting.35 Respondent’s construction of the relevant public is too limiting.
`
`Because there are no restrictions or limitations to the channels of trade or
`
`classes of consumers for the goods identified in Respondent’s subject
`
`registration, the relevant consuming public comprises both
`
`industry
`
`professionals, as well as non-professional consumers, who purchase metal
`
`roofing, metal roofing panels, metal roofing tiles, and metal tiles for walls and
`
`ceilings.
`
`Public Perception
`
`With this in mind, we now consider whether the primary significance of the
`
`designation PATINA is understood by the relevant purchasing public to refer
`
`to the class or category of goods identified in Respondent’s registration.
`
`Evidence of the relevant public's understanding of a term may be obtained from
`
`any competent source, including consumer surveys, dictionary definitions,
`
`newspapers and other publications. In re Reed Elsevier, 482 F.3d 1376, 82
`
`USPQ2d 1378, 1380 (Fed. Cir. 2007). “[E]vidence of competitors’ use of
`
`particular words as the name of their goods or services is, of course, persuasive
`
`evidence that those words would be perceived by purchasers as a generic
`
`designation for the goods and services.” Continental Airlines, Inc. v. United Air
`
`Lines, Inc., 53 USPQ2d 1385, 1395 (TTAB 1999).
`
`
`
`
`
`
`35 65 TTABVUE 68.
`
`- 17 -
`
`

`

`Cancellation No. 92059862
`
`
`1. Dictionary Definition
`
`Petitioner has submitted the following dictionary definition from the
`
`Oxford English dictionary for the term “patina”:36
`
`The term “patina” is defined as “a thin coating or layer; spec. an incrustation
`on the surface of metal or stone usually as a result of an extended period of
`weathering or burial, or as a green or bluish green film produced naturally
`or artificially by oxidation on the surface of bronze and copper consisting
`mainly of basic copper sulfate.”
`
`2. Third-Party Uses
`
`Petitioner submitted evidence of third-party uses of the term “patina” used
`
`in association with various metal roofing and tiles. Identified below is a non-
`
`exhaustive list of such third-party uses:
`
`37
`
`
`36 McHugh Dep. 9:11-19, 43 TTABVUE 11; Id. Exhibit 2, ¶ 6, 43 TTABVUE 38, 59-61.
`37 Miller Dep., Exh. 2 at Attachment A, 53 TTABVUE 114.
`- 18 -
`
`

`

`Cancellation No. 92059862
`
`
`38
`
`
`39
`
`
`Patina Metals advertises “[s]tructural steel products” which
`include “metal decking” and “exposed architectural canopies” on
`its website: “Whether you are considering iron, brass, stainless
`steel, copper, nickel, aluminum, or any combination…Patina can
`adorn your home with the style and security…commensurate
`with the quality and esteem of your unique home.”40
`
`Pacific Metal Roofing, Inc. offers “Antique Patina” and “Patina
`Green” metal roofing and metal siding goods.41
`
`Forms + Surfaces lists its “Bonded Metal” line of architectural
`surfaces, which include products for wall cladding systems, as
`
`38 Metzger Dep., Exh. 3 at Exhibit S, 27 TTABVUE 34.
`39 Metzger Supp. Dep, Exh. 60-61, 49 TTABVUE 97-99.
`40 Id. Exhibit 28, 47 TTABVUE 125-127.
`41 Miller Dep. Exhibit 2 at Attachment B, 53 TTABVUE 171, 175.
`- 19 -
`
`

`

`Cancellation No. 92059862
`
`
`being available in different “colors & patinas” and advises that
`“[s]elections are defined by three basic parameters: color + patina
`+ pattern” with “Natural and Dark Patinas provid[ing] rich
`surface contrast.” When ordering, purchasers are instructed to
`“please indicate material, pattern, patina and quantity.”42
`
`The Garland Company, Inc. has a press release regarding a
`roofing project that states: “The 24-gauge, 16-inch natural patina
`Galvalume® panels were then installed . . . allowing for unlimited
`thermal movement and watertight protection.”43
`
`Heyco Metals/CopperPlus has a “Frequently Asked Questions”
`page on its website regarding the patination process of the
`company’s CopperPlus products, where it is asked and answered:
`“How long does it take for the copper to patina? The same length
`of time it takes for monolithic Copper to patina.”44
`
`Roofs Inc. advertises that its zinc roofing product “creates a
`barrier called patina that prevents it from corrosion and wear.
`This patina finish is truly an incredible protector from the
`elements as it changes with time and is not a static surface like
`paint that only chips and wears with time.”45
`
`Whirlwind Steel Building & Components offers “Patina Green”
`metal roofing systems.”46
`
`Fine Metal Roof Tech advertises its “Chemical Patina Services for
`Copper Roofs, Walls, and Copper Roof Accessories” with the
`statement that “if your goal is to kick-start the patinating process
`and get all the beauty for less than the cost of factory-made,
`‘acq