1202.16(b)(ii) Grade Designations
A grade designation often indicates a standard that is common to producers or manufacturers within an industry. Determining whether a proposed mark is used merely as a grade designation is a question of fact. See In re Flintkote Co., 132 USPQ 295, 296 (TTAB 1961) (citing Kiekhaefer Corp. v. Willys-Overland Motors, Inc., 111 USPQ 105 (C.C.P.A. 1956)); J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition §11.36 (4th ed. 2011). Thus, the examining attorney must supplement consideration of the application content (i.e., the drawing, the description of the mark, the identification of goods or services, and the specimen, if any), with independent research of the applicant’s and competitors’ websites, the Internet, and databases such as LexisNexis® to determine how the designation is used in the industry. Such research will assist in determining whether the proposed mark is used by others to convey a specific characteristic of the goods (such as value, size, type, degree, or level of quality) and, as such, has a publicly recognized meaning. For example, if the evidence shows that A, B, C, and D, or 1, 2, 3, and 4, are commonly used in an industry to represent a hierarchy of quality, a mark consisting of such a letter or number likely would not indicate source in any one producer or manufacturer. See Shaw Stocking Co. v. Mack, 12 F. 707, 711 (C.C.N.D.N.Y. 1882) ("It is very clear that no manufacturer would have the right exclusively to appropriate the figures 1, 2, 3, and 4, or the letters A, B, C, and D, to distinguish the first, second, third and fourth quality of his goods, respectively. Why? Because the general signification and common use of these letters and figures are such, that no man is permitted to assign a personal and private meaning to that which has by long usage and universal acceptation acquired a public and generic meaning."); 1 Anne Gilson LaLonde, Gilson on Trademarks §2.03(4)(a) (Matthew Bender 2011).
Where extrinsic evidence shows that matter in the proposed mark is used by competitors or members of the public to convey the same type of designation of quality, the resulting commercial impression is merely that of a grade designation with no source-identifying capability. The examining attorney should also analyze the specimen using the same considerations for model designations (i.e., stylization of display on the specimen, size of matter on the specimen, physical location on the specimen) to bolster a refusal based on a failure to function as a mark. A lack of extrinsic evidence of usage of the proposed mark as a grade designation does not necessarily foreclose a refusal, where the nature of applicant’s use and the same considerations for model designations (i.e., stylization of display on the specimen, size of matter on the specimen, physical location on the specimen) indicate a grade designation.