TTAB Reverses Genericness Refusal of BSS for Blanced Salt Solution

In In re Alcon Manufacturing, Ltd., Serial No. 76219409 (TTAB, November 18, 2005, not citeable as precedent), the U.S. Trademark Trial and Appeal Board held that "while the examining attorney's evidence shows generic usage of BSS [for intraoccular irrigating solutions, a.k.a. balanced salt solutions], applicant has submitted sufficient evidence reflecting recognition of BSS as a trademark for applicant's goods. However, as noted by John Welch in his TTABlog, the Board also stated that "[a] different and more complete record, perhaps presented in the context of an inter partes proceeding, may produce a different result."

According to the decision,

Applicant has presented examples of numerous journal articles and studies showing use of BSS in the manner of a proprietary term rather than a generic term. Applicant has also submitted at least one medical dictionary acknowledging BSS as a rademark. In addition, applicant has provided direct evidence of recognition of BSS as a mark. Applicant has shown that its policing efforts have resulted in acknowledgement by a number of publishers and competitors of applicant's trademark rights in BSS. Applicant has also demonstrated that medical professionals view BSS as a mark indicating "balanced salt solution" emanating solely from applicant.

[However, t]he absence of entries for BSS in the other dictionaries cited by
applicant is not persuasive without evidence that the admittedly generic term
"balanced salt solution" is included in those dictionaries without reference to
BSS. Applicant has not submitted the relevant pages for "balanced salt
solution." Moreover, the definition in Dictionary of Eye Terminology which only
identifies BSS as a "trade name" of a balanced salt solution is not evidence of
recognition or perception of BSS as a trademark. The materials that refer to BSS
merely as an available product, such as Principles and Practice of Ophthalmology, Physicians Desk Reference for Ophthalmology, and Vitrectomy Techniques for the Anterior Segment Surgeon, do not reflect acknowledgement of trademark rights in BSS or perception of BSS as a mark.

We cannot conclude from the evidence of genericness presented by the
examining attorney, which consists essentially of a single dictionary listing, a
handful of Nexis excerpts, and no unchallenged use by competitors, in the face
of applicant's more substantial showing that the mark is not generic, that BSS
would be perceived primarily as a generic term for applicant's goods.
We have serious concerns regarding the generic nature of BSS for a balanced salt
solution. However, we emphasize that we have made our determination that the
mark is not generic based on the recor before us and keeping in mind that any doubt on the issue of genericness should be resolved in applicant's favor. A different and more complete record, perhaps presented in the context of an inter partes proceeding, may produce a different result.

Having found that the term has not been shown to be generic, and in view of the examining attorney's acceptance of applicant's claim of acquired distinctiveness, the application will proceed to publication under Section 2(f). The refusal to register under Section 2(e)(1) is reversed.