Ninth Circuit: Disinfectable not trademarkable
April 13, 2007

The Ninth Circuit Court of Appeals yesterday issued a decision regarding whether the term "disinfectable" could serve as a trademark in the context of nail files and related goods. The court held that it could not, as disinfectable was the generic term for a product that is capable of being disinfected. As a result, the plaintiff's trademark infringement suit failed as a matter of law, because trademark rights cannot exist in a generic term.

More details of the case after the jump.

Several states have laws requiring nail technicians to disinfect all instruments used on multiple customers, and requiring disposal of all items used on a patron that cannot be disinfected. As a result, many nail salons asked that products that could be disinfected in accordance with these requirements be labeled "disinfectable."

Rudolph International, in response to these regulations, tested and developed a line of nail files and related products that could be disinfected, and in 2001, began using the term "disinfectable" on these products. Rudolph applied for a trademark registration with the USPTO (serial no. 76183329), but was rejected because the word "disinfectable" was descriptive of a characteristic of the product.

Action on that application was suspended when Rudolph filed suit against Realys, Inc., for use of "disinfectable" on its own products. Realys asserted in defense that "disinfectable" was generic when applied to nail files and associated goods, and thus could not properly be asserted as a trademark.

The court began its analysis by reciting the familiar categories of terms in determining trademark protection, (1) generic, (2) descriptive, (3) suggestive, and (4) arbitrary/fanciful. Generic marks cannot serve as trademarks because they are the common descriptive term of the product.

The court noted that when determining whether a mark is generic, one helpful test is the "who-are-you/what-are-you" test. A valid trademark answers the "who are you" question, a generic term answers the "what are you" question. As stated by the court, "If the primary significance of the trademark is to describe the type of product rather than the producer, the trademark is a generic term and cannot be a valid trademark."

Here, the court affirmed the lower court's finding that "disinfectable" in the context of nail files and related goods was generic. According to the court, it fell on the "what-are-you" side of the genericness test described above. Further, Rudolph's products are identified by other brand names, such as Soft Touch, Les Mirages, and Quadmetrics, not by the term "disinfectable." While ordinarily summary judgment is disfavored in trademark cases because of their fact-intensive nature, here the court held summary judgment of genericness was appropriate.

The opinion's final three words succinctly summarized its holding: "Disinfectable: not trademarkable."

To read the full decision in Rudolph Int'l v. Realys, Inc., click here.

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