Wednesday, November 10, 2004

Ouch! The Worst TTAB Decisions of 2004?

For the past several years, I have been so bold as to publish my choices for what I call "The Top Ten TTAB Decisions" for the year. My selections for 2003 may be found here.

This year, I'm thinking of compiling another list: the worst decisions of 2004. This idea struck me like a toothache recently when I read the Board's decisions in Fox v. Hornbrook , Opposition No. 91121292 (Aug. 25, 2004), and In re Donell, Inc., Serial No. 75527923 (Sept. 24, 2004).

In Fox v. Hornbrook, an opposition involving dueling dentists, the Board came to the remarkable conclusion that the phrase DENTISTRY FOR THE QUALITY CONSCIOUS is generic for dental services. In an analysis that may be generously described as perfunctory, the Board ruled that “such phrase is so commonly used in the field of dentistry as a designation for a high level of, or excellence in, dental care services as to be generic, in the sense that the slogan essentially denotes a category or class of dentistry to the general public as well as to members of the dental profession.” Opposer Fox did not claim that the phrase was merely descriptive, and so the Board, in its apparent eagerness to sustain the opposition, chose to force-fit the applied-for mark into the genericness pigeonhole in order to deny registration. (Reminds me of my last trip to the dentist.) One is left to wonder whether there is a class of dental services called DENTISTRY FOR THE QUALITY UNCONSCIOUS?

In Donell, the Board ruled that the mark BOO BOO CREAM is not merely descriptive for a topical wound cream, concluding that BOO BOO CREAM falls on the suggestive side of the distinctiveness teeter-totter. According to the Board, for Applicant’s goods the term BOO BOO is “unique and inventive in the sense that it is a child’s term used to denote a sophisticated product.” Judge Holtzman wrote:
“[f]rom a child’s perspective, you do not ‘heal’ a boo boo, you ‘make it better’ which in that child’s mind has nothing to do with ‘topical wound healing agents.’”

I would have thought, however, that parents are the purchasers of topical wound creams, not children. I dare say that the cutesy phrase “boo boo cream” conveys quite a bit of information about a skin cream: that it's meant for slight wounds like those occasionally suffered by children.

Well, that makes two for my "worst" list. Please e-mail your nominations to me at jwelch@foleyhoag.com

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