Tuesday, December 21, 2004

TTAB Says "Hasta la Vista" to PALABRA LISTA

The Board wasted little time in affirming a Section 2(e)(1) refusal to register the mark PALABRA LISTA, finding it merely descriptive of "printed educational materials for teaching Spanish vocabulary." In re Curriculum Associates, Inc., Serial Number 76433945 (December 7, 2004) [not citable].

Applicant provided an English translation of PALABRA LISTA as "word list," and its specimen of use consisted primarily of lists of Spanish words. The Examining Attorney acutely observed that the mark "aptly describes the goods, which appear to be a list of Spanish vocabulary." The Board, of course, pointed out that "the foreign equivalent of a merely descriptive English term is no more registrable than the English term itself."

Curriculum Associates feebly argued that the mark is not descriptive because, "although [the] materials include word lists, they do not necessarily have to do so." The Board brushed aside that argument, noting that if the materials did not contain word lists, "a refusal on the ground that the mark is deceptively misdescriptive would have been in order."

Curriculum next weakly asserted that, because the word "Spanish" does not precede "Palabra Lista," the mark does not immediately describe the goods because "one would not know the language of the words listed." The Board pointed out, as it often does, that a mark must be considered not in the abstract but rather in context, i.e., in connection with the goods with which it is used.

Finally, Curriculum noted that its mark has been in use since 1993, but the Board observed that no claim under Section 2(f) had been made, and that length of use is irrelevant to a Section 2(e)(1) refusal.

Thus ended Curriculum's quixotic quest for reversal of the PTO's refusal to register.


Post a Comment

<< Home