With An Eye On Cole Porter, TTAB Says "NIGHT & DAY" Not Merely Descriptive Of Opthalmic Lubricants

It was just one of those things, I guess. The Board reversed a Section 2(e)(1) refusal to register the mark NIGHT & DAY, finding it not merely descriptive of "opthalmic lubricant in the form of gels, solutions, drops and ointments for the eye." In re Ocusoft, Inc., Serial No. 76378707 (June 10, 2005) [not citable].


The Examining Attorney contended that the mark "merely describes a feature of opthalmic lubricants, namely, that they may be used during the night and day." In support, she pointed to Applicant's own statements regarding the goods: "Since Tears Again NIGHT & DAY Lubricant Gel will not blur vision like ointments, it may be used day and night!"

Applicant Ocusoft dimly argued that the mark is merely suggestive, and does not "convey to consumers that the goods are opthalmic lubricants that will not blur vision."

The Board saw things differently. It found that NIGHT & DAY has a "double connotation or significance in that it evokes the famous Cole Porter song 'Night and Day.'" Because of this "double meaning," the mark:

"indicates more than a mere description or feature of applicant's opthalmic lubricants. The immediate impression evoked by this mark prompts an association with the song 'Night and Day.' Even absent the song, the mark has a double connotation due to the expression 'night and day' as used in, for example, 'I've been working night and day.'"

Therefore the Board concluded that NIGHT & DAY is not merely descriptive of Applicant's goods.

Cole Porter
TTABlog comment: What's going on here? Where's the proof that "Night and Day" is a "famous" song? And what's the test for fame in this context? What percentage of today's population even knows who Cole Porter is? Didn't this Board panel step out of bounds here by substituting its own knowledge and experience for evidence? When the phrase "night and day" is considered not in the abstract, but in connection with Ocusoft's goods, isn't the primary meaning the descriptive one?

As to the Board's reference to "I've been working night and day," I just don't get it. How is that different from Ocusoft's use of the phrase?

TTABlog wisecrack: What's next, I wonder? BEGIN THE BEGUINE deodorant? YOU'RE THE TOP hair spray? IN THE STILL OF THE NIGHT facial cream? Etc., etc.

Text ©John L. Welch 2005. All Rights Reserved.