Tuesday, August 09, 2005

"STRIPE WRITER" Not Merely Descriptive of Pens with Striped Ink, Says TTAB

Reversing the PTO's Section 2(e)(1) refusal, the TTAB found the mark STRIPE WRITER to be not merely descriptive of "pens, namely, coloring pens, writing pens, drawing pens and felt tip markers." Although Applicant's pens "will feature striped ink," the Board opined that the pens "would not be considered 'stripe writers' except, perhaps, through the exercise of a multi-stage reasoning process or the utilization of imagination, thought or perception." In re JPI Colorworkshop, Inc., Serial No. 78107577 (July 26, 2005).

Stripe Writer?

The Examining Attorney relied on dictionary definitions of "stripe" and "writer," on third-party registrations for pens in which "writer" was disclaimed, and on Applicant's statement that its pens "will feature striped ink." She contended that STRIPE WRITER "will immediately inform prospective consumers that the goods on which this mark is used are either writing instruments that produce stripes or are intended for use by writers who wish to write using stripes."

Applicant argued that consumers would not use the expression "write in stripes" because they "draw stripes," not write them, nor would they think "writer" means "pen."

The Board was persuaded that STRIPE WRITER is suggestive rather than merely descriptive.

"in common parlance [WRITER] generally refers to a person who writes, especially as an occupation, rather than to a thing or instrument for writing. Similarly, ... pens and markers are typically used to communicate, by writing or drawing, rather than to produce stripes per se."

Finally, the Board noted that any doubt as to registrability must be resolved in Applicant's favor.

striped toothpaste?

TTABlog comment:It seems to me that little thought or imagination is required to recognize that a pen with striped ink would write in stripes, and that the term STRIPE WRITER describes that capability. In the abstract, the word "writer" may typically mean a person, but when considered in the context of Applicant's goods (as the law requires), it seems clearly to refer to the pen. I disagree with the Board on this one.

As a side note, I have recently noticed that PTO Examining Attorneys, when looking for dictionary definitions, seem often to turn to editions of The American Heritage Dictionary of the English Language. [See recent TTABlog postings here, here, and here]. Perhaps this particular dictionary is "standard issue" at the PTO?

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


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