Tuesday, August 02, 2005

TTAB Overturns Disclaimer Requirement, Finds "VIRTUAL MODEL" For Simulation Software Has Secondary Meaning

My Virtual Model Inc. established secondary meaning for the term VIRTUAL MODEL, and thereby overcame the PTO's refusal to register the mark shown immediately below for specialized computer simulation software used in the retail sale of clothing. The Examining Attorney had refused registration under Section 6(a) because Applicant failed to disclaim VIRTUAL MODEL. In re My Virtual Model Inc., Serial No. 76372314 (July 21, 2005) [not citable].

The Board observed that, by amending the application to seek registration under Section 2(f), Applicant "has in effect conceded that the term 'Virtual Model' is merely descriptive of its goods." Applicant, however, took exception to the Examining Attorney's assertion that the phrase is "highly descriptive." But the Board reviewed Applicant's specimen of record and concluded that "[u]sers of applicant's website will readily understand that use of this [software] permits them to build a 'virtual model' to represent themselves." Thus it found that the term "is much closer to the 'highly descriptive' end of the continuum than to the 'merely suggestive' side."

Turning to the issue of acquired distinctiveness, the Board noted that "[l]ogically, applicant's burden of demonstrating that its mark has acquired distinctiveness increases as the level of descriptiveness increases." Applicant met its heightened burden by submitting a "variety of types of circumstantial evidence," including a Declaration verifying substantially exclusive and continuous use of the term "virtual model" in a number of different composite marks since 1997, and proof of promotional expenditures of more than five million dollars, of more than six million registered users of Applicant's software for "online garment and weight loss product retailing applications," and of unsolicited publicity regarding its online software. The Board also noted that Applicant continues to be the only user of the phrase "virtual model" in connection with such software.

The Board therefore reversed the PTO's requirement of a disclaimer of VIRTUAL MODEL.


TTABlog comment: I tried out Applicant's software. See the remarkable result above.

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


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