Tuesday, May 16, 2006

TTAB Affirms Disclaimer Requirement of "One Minute" for Bug Remover

The Board affirmed the PTO's requirement that Applicant Bar's Products, Inc. disclaim the words ONE MINUTE in its logo mark shown immediately below [BUG REMOVER disclaimed] for "cleaning compounds for removing insects from motor vehicles." In re Bar's Prods., Inc., Serial No. 76415261 (May 4, 2006) [not citable].

Examining Attorney Verna Beth Ririe contended that "one minute" is merely descriptive of Applicant's product because, as demonstrated by various newspaper articles, quick removal of bugs from motor vehicles is a desirable characteristic. She argued:

"The wording 'ONE MINUTE' ... describes a bug remover composition that, unlike some compositions which users must let sit on a vehicle for several minutes before wiping off, will be effective in 'ONE MINUTE.' The term 'ONE MINUTE' tells users they need not wait more that 'one minute' before they wipe the bug remover off the vehicle."

Applicant, on the other hand, asserted that "one minute" is understood to mean "right away," not "to describe the period of time technically comprising sixty seconds." Applicant called it "absurd" to believe that the PTO makes a determination "as to whether or not the time period contained within a mark actually prescribes the amount of time required to effectuate each product or service."

The Board agreed with the PTO that the term "one minute" should be taken literally, especially in light of the numeral "1" that is surrounded by the wording.

Applicant pointed to "countless other registrations which incorporate the common element 'ONE MINUTE' without disclaimer," but the Board observed once again that each case must be decided on its own merits. However, it proceeded to review the specific registrations cited by the PTO (which included a disclaimer) and the Applicant (without disclaimer).

As to the former, it found it likely that a closet makeover kit [30 MINUTE CLOSET MAKEOVER] could reasonably be installed in thirty minutes, that one-quarter of an hour proper time to prepare the meals in THE 15-MINUTE CHEF, and ten minutes should be is the enough time to get a prescription filled [10 MINUTE PRESCRIPTIONS].

As to Applicant's cited registrations -- involving the term ONE MINUTE for meditating, or reading the Bible, or losing weight, or making a million dollars -- the mark owners would "legitimately anticipate" that consumers would not take the term literally, but rather would understand it to mean that the activity "can be done more quickly than one might expect," and not that the activity can be completed in one minute.

Based on the record evidence, the Board found it "realistic to believe that 'one minute' is all the time one needs to leave this liquid product to do its work." It therefore affirmed the disclaimer requirement. In accordance with Rule 2.142(g), however, Applicant was allowed thirty days to submit the required disclaimer.

Text Copyright John L. Welch 2006.


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