Friday, September 08, 2006

"MISS NUDE CENTERFOLD SEARCH" Barely Overcomes 2(e)(1) Refusal

Finding that some thought or imagination would be required in order to discern the meaning of the mark MISS NUDE CENTERFOLD SEARCH, the TTAB reversed a Section 2(e)(1) refusal to register the mark for adult videotapes, CD-ROMs, DVDs, and entertainment services. In re JMH Productions, Inc., Serial No. 76608812 (August 25, 2006) [not citable].

The Examining Attorney relied on dictionary definitions of the constituent words and on various articles and Internet excerpts in arguing that the information conveyed by the mark ("i.e., a hunt for a woman or women to pose naked for centerfold pictures") is the "exact subject matter" of Applicant's products and services.

Applicant JMH Productions made of record 28 registration for marks that include the wording "MISS (or MS.) NUDE" combined with other words -- generally geographic or place names. (E.g., MISS NUDE KENTUCKY). Thus, Applicant argued, the PTO's position here is clearly inconsistent with prior and present practice of the Office.

As to the third-party registrations, the Examining Attorney followed the usual TTAB line: that third-party registrations are not conclusive on the question of mere descriptiveness and that each case must be decided on its own merits. This Board panel, however, asserted that third-party registrations, while not establishing binding precedent, "may in general be given some weight to show the meaning of a mark in the same way that dictionary definitions would be so used." [TTABlog note: third-party registrations are typically used to show that a particular term has a descriptive or suggestive meaning, not the opposite].

Here, the Board agreed with the PTO that the phrase NUDE CENTERFOLD SEARCH is merely descriptive of Applicant's goods and services, but the word MISS was a different story:

"we disagree with the Examining Attorney that the relevant consuming public would immediately regard such term as signifying only its literal meaning of a young unmarried woman, notwithstanding the bare fact [TTABlog note: pun in original] that in today's popular culture, it is common knowledge that nude centerfold models, especially those whose natural or enhanced talent and ability have garnered them public recognition as a 'Miss Of The Month' or other perhaps coveted title, are overwhelmingly young unmarried women."

Instead, the word MISS would be viewed as a "courtesy title or form of polite address for a young woman selected as the winner .... but it does not merely describe such designations or categories with any degree of particularity nor constitute its own subject matter."

According to the Board, "consumers would need to employ just enough of a multi-stage reasoning process, or utilize at least a minimum amount of imagination or thought, in order to determine the particular subject matter of applicant's goods or services." Therefore, the mark is merely suggestive, not descriptive.

Finally, the Board noted that the third-party registrations "serve at the very least to raise some doubt" about the descriptiveness of the mark, and that such doubt must be resolved in Applicant's favor.

TTABlog comment: The Board is just kidding here, right? I grasped immediately the meaning of the mark as applied to Applicant's goods and services. In fact a fairly detailed picture instantaneously formed in my mind's eye.

As to those third-party registrations, I think there is a difference between a mark like MISS NUDE IDAHO, say, and MISS NUDE CENTERFOLD SEARCH. As to the former, one definitely hesitates when thinking about a naked female shaped like the potato state. However, no such hesitation occurs with regard to the latter mark. The meaning is as plain as the nose on her face.

Text Copyright John L. Welch 2006.


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