Tuesday, December 19, 2006

"THE HOME DIGITAL JUKEBOX" Merely Descriptive, Says TTAB

The Board affirmed a Section 2(e)(1) refusal to register THE HOME DIGITAL JUKEBOX [DIGITAL JUKEBOX disclaimed], finding it to be merely descriptive of a “digital music audio recording and playback system consisting of a recorder/playback unit, speakers and remote control.” In re Gibson Guitar Corp., Serial No. 76610100 (October 23, 2006) [not citable].

Applicant Gibson contended that its mark is “comprised of four words which have never been combined in exactly this way before.” It argued that the phrase is incongruous and therefore inherently distinctive because ‘jukeboxes are traditionally found in smoky bars and other commercial establishments, not homes.” The Board refused to dance to that tune. “[E]ven if Applicant were the first or only user of the four-word composite THE HOME DIGITAL JUKEBOX, that fact would not negate the mere descriptiveness of the mark." Moreover, even if “traditional” jukeboxes (playing vinyl records or compact discs) are found in commercial establishments, the PTO’s NEXIS and Internet evidence clearly established that digital jukeboxes are for home use as well. Thus, the Board found nothing incongruous about combining THE HOME and DIGITAL JUKEBOX.

"DIGITAL JUKEBOX is a generic name for the goods, and THE HOME merely describes where that digital jukebox may be created and/or used. The composite mark is as merely descriptive as its components are separately."

Finding Applicant's arguments to the contrary to be "wholly unpersuasive," the Board affirmed the refusal to register.

Text Copyright John L. Welch 2006.


Post a Comment

<< Home