Friday, March 07, 2008

TTAB Reverses Mere Descriptiveness Refusal of "THE UNDERWEAR AFFAIR" for Charitable Fundraising Services

In an appropriately brief opinion, the Board reversed the PTO's Section 2(e)(1) refusal of the mark THE UNDERWEAR AFFAIR, finding it not merely descriptive of “charitable fundraising, namely, organizing athletic events to generate funds for research on, and treatment of, cancers below the waist.” The Board also reversed the PTO's requirement that Applicant disclaim that same phrase in its word-and-design mark shown below. In re CauseForce, Inc., Serial Nos. 78624761 and 78625097 (February 15. 2008) [not precedential].

The Examining Attorney contended that the phrase "immediately describes a feature of the applicant's services, that is, that the services include, or is, an affair in which underwear is featured or worn." He pointed out that "participants in [applicant's] charitable fundraising affair are encouraged to wear underwear as their sole piece of outerwear attire," and that Applicant's website "consistently emphasizes the underwear theme."

Applicant urged, in short, that THE UNDERWEAR AFFAIR is at most suggestive, and that attendees "are encouraged to wear underwear, but not as the term is defined, but in the manner of a costume."

The Board found "a good deal of incongruity between the phrase THE UNDERWEAR AFFAIR and applicant's charitable fundraising services ... inasmuch as people are not accustomed to wearing and/or seeing others in their underwear at charitable fundraising events." In addition, the rhyming of UNDERWEAR and AFFAIR "further highlights the fanciful nature of the the phrase." There was no evidence that others would perceive the phrase as merely describing a feature of Applicant's services.

"As a result of the incongruity, when viewing THE UNDERWEAR AFFAIR in connection with applicant’s services, a certain level of imagination is needed before one construes this phrase as describing a charitable fundraiser where underwear is being worn as a costume by participants."

The Board therefore concluded that the PTO had failed to meet its burden of proof, and so the refusals were reversed.

Text Copyright John L. Welch 2008.


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