Thursday, June 26, 2008

Precedential No. 33: TTAB Affirms Refusal of "FREEDOM STONE" for Cornerstones as Title of a Single Work

After ruling that an amendment of Applicant's mark from FREEDOMSTONE to FREEDOM STONE was not a material alteration of the mark, the Board affirmed the PTO's refusal to register on that ground that Applicant's mark is the title of a single artistic work, namely, the cornerstone for the Freedom Tower building under construction at the World Trade Center site in New York City. In re Innovative Companies, LLC, 88 USPQ2d 1095 (TTAB 2008) [precedential].

Drawing/Specimen Issue: Applicant originally filed for the mark FREEDOMSTONE as a single word mark. Its specimen of use, however, displayed the mark as two words (see specimen above).

The Board first considered whether the mark in the drawing is a substantially exact reproduction of the mark as used on the goods. Rule 2.51(b). The Board found that it was not. However, Applicant submitted a new drawing depicting the mark as two words, and so the next question was whether, under Rule 2.72(b), the amended drawing "does not materially alter the mark."

The Examining Attorney lamely contended that FREEDOM STONE (two words) was a material alteration because "FREEDOMSTONE may present to purchasers impressions not present in the separate words. For example, the designation FREEDOMSTONE may be viewed as the word combination FREEDOMS TONE, which suggests that there is a sound of freedom related to applicant's goods. Then again, FREEDOMSTONE may be looked at as FREE DOM STONE ('Dom' being the German for dome), which suggests that applicant's goods may be used as part of such structures."

The Board found the PTO's arguments "creative" but far-fetched. It agreed with Applicant that the amended mark would not require a new search, and, referring to several Board precedents, it found that the substitute drawing is not a material alteration of the original mark.

Freedom Tower

Single Work Refusal: Applicant sought to register the mark for "building stones used as landmarks or cornerstones," but the Examining Attorney maintained that FREEDOM STONE "identifies a particular granite stone that will apparently serve as the cornerstone for the Freedom Tower that is to be erected at the World Trade Center site in New York City."

Applicant asserted that it is selling miniature replicas of the "Freedom Stone," but the PTO pointed out that Applicant is not seeking registration for souvenirs. Applicant did not submit any evidence that "it has any intention to produce any other building stones used as landmarks or cornerstones identified with the FREEDOM STONE mark."

The Board observed that it has long been held that the title of a book does not function as a trademark, and the CAFC has ruled that the title of a theatrical production is likewise not a mark. However, a mark that identifies a series of works may be registrable.

"In this case, the evidence of record indicates that there is a total of one 'Freedom Stone' building stone. It is designated as the cornerstone of the Freedom Tower building under construction in New Your City."

The Board therefore affirmed the refusal to register.

TTABlog comment: If Applicant had tried to register FREEDOM STONE for souvenirs, i.e., replicas of the FREEDOM STONE, wouldn't the term be merely descriptive or even generic?

Text Copyright John L. Welch 2008.


Post a Comment

<< Home