Tuesday, January 13, 2009

"CHARLESTON GATE" Merely Descriptive of Jewelry Copying Charleston Gate Designs, Says TTAB, Not Surprisingly

In another gem of a case that warrants addition to our WYHA? collection, the Board affirmed a Section 2(e)(1) refusal to register the mark CHARLESTON GATE, finding it to be merely descriptive of "jewelry, namely, earrings, necklaces, pins, slides, rings, bracelets, pendants, charms, key rings." In re B. Gould Jewelry, Inc., Serial No. 78836910 (December 22, 2008) [not precedential].

Examining Attorney Michael A. Wiener maintained that the mark is merely descriptive because the goods "contain the designs of the famous gates of Charleston, South Carolina, or replications thereof." He provided substantial evidence indicating that "Charleston, South Carolina, is famous for the design of the large hand-crafted gates built over centuries that dot the city. The term 'CHARLESTON GATE' refers to those gates and the renowned designs of those gates." Various third-party websites offer jewelry based on the designs of the Charleston gates, at least one of the websites featuring Applicant's goods.

Applicant B. Gould Jewelry did not deny that its designs "are interpretations of wrought iron structures located in Charleston South Carolina." However, it feebly contended that "[t]he goods are not a gate; the goods do not comprise a gate; no part of the goods is a gate; the goods do not, and could not function as, or be used as, a gate. The jewelry has no feature or characteristic associated with gates that are in common use."

The Board slammed the gate on Applicant's appeal:

"The evidence establishes that CHARLESTON GATE identifies the designs applicant employs in its jewelry. The evidence also establishes that relevant consumers will recognize CHARLESTON GATE as identifying those designs. Indeed, applicant’s own marketing is based on this assumption. The evidence belies applicant's claim that these designs are obscure and unknown to potential purchasers. In this regard, it is applicant’s own use of CHARLESTON GATE which is most probative of the descriptive significance of the mark in relation to the goods."

In short, "it is clear that the mark merely describes the designs which are the essential feature of the goods, jewelry." The Board therefore affirmed the refusal to register.

Text Copyright John L. Welch 2009.


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