Thursday, April 16, 2009

TTAB Chops Down Evasive "SILVER BIRCH" Applicant with Three Well-Aimed Strokes

Victoria Principal Productions, Inc. was seeking to register the mark SILVER BIRCH for skin and body preparations, but it refused to give a direct response to Examining Attorney John Dwyer's request for information that would "make clear whether the goods will contain silver birch as an ingredient." The PTO refused registration on three grounds: failure to comply with the Rule 2.61(b) request for information, Section 2(e)(1) mere descriptiveness, or alternatively, Section 2(a) deceptiveness. The Board, obviously annoyed at Applicant's antics, barked out its affirmance of all three registrations In re Victoria Principal Productions, Inc., Serial No. 78245283 (March 25, 2009) [not precedential].

Betula Pendula

Section 2.61(b) Request for Information: Applicant VPPI's weaselly response to the PTO's request suggested to the Board that "applicant is being evasive because it fears that a totally truthful response might well support the statutory refusals ..., thereby hurting its chances of getting a registration."

[A]pplicant’s hair-splitting responses on the merits combined with a strategic refusal to supply the requested information seemed calculated to interject just enough ambiguity into the record to avoid a falsehood while defeating the ability of the Trademark Examining Attorney to prove descriptiveness or deceptiveness in an Intent-to-Use application without an allegation of use, specimens, etc.

The Board ruled that Applicant's responses clearly did not satisfy the PTO's Rule 2.61(b) request, and so the Board affirmed the refusal on that ground.

Victoria Principal

Section 2(e)(1) Mere Descriptiveness: Although Applicant VPPI acknowledged that "an extract of a 'Birch' tree may be present as an ingredient in at least some" of Applicant's goods, Applicant feebly argued that "Silver Birch" is merely suggestive: it "evokes the image of a silvery-leaved birch tree so that consumers will imagine the feelings of shimmering beauty, lightness and serenity."

The Board saw the issue to be whether the term SILVER BIRCH conveys, immediately and particularly, information about a significant feature, characteristic, or ingredient of the goods. Rejecting Applicant's "hair-splitting" arguments, the Board found the record replete with uses of "Silver Birch" in a manner that immediately conveys information about an ingredient of Applicant's products.

The record shows the wide range of medicinal uses of Silver Birch, dating back thousands of years to pre-history and spanning the millennia all the way up to still unfolding promise for dealing with melanomas and HIV/AIDS.

Third-party advertising showed "silver birch" used with skin cleansers, moisturizers, and lotions, sunscreen preparations, cosmetics, skin soaps, hair-care preparations, and tooth-whiteners.

The Board concluded that the term SILVER BIRCH "has a readily understood" meaning as applied to the goods, and it ruled that Applicant's mark is barred from registration by Section 2(e)(1).

Section 2(a) Deceptiveness: In order to prove a mark to be deceptive, the PTO must show that (1) the mark misdescribes a character, quality, function, composition or use of the goods; (2) prospective purchasers are likely to believe that misdescription; and (3) the misdescription is likely to affect the purchasing decision.

If Applicant's goods do not include silver birch extracts, then the mark SILVER BIRCH is misdescriptive of them. Given the "extraordinary cosmetic and medicinal benefits allegedly imparted by these ingredients, informed and intelligent prospective purchasers are the ones most likely to believe that the misdescription actually describes applicant's goods." As to the third prong:

With ever more scientific information about the range of benefits of these extracts, including as treatment for deadly melanomas and HIV/AIDS, the perceived benefits of “Silver Birch” as an ingredient in the identified goods also promise to increase beyond its current elevated level. Accordingly, we find that such a misdescription is likely to affect the decision to purchase the goods.

The Board therefore affirmed the alternative Section 2(a) refusal.

TTABlog note: For a similar triple refusal, see the NORMANDIE CAMEMBERT cheese case, TTABlogged here. The moral of the story is simple: if you don't respond properly to a Rule 2.61(b), your cheese may be up a tree.

Text Copyright John L. Welch 2009.


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