TTABlog 2(e)(1) Triple-Header: Mere Descriptiveness is Not a Guessing-Game!
Here are three darn good candidates for our WYHA collection. Each appeal involved a Section 2(e)(1) mere descriptiveness refusal, and each resulted in a TTAB affirmance. There’s a common thread to the arguments of the applicants, but it’s a losing thread. Would you have appealed in some, all, or any of these?
In re David Michael & Co., Inc., Serial No. 77296898 (May 5, 2009) [not precedential] involved the mark SLICEABLE SALSA for “individually wrapped portions of salsa” [SALSA disclaimed]. Applicant argued that the words, when combined, are “incongruous” and “inapposite.” The Board, however, opined that “it would not take any leap of logic for consumers looking at the mark and the identification to conclude that that the 'individually wrapped portions of salsa' are probably sliceable in some form.” Thus “someone who knows what the goods or services are will understand the mark to convey information about them.”
Moreover, Internet evidence (from a foreign website) showed that sauces can indeed be "sliceable." And, as the Board pointed out for the zillionth time, even if an Applicant is the first to use a descriptive term in connection with its goods, that does not make the term a source identifier.
In re Public Safety Health Systems, Inc., Serial No. 77204264 (May 12, 2009) [not precedential]. Applicant contended that the mark PUBLIC SAFETY HEALTH AND WELLNESS [with PUBLIC SAFETY disclaimed] is at most suggestive of “newsletters in the field of enhancing the well-being of public safety professionals,” asserting that “[t]here is absolutely nothing within the mark … that immediately tells anyone that it identifies newsletters in the field of enhancing the well-being of public safety professionals.” The Board, however, pointed out that it must “determine whether PUBLIC SAFETY HEALTH AND WELLNESS is merely descriptive as applied to he identified goods, not in a vacuum.”
The question whether a mark is merely descriptive is not determined by asking whether one can guess from the mark what the goods are, but rather by asking, when the mark is seen on or in connection with the goods, whether it immediately conveys information about their nature.
Applicant’s specimen of use stated that the newsletter is “committed to enhancing the safety and well being of public safety professionals,” and "health and wellness" is descriptive of the subject matter. Combining the two phrases creates no new or incongruous meaning.
In re Liberty Hardware Mfg. Corp., Serial No. 77075756 (May 13, 2009) [not precedential] concerned the mark PALLADIUM for “metal pulls and knobs for cabinetry” and “bath accessories, namely towel bars, towel rings, toilet tissue holders, and toothbrushbtumbler holders.” The PTO’s evidence showed that “palladium” is a color (apparently derived from the silver-white metal of that name) that is used for a variety of goods, and Applicant's own website showed its goods in a silvery color.
Applicant asserted that it chose the mark because of its association with historic theaters in London and the United States called “Palladium,” and it contended that because there are other meanings for ‘palladium” the term cannot be merely descriptive. The Board was unmoved:
[T]he fact that a term may have other meanings in different contexts is not controlling. Nothing in the record before us demonstrates that consumers would associate pulls and knobs for cabinetry, or bath accessories, with theaters, nor do we understand why applicant’s attempt to associate its goods with the trademarks or service marks of others should be a basis to find that the mark does not describe the color of applicant’s goods.
TTABlog comment: Well, WYHA? Of the three cases, the first one seems the most tempting, appeal-wise, since the idea of "sliceable salsa" is rather incongruous at first glance. This was an I-T-U application without a specimen of use, but the Examining Attorney never asked for more information regarding the goods. Had he done so, the record might have been clearer.
As to the other two, fuhgeddaboudit!
Text Copyright John L. Welch 2009.