Tuesday, July 21, 2009

"SKINNY CEREAL" Merely Descriptive of Cereal Products, Says TTAB

Peace Mountain Natural Beverages, owner of the registered marks SKINNY WATER, SKINNY JUICE, SKINNY COLA, SKINNY TEA, SKINNY CAPS, and SKINNY SHAKE [each with the second word disclaimed], failed to fatten its trademark portfolio with registration of its mark SKINNY CEREAL for "nutriceuticals for use as a dietary supplement in the form of cereal products and cereal-based snack foods" and for "breakfast cereal, snack food, namely, cereal based snack food, processed cereal-derived food products to be used as a breakfast cereal, snack food or ingredient for making food." The Board affirmed a refusal to register under Section 2(e)(1), finding the mark merely descriptive of the goods. In re Peace Mountain Natural Beverages Corp., Serial No. 77326673 (June 30, 2009) [not precedential].

Oliver asks for more

Examining Attorney Mary D. Munson-Ott relied on dictionary definitions of skinny (low-fat) and cereal, and on websites showing the use of “skinny” descriptively in connection with diet foods and beverages. She maintained that "consumers clearly understand ‘skinny’ to mean that the goods are lower in fat, lower in calories, or lower in some other ingredient or attribute that has a negative connotation in today's weight-conscious society."

Applicant contended that the word "skinny" has multiple meanings and that, with respect to the present mark, "the public cannot determine if applicant's mark is indicating a product which is low-fat, just slender, minimal or a thin product or a product which resembles skin." [I thought the last one, didn't you? - ed.]

The Board pointed out for the zillionth time that the meaning of a mark must be considered in the context of the goods at issue, not in the abstract:

It is settled that "[t]he question is not whether someone presented with only the mark could guess what the goods or services are. Rather, the question is whether someone who knows what the goods or services are will understand the mark to convey information about them."

The Board concluded that the mark is merely descriptive because it "immediately informs prospective customers that applicant's cereal and cereal products are low-fat and/or low-calorie, or otherwise will allow the consumers of applicant’s cereal and cereal products to achieve or maintain a skinny or thin body."

Applicant pointed to its six registered skinny marks, and to allowed applications for SKINNY SMOOTHIE and SKINNY JAVA [second word disclaimed in each], but the Examining Attorney responded that "trademark rights are not static, and eligibility for registration must be determined on the basis of the facts and evidence in the record at the time registration is sought." The Board agreed with the Examining Attorney:

As the late Judge Rich observed: "Rights in this field do not stay put. They are like ocean beaches; they shift around. Public behavior may affect them." Rich, "Trademark Problems As I See Them--Judiciary," 52 Trademark Rep. 1183, 1185 (1962). [An odd title, don't you think? -ed.]

The Board observed that the meaning of "skinny" has evolved over time and "has taken on a merely descriptive meaning today when used in connection with foods and beverages, that is, that the food or beverage is low-calorie and/or low-fat." Moreover, the Board noted for the zillionth time that "each case must be decided on its own facts. We are not privy to the files in applicant’s registrations and applications. In any event, we are not bound by the prior actions of examining attorneys."

And so it affirmed the refusals to register.

TTABlog comment: Ouch! That's a kick in the pants to the entire SKINNY family.

Text Copyright John L. Welch 2009.


At 10:56 AM, Blogger Ed Wrath said...

The TTAB has obviously no intention of bringing any type of consistency to the registration process.

At 1:38 PM, Anonymous Anonymous said...

One irony here is that the Examiner and the Board may well be inadvertantly relying on the success of the SKINNY family in the determination that the meaning of this term only NOW is within Sec. 2(e)(1) and therefore descriptive. One might say to the client, "that's price of success, please take two aspirins..."

At 5:28 PM, Anonymous Josh said...

Ed, to be consistent in this instance is to ignore the evolution of words. The TTAB should never look at prior registrations and say, "hey, this was distinctive then, it must be distinctive now." It must assess the nature of a mark based on the present meaning of its component terms. If certain terms have developed over the course of 5-10 years to serve as descriptive or generic indicators for certain goods or services, the Board should not be "consistent" -- it should treat them accordingly.


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