Wednesday, July 29, 2009

WYHA? TTAB Affirms Mere Descriptiveness Refusal of "LOCAL LABEL" for Clothing

Marylander Curtis A. Brubaker, Jr., failed to overcome a Section2(e)(1) mere descriptiveness refusal of the mark LOCAL LABEL for "hats; polo shirts; shirts; short-sleeved or long-sleeved t-shirts." The two arguments that this local Applicant tried on for size were sure TTAB losers, which is why this case is a candidate for our WYHA label. In re Curtis A. Brubaker Jr., Serial No. 78797601 (July 8, 2009) [not precedential].

Maryland state flag

Examining Attorney Steven Foster relied on dictionary definitions of "local" and "label," on excerpts from newspapers downloaded from NEXIS, and on Internet webpages, in arguing that "when viewed in connection with applicant's goods, the words 'LOCAL LABEL' merely describe clothing items sold near their location of manufacture or design." The Board found that evidence "highly persuasive."

Applicant Brubaker lamely asserted that "the average consumer would be hard-pressed to name what goods, or types of goods, etc., are described by the mark 'LOCAL LABEL.'" Of course, as the Board has pointed out a million times, that is not the correct approach to a mere descriptiveness determination:

"The 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." In re Tower Tech Inc., 64 USPQ2d 1314, 1316-17 (TTAB 2002).

Brubaker contended that the existence of a (now-expired) third-party registration for the mark LOCAL BRAND for clothing items supports registration of his mark, since that mark has "a nearly identical meaning." No way, said the Board:

... it is well settled that each case must be considered on its own merits and the Board is not bound by decisions of examining attorneys in other applications. In re Nett Design Inc., 236 F.3d 1339, 57 USPQ2d 1564, 1566 (Fed. Cir. 2001).

Two strikes, and Brubaker was out. The Board affirmed the refusal.

TTABlog comment: Well, if it were your money and your decision, Would You Have Appealed?

Text Copyright John L. Welch 2009.


At 11:43 AM, Anonymous Anonymous said...

I would have appealed. Given that federal trademark registrations are national in scope, the statement that the goods are sold near where they are manufactured or designed seems far too narrow if the goods are to be sold in interstate commerce, which presumably would include the right to sell them at least throughout the entirety of the U.S. (in which case they may be primarily sold very far from where they are manufactured or designed). This conclusion is especially true here, as the applicant filed based on intent-to-use and had no limitation in his goods id limiting the area where the goods are to be sold. Employing a geographically descriptive analysis, the goods may very well likely not be primarily sold locally, and the term LOCAL, for the vast majority of consumers, may indeed not reference a location near the place of manufacture or design.

I wouldn't say the chances of winning this appeal were super high, but it is certainly not a WYHA case.

At 1:29 PM, Anonymous Josh said...

I think it's time to turn the absurd frequency of that first argument into a drinking game.

At 5:36 PM, Anonymous Tom said...

I really don't get the decision here. LOCAL doesn't convey any kind of meaning to me with regard to the goods-- every good is made locally somewhere. Does wearing the mark indicate one is supposed to be a "local?"

How did MEMBERS ONLY ever make it through the PTO?

At 4:07 PM, Anonymous Sam said...

I'm with Tom . . . I don't get this case. I didn't read it, only John's post. That said, I can't figure out just of what the mark is descriptive. Isn't "Local" a relative term? I don't see how that describes a quality or characteristic of the goods. I think "Local Label" would be just as good as a mark with any arbitrary term + the word "Label." Maybe I'm missing something.

Applicant should have also referenced the several registered "Locals Only" marks. If this decision is right, aren't those marks merely descriptive too?

At 5:14 PM, Blogger John L. Welch said...

If this applicant were able to register LOCAL LABEL, then it might use the registration to harass other clothing makers who want to tell the public that they are a "local label," which might be attractive to some consumers. That's why I think you have to consider it as merely descriptive.

I think this mark could be descriptive or misdescriptive, depending on where it is making the goods and where it is selling.

At 11:18 AM, Anonymous Tom said...

John, I would disagree. I've never heard the term "local label" used descriptively. I someone might say, "BRAND X, a locally-made clothing label," but that's a different animal completely.

It's within the realm of possibility a company could use BRAND X LOCAL LABEL, to indicate clothing made specially for that local market, but I've never seen it.

Some free advice-- the Applicant should take another stab with the mark styled LO-CAL LABEL.

At 3:47 PM, Anonymous Anonymous said...

The image you used for the Maryland flag is incorrect. The two yellow and black quadrants are supposed to be identical. Yours has the lower right rotated 180 degrees putting the little black polygon in the outer bottom.

At 4:27 PM, Blogger John L. Welch said...

I was wondering if/when someone would catch that. It only took 18 months for some sharp-eyed Marylander to complain.


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