Thursday, December 17, 2009

"PEDRO PAN" Merely Descriptive of Charitable Services, Says TTAB

The Board sustained a Section 2(e)(1) opposition to registration of the mark PEDRO PAN in standard character form, finding the mark merely descriptive of "Eleemosynary services in the field of monetary donations." Applicant claimed acquired distinctiveness under Section 2(f) but its proofs fell short, and the Board ruled that Applicant could not rely on transferred distinctiveness from its prior registration of the mark shown immediately below. Yvonne M. Conde and Oscar B. Pichardo v. Operation Pedro Pan Group, Inc., Opposition No. 91177853 (December 15, 2009) [not precedential].

Morehouse Defense: Applicant asserted the Morehouse defense based on its ownership of an incontestable registration for a mark that incorporates PEDRO PAN (see above), and contending that "equity therefore estops Opposers from asserting that they will be damaged by Applicant's registration of the mark PEDRO PAN."

However, the Board pointed out, the Morehouse defense is not available in response to a claim of mere descriptiveness. [It never works anyway - ed.]

Mere Descriptiveness: Both Opposers testified that they escaped from Cuba to the United States in a program organized by the United States government and dubbed "Operation Pedro Pan." As one Opposer explained:

"Pedro Pan is a spin on Peter Pan, the play by James Barrie and it's a twist using a Spanish name for the child who could fly and Never Neverland and who did not have parents so this was coined by the press in Miami."

The record included dozens of newspaper articles that use the term "Pedro Pan" to refer to the 14,000 unaccompanied minors who arrived in the United States from Cuba during 1960-62. Some of the articles discussed related charity services. Moreover, Applicant's own website has used the term PEDRO PAN descriptively to refer to those children.

Applicant contended that the third-party uses and its own uses refer to Applicant's services, but the Board found that "the term PEDRO PAN has been used by many third-parties generally as a moniker for this particular group of children." In addition, "many charitable services have been rendered to, and on behalf of, this group of 'Pedro Pan' children, who are now adults." The general public and the Pedro Pan children (now adults) recognize PEDRO PAN as describing this group of children, "even as they are now adults."

Acquired Distinctiveness: The Board noted that Applicant may rely on any evidence submitted during prosecution of its applications, since the entire file of the application is automatically a part of the record under Rule 2.122(b) and the CAFC's Cold War Museum decision. [TTABlogged here].

Applicant maintained that its prior Section 2(f) registration of the "same mark" constitutes prima facie evidence of acquired distinctiveness under Rule 2.41(b). The question was whether the marks and identified services are sufficiently similar that the distinctiveness of the registered mark may extend to the mark and services in the application.

The Board noted that, although only the words PEDRO PAN are not disclaimed in the registration, those words are not highlighted and the word OPERATION is more outstanding.Moreover, the design features of the mark "figure prominently." Therefore, the Board could not say that based on this prior registration alone, PEDRO PAN has acquired distinctiveness.

Furthermore, in view of the many third-party uses of PEDRO PAN, the Board found the mark to be highly descriptive, and so Applicant had a higher burden to show acquired distinctiveness. Applicant failed to satisfy that burden.

And so the Board sustained the opposition.

Text Copyright John L. Welch 2009.


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