Friday, May 14, 2010

Test Your TTAB Judge-Ability: Is This Mark, With Disclaimer, Stylized Enough for the Principal Register?

The Board found the term IT BAG to be merely descriptive of "travel bags; multi-purpose purses; purses." But here's the question: if Applicant disclaimed IT BAG in the applied-for mark shown below, is the mark sufficiently distinctive to merit a registration on the Principal Register? You be the judge. The TJX Companies, Inc. v. Denise Marie Barr, Opposition No. 91185498 (April 30, 2010) [not precedential].

After almost stumbling over the standing hurdle, Opposer established that the term "It Bag" is used to describe a handbag which is "trendy, fashionable or stylish in nature." In other words, it's a bag that some consumers must have.

That led to this question: whether the mark IT BAG in the stylized form shown above is registrable on the Principal Register with a disclaimer of IT BAG. When descriptive words are presented in a distinctive design, "the design may render the mark as a whole registrable, provided that the words are disclaimed, under Section 6."

we must determine if the stylization of the mark is inherently distinctive; that is, the “stylization of the words or the accompanying design features of the asserted mark [must] create an impression on purchasers separate and apart from the impression made by the words themselves."

The Board then reviewed several relevant, prior decisions on the issue:

Marks found not to have inherently distinctive stylization:

Marks found registrable because of distinctive stylization:

Here's the decision
: The Board found the applied-for mark to be "far more distinctive than any of the marks cited above which were refused registration and is more in the nature of the marks which were registered on the Principal Register." The Board explained:

the substantially vertical, overlapping upper case “I” and lower case “T” of approximately equal size and of different shading in “IT,” with the base of the “I” complimenting the base of the “T,” creates an impression on purchasers separate and apart from the impression made by the words themselves.

Therefore the Board sustained the opposition but allowed Applicant thirty days to submit a disclaimer of IT BAG, in which case the decision will be set aside and the mark "forwarded for registration."

TTABlog comments: Well, how did you do? Compare this decision to the recent JUMBOZ decision (blogged here).

I found it curious that the Board considered the disclaimer issue at all. It seems it was raised by Opposer, not Applicant, and Opposer raised it only in its pleading and not in its brief.

Former TTAB Judge Beth Chapman pointed out to me this morning that the Board should have returned the application (an ITU) to the office for issuance of a notice of allowance, nor for registration.

Text Copyright John L. Welch 2010.


At 12:42 PM, Anonymous Anonymous said...

To me this was a relatively easy one to call: the stylization of "IT" is distinctive. But if you had asked me to vote on the outcomes of the earlier Board decisions, my report card would not look that great.

At 1:55 PM, Anonymous Rob said...

I wonder what happened to the Board's usual knee-jerk reaction that you can't rely on findings (as opposed to holdings) from prior cases because they were each based on its own unique record.


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