Thursday, July 22, 2010

Test Your TTAB Judge-Ability: Is "MARGARITA COMPANY" Merely Descriptive of Bar and Restaurant Services?

No, it isn't, said the Board. In a seven-page decision, the TTAB reversed a Section 2(e)(1) refusal to register the mark MARGARITA COMPANY, finding it not merely descriptive of restaurant and bar services. Although the mark is "highly suggestive," the Board resolved its doubts in favor of Applicant, as it must. In re Fazzari Restaurant Group LLC, Serial No. 77109197 (June 22, 2010) [not precedential].

The record included definitions of "margarita" and "company," and evidence that margaritas are served in restaurants and bars, and that many restaurants include "margarita" in their names.

Applicant argued that the words, taken together, "suggest an industrial activity, creating the commercial impression of a business that is engaged in a manufacturing enterprise – e.g., a company manufacturing Spanish or Mexican products (Margarita being the Spanish name of a girl) – not a restaurant or bar offering commensurate services." [But the mark is supposed to be considered in the context of the services, not in the abstract. - ed.]

The Board found the combination to be "incongruous because a restaurant or bar that serves Margaritas does not immediately call to mind a Margarita company, whatever that may be." [Is that the test? I don't think so. - ed.]

MARGARITA COMPANY is not the usual or normal manner in which consumers refer to a restaurant or bar specializing in Margaritas; although it is highly suggestive, it possesses enough incongruity to raise doubt as to its mere descriptiveness because its meaning would not be grasped without some measure of imagination and "mental pause." Accordingly, we find that the term MARGARITA COMPANY, as used in connection with restaurant and/or bar services, does not readily and immediately evoke an impression and understanding of restaurant or bar services.

And so the Board reversed the refusal.

TTABlog comment: Margaritas often give me a "mental pause." I have my own doubts about this decision and I resolve them in favor of me. BTW: if LEMONADE is merely descriptive of restaurant services (see this TTABlog posting), shouldn't this Applicant at least have been required to disclaim MARGARITA?

Text Copyright John L. Welch 2010.


At 8:12 AM, Blogger Frank said...

If you believe, as I do, that the current case law on descriptiveness goes far beyond the intentions of the Lanham Act, then this case makes perfect sense. No one needs to use MARGARITA COMPANY to describe their restaurant and bar services. Restaurants and bars are not generally referred to as "margarita companies." So you can cite all the bad case law you want, but Congress did not intend that marks like MARGARITA COMPANY were to be denied registration.

At 8:57 AM, Anonymous Bob said...

So this mark is registrable, but ELECTRIC CANDLE COMPANY is generic.

At 9:52 AM, Anonymous Anonymous said...

We could say the same to "The Cheesecake Factory".

At 12:46 PM, Anonymous Anonymous said...

I agree w/ Frank that this mark shouldn't be descriptive. More precisely, I believe consumers would immediately understand this mark to be a mark b/c they're conditioned to seeing brands like this.

However, this case doesn't line up well with most other TTAB decisions on descriptiveness and genericness.

The TTAB's inconsistency is very consistent.


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