Monday, August 30, 2010

WYHA? TTAB Affirms Mere Descriptiveness Refusal of "ZEOLITE" for Dishwashers

This applicant tried everything but the kitchen sink in attempting to overcome a Section 2(e)(1) mere descriptiveness refusal of the mark ZEOLITE for dishwashers. Nonetheless, its appeal went right down the drain. Would You Have Appealed? In re BSH Bosch und Siemens Hausgeraete GmbH, Serial No. 77586001 (August 13, 2010) [not precedential].


Examining Attorney Tasneem Hussain maintained that "zeolite" is a specific type of silicate material and that Applicant's own website touts the use of zeolite in its dishwashers.

Applicant contended that the dictionary makes no mention of dishwashers in defining "zeolite" [I'm shocked! - ed.]; that "zeolite" does not convey any immediate information regarding the goods [What about that website? - ed.]; that the term is infrequently used and therefore consumers won't perceive that it names a feature of the goods; and that registration of the mark will not deprive competitors of the ability to use the term descriptively.

From a review of the record evidence, the Board litotically found it "hard not to conclude" that zeolite is not a significant feature of Applicant's appliances: several pounds of zeolite are held in a special compartment that is accessed during the machine's drying phase.

In short, the Board had "no doubt" that the mark immediately describes Applicant's goods.

Applicant, however, boldly urged that ZEOLITE is non-descriptive, like the mark SHEER ELEGANCE for pantyhose. The Board, however, contrasted ZEOLITE with that mark, and with SUGAR AND SPICE, CHABLIS WITH A TWIST, and NO BONES ABOUT IT, and found no double-entendre in Applicant's mark. [What if Applicant had used the advertising slogan: ZEOLITE UP MY LIFE? - ed.]

The purported fact that Applicant is the first and only user of the mark ZEOLITE does not, of course, avoid mere descriptiveness. And the fact that others could still use the term "zeolite" in its dictionary sense does not justify registration:

To recognize this as an inherently distinctive source-indicator for dishwashers would be to create potential disruption in the marketplace where competitors would be leery of using the term in its ordinary, descriptive sense for fear of infringing applicant’s registered mark.

Finally, Applicant' insisted that zeolite has so many uses that the term would not convey an immediate idea regarding the nature or characteristics of Applicant's dishwashers. The Board, however, pointed out for the umpteenth time that the mere descriptiveness determination is not a guessing game and that the proposed mark must be considered in relation to the goods.

The proto-typical consumer of our legal test for mere descriptiveness is not blindfolded, but knows full well that applicant is not using the mark in connection with cars, software, phones, etc. Rather, the relevant consumer knows that applicant is manufacturing and marketing dishwashers having a special drying feature that saves energy. We also presume that this prospective purchaser understands the relevant connotation of the word “Zeolite.” We find that such a consumer, upon first encountering applicant’s Zeolite goods in the marketplace will immediately, without conjecture or multi-stage reasoning, reach a conclusion as to one significant feature, function or characteristic of applicant’s dishwashers.

And so the Board affirmed the refusal.

TTABlog comment: I think this decision should be precedential. Even though it's pretty straigthforward, the opinion includes nice explanations of several facets of the law of mere descriptiveness.

TTABlog note: Applicant's identification of goods reads "household and kitchen machines and equipment, namely, electric kitchen machines and equipment, namely, dishwashers; structural parts of all aforementioned goods in International Class 7.1." Couldn't it just say "dishwashers and structural parts therefor?"

Text Copyright John L. Welch 2010.


At 9:19 AM, Blogger John Ward said...

I was not unimpressed by your use of litotically.

At 10:18 AM, Anonymous Orrin A. Falby said...

John, as you know, I used to work for Siemens and was one of the only TM professions in the US operating company. These types of goods descriptions are typical when you have patent attorneys crafting them.

At 10:32 PM, Anonymous Mark Perdue said...

As a patent attorney and trademark practitioner I resent that remark. However, many of my colleagues resemble it. I often counsel my young charges that goods/services descriptions are not claim drafting. The advent of TEAS plus has been a godsend for avoiding prolix goods descriptions.


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