Test Your TTAB Judge-Ability: Must "SERVICE CREW" be Disclaimed for Retail Store Services?
When Sears sought to register the mark SEARS BLUE SERVICE CREW in standard character form, for "retail department store services; retail store services featuring appliances, electronics, lawn and garden equipment," the Examining Attorney required a disclaimer of SERVICE CREW. The Board rendered a split decision. What do you think? In re Sears Brands, LLC, Serial No. 77558337 (December 20, 2010) [not precedential]
Examining Attorney Paul A. Moreno relied on dictionary definitions of the constituent words and on several Internet website pages using the term "service crew." Sears claimed that SERVICE CREW is not merely descriptive and that the entire mark is a unitary phrase or slogan that does not require the disclaimer.
According to Sears, consumers must perform "additional mental steps to conclude what type of assistance may be involved." It urged that the entire mark is unitary, and would be perceived as a whole, because of the rhyming of "blue" and "crew" and because of its incongruity ("what is a blue service crew?").
Finally Sears argued that its mark is a double entendre because the term "Blue Crew" is "identified with fan clubs for teams whose main color is blue": thus the phrase BLUE SERVICE CREW "makes consumers think of an appliance and electronics fan club." [LOL! - ed.]
The panel majority agreed that SERVICE CREW is incongruous because it "does not immediately call to mind retail department store services or its employees." [Is that the right question? Shouldn't the mark be considered in the context of the services, not in the abstract? - ed.] According to the majority, "'Service Crew' is not the usual or normal way that consumers refer to a retail department store or its employees." [But the law says that even if an applicant is the first or only one to use a particular term, the term may still be descriptive - ed.] Recognizing the "thin line separating merely descriptive terms from suggestive terms," the majority therefore concluded that SERVICE CREW is "highly suggestive, not merely descriptive."
As to whether Sears' mark is unitary, the majority observed that it must consider how the average purchaser would view the mark. "This can be best accomplished by looking at the specimen filed with the application," but there was no specimen for this ITU application. So the Board looked to the website evidence and found the logo form of the involved mark depicted above, used in connection with repair and maintenance services.
Although Sears filed to register the mark in standard character form, "because applicant has already used the mark in connection with repair and maintenance services, it is reasonable for us to assume that it will continue to use a similar format in order to take advantage of the goodwill already created by the mark, as well as in the investment in creating the logo and associated advertising." [What a strange statement! Why should the Board assume any such thing? - ed.]
The majority concluded that "[c]onsumers will not break the mark SEARS BLUE SERVICE CREW into its component parts but will regard it as a unitary mark, in part, because the mark rhymes." Noting that registration of the mark "does not create or recognize any rights in the individual elements of the mark apart from the mark as a whole," the Board concluded that a disclaimer of SERVICE CREW is not necessary. [Then why should there ever be a disclaimer requirement for any mark? -ed.]
Judge Wellington dissented, particularly disagreeing with the majority's reliance on the website evidence of use.
TTABlog comment: The Board's approach to disclaimer issues is, to say the least, murky. For another disclaimer decision that is perhaps even stranger, see the Board's recent ruling in In re AmQuip Crane Rental, LLC, Serial No. 77331303 (December 6, 2010) [not precedential], where the Board reversed a requirement for disclaimer of CRANE in the mark AMQUIP THE CRANE PEOPLE & Design for crane rental and leasing services].
Text Copyright John L. Welch 2011.