TTAB Affirms Refusal of BENCH VAC for Vacuum Cleaners Due to Applicant's Failure to Comply with Request for Information
In this oddball case, the Board affirmed a refusal to register the mark BENCH VAC for "vacuum cleaners" because Applicant failed to comply with a Rule 2.61(b) requirement that it provide information about the goods. However, the Board reversed a Section 2(e)(1) mere descriptiveness refusal because the Examining Attorney's evidence (two dictionary definitions) was insufficient. In re Shop Vac Corporation, Serial No. 77542156 (February 28, 2011) [not precedential].
Mere descriptiveness: The Examining Attorney contended that because Applicant did not respond to his request for information, "it is reasonable to infer" that the goods comprise vacuum cleaners for use in connection with a worktable or bench.
Not so fast, said the Board. It is inappropriate for an Examining Attorney to speculate about the goods in an ITU application. Applicant stated that its goods might be used on a bench, but it argued that "the place where a product might be used is not an important enough concern in the purchasing decision to warrant a descriptiveness rejection."
The Board sided with the Applicant because there was no evidence that BENCH would be understood by relevant consumers to describe a significant aspect of Applicant's goods.
Request for Information: Applicant failed to respond to the information request until its reply brief, where it stated merely that it has no marketing materials. Applicant did not explain its failure to provide information, but essentially argued that the question should be deferred until a statement of use is submitted. The Board said not so fast.
If applicant truly has no information about the exact nature of its vacuum cleaner because, for example, it is still in the design stage, applicant should have so stated. On the one hand, applicant’s goods are identified as "vacuum cleaners," which encompasses all types of vacuum cleaners for all types of uses. However, information about whether applicant’s vacuum cleaners are intended or designed for use in a workshop environment and/or on or in connection with a workbench is quite relevant to the question of descriptiveness.
And so the Board affirmed the Rule 2.61(b) refusal but reversed the Section 2(e)(1) refusal.
TTABlog comment: Now why would Applicant want to call its product BENCH VAC? Why did it choose the word BENCH? Maybe in honor of a certain Hall of Fame baseball catcher?
Text Copyright John L. Welch 2011.