Friday, May 20, 2011

TTAB Affirms Mere Descriptiveness Refusal of JEWELRYSUPPLY.COM: No Tacking and Not Enough 2(f)

This applicant claimed acquired distinctiveness under Section 2(f) when it filed its application to register the mark JEWELRYSUPPLY.COM for jewelry supply services. The Board, however, found the 2(f) evidence insufficient and rejected Applicant's attempt to "tack on" the supposed distinctiveness of its registered logo mark shown immediately below, for jewelry parts [JEWELRY SUPPLY disclaimed]." In re Jewelry Supply Inc., Serial No. 77475181 (May 4, 2011) [not precedential].

By seeking registration under 2(f), Applicant conceded that the mark is merely descriptive. The sole issue, then, was acquired distinctiveness. [A genericness refusal had been withdrawn].

Based on the evidence submitted by Examining Attorney Laurie Mayes - comprising dictionary definitions of the constituent words and Internet excerpts showing third-party use of the term "JEWELRY SUPPLY," and third-party registrations with disclaimers of "JEWELRY" or "SUPPLY" - the Board found the term JEWELRY SUPPLY to be highly descriptive of Applicant's services. Since the ".com" portion adds no distinctiveness, the Board concluded that JEWELRYSUPPLY.COM is highly descriptive. Consequently, the burden of proof for distinctiveness was correspondingly heavier.

The Board refused to allow Applicant to "tack on" the distinctiveness of its prior registration for the mark shown above, because the marks are not legally equivalent: the applied-for mark does not contain a design element, and the prior mark does not contain ".com." The marks are "distinguishable" from each other and create "somewhat different commercial impressions." In short, they are not the same.

Applicant pointed to its use of the mark for more than five years, and to its sales and advertising figures, distribution of catalogs, and website visitors, but the Board found that evidence insufficient. There was no context for comparison of Applicant's figures with others in the jewelry industry. As to website visitors, it was not clear that the reflected unique visitors or repeat visits by the same individual.

And so the Board affirmed the refusal to register.

TTABlog comment: Applicant's "tacking" argument was extremely feeble, given the difference in the marks, the differences in the goods/services, and the admitted lack of distinctiveness of the disclaimed term JEWELRY SUPPLY in the registered mark. It seems obvious that the design element was the reason that Applicant got the registration.

Text Copyright John L. Welch 2011.


At 5:04 AM, Anonymous Paul Keating said...

Great decision IMO. I particularly found the following interesting:

"There was no context for comparison of Applicant's figures with others in the jewelry industry."

I am tired of seeing 2(f) applications granted on flimsy evidence. Perhaps a requirement to examine the asserted "popularity" in context would be a good rule to apply more often.


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