Thursday, August 11, 2011

WYHA? "YELLOW EMERALD" Merely Descriptive of Golden Beryl Gemstones, Says TTAB

The Board affirmed a Section 2(e)(1) refusal to register the mark YELLOW EMERALD, finding it merely descriptive of "golden beryl gemstones." Examining Attorney Toby E. Bulloff relied on dictionary definitions, Internet website evidence, and Applicant's own advertising in arguing that "the purchasing public has come to know golden-colored beryl gemstones as 'yellow emeralds.'" The Board agreed. Would You Have Appealed? In re American Diamond Importers of St. Clair, Inc., Serial No. 77745553 (July 28, 2011) [not precedential].

Applicant's advertisement

Applicant contended that the term "emerald" is not immediately descriptive of golden beryl gemstones, but only suggestive of many characteristics, such "high quality," "rare," and "green." It submitted Internet excerpts and other evidence that refers to various types of beryl, including emeralds, golden beryl, and yellow beryl, but not to "yellow emeralds."

The Board found that "the beryl family includes emeralds, golden beryl, aquamarine and morganite. The different beryl gemstones have the same qualities and characteristics but with different trace elements providing the color."

Because emeralds are perceived as a well-known and valuable beryl gemstone, vendors try to associate yellow beryl gemstones with the valuable and well-known emerald by calling golden beryl gemstones yellow emeralds.

Moreover, Applicant's advertisement (shown above) uses the term "Yellow Emeralds" to describe its gemstones, and consumers will perceive "Yellow Emeralds" to be the name of the goods. Applicant's website identifies the "Yellow Emerald" as a member of the beryl family, and uses the term generically:

What are Yellow Emeralds?

Yellow Emeralds are in the beryl family of minerals typically grown as hexagonal crystals with a Mohs scale of hardness of 7.5-8.

Despite Applicant's argument that, technically, golden beryl is not an emerald, "the evidence demonstrates that there are people and publications in the industry that use the term 'yellow emerald' for such gems, including applicant." In short, consumers understand the term "yellow emeralds" to refer to golden beryl. "Because of this perception, the term has lost whatever incongruity it may have had."

And so the Board affirmed the refusal.

TTABlog comment: On a personal note, I grew up on Emerald Avenue on the South Side of Chicago, and I had an aunt named Beryl.

In any event, was it worth a shot to appeal this refusal? Should the Examining Attorney have refused registration on the alternate ground of deceptive misdescriptiveness, in an attempt to put Applicant in a box?

Text Copyright John L. Welch 2011.


At 10:25 AM, Anonymous Orrin A. Falby said...

What about a genericness refusal instead?

At 8:34 PM, Anonymous Anonymous said...

@Orrin -- Why argue genericness when it would be easier for the EA to simply prove mere descriptiveness, especially since the applicant didn't seek 2(f) or Supp?

At 10:19 AM, Anonymous Orrin A. Falby said...

@ Anonymous - Good point! I think its generic though.


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