Wednesday, January 11, 2012

Test Your TTAB Judge-Ability on These Three Mere Descriptiveness Refusals

Applicant Luby’s Fuddruckers applied to register the following three marks for restaurant services: BETTER TOPPINGS. BETTER BURGER., BETTER BUNS. BETTER BURGER., and BETTER BEEF. BETTER BURGER. Examining Attorney Ronald McDonald McMorrow refused registration on the ground of mere descriptiveness under Section 2(e)(1). Fuddruckers argued (as usual) that the marks are at most suggestive, that they are uniquely alliterative and clever, and, with regard to the first two marks, that the words "toppings" and "buns" may call to mind the "scantily clad women featured in restaurants such as HOOTERS, TILTED KILT and TWIN PEAKS." How would you rule? In re Luby's Fuddruckers Restaurant's LLC, Serial Nos. 77877292, 77878602, and 77876646 (December 22, 2011) [not precedential].

The Examining Attorney submitted dictionary definitions of the constituent words, as well as Internet excerpts showing use of the words, including the term "better burger," in connection with restaurant services. The Board found the marks to be merely descriptive because they are laudatory terms that directly conveys to consumers that applicant’s restaurant services feature high quality ingredients.

The Board disagreed with Applicant that the word "better" is vague, finding the marks to be definite statements of superior quality that are not vague or nebulous. As to the arguments regarding "toppings" and "buns," there were no references to those words in the evidence submitted, showing that "scantily clad female servers have become a common feature of trade dress for restaurant services."

As to the uniqueness or cleverness of the marks, the Board noted that other restaurants use the same alliterative structure, including the term "better burger," indicating that there is a competitive need to use that term.

Finally, Fuddruckers pointed to its ownership of registrations for the marks BETTER VALUE, BETTER BURGER, BETTER TIME, BETTER BURGER., BETTER VARIETY. BETTER BURGER., and BETTER EVERYTHING, BETTER BURGER. The Board, however, observed once again that each case must be decided on its own record, and the Board is not bound by prior examination decisions in other cases.

And so the Board affirmed the refusals.

Text Copyright John L. Welch.


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