Thursday, May 24, 2012

TTAB Reverses Mere Descriptiveness Refusal of SURF COUTURE for Clothing

By my estimation, four out of five Section 2(e)(1) mere descriptiveness refusals are affirmed on appeal. Here's one that was reversed. The Board found the mark SURF COUTURE to be not merely descriptive of eyewear, luggage, and clothing. The PTO's evidence, consisting of dictionary definitions and a few NEXIS excerpts, fell short. In fact, the evidence suggested the incongruous connotation of high fashion clothing and related goods for surfers. In re Quicksilver, Inc., Serial No. 77734610 (May 18, 2010) [not precedential].

Of the five NEXIS items proffered by the PTO, two were from Australian publications, and they referred to "surf" and "couture" as two separate categories of clothing. Of the remaining three, one used SURF COUTURE in connection with pet accessories. The last two (one from Canada) discussed SURF COUTURE in connection with clothing, but a mere two NEXIS items are not sufficient to establish a prima facie case of mere descriptiveness.

The dictionary definitions pointed to a "relatively vague meaning" for Applicant's mark: it may suggest that the goods are "considered highly fashionable by those embracing a surfer lifestyle," but it does not immediately describe such a characteristic or feature thereof.

The Board observed once again that any doubt as to mere descriptiveness must be resolved in favor of the applicant. And so it reversed the refusal to register.

Text copyright John L. Welch 2012.


At 10:27 AM, Anonymous Anonymous said...

The Board got this wrong. The words individually are descriptive. Couture is a term used in the fashion industry and is in fact typically disclaimed. Surf is a descriptive term for any products or services used in the surf industry, including clothing. I do not think anyone would question the fact that the word surf would be disclaimed. The question then is whether the two words together are descriptive.

The underline premise in the Board's opinion is that sufers cannot be fashionable, and therefore, the term creates an incongruity. Surf, presumably because sufers lack any style or fashion sense, would create a mental pause when paired with the word couture.

But the Board continues to dig itself into a hole. The Board states that Couture is not descriptive but suggestive for clothing. I do not know how else to read "Rather, the dictionary definitions excerpted above indicate that COUTURE may be defined as high fashion designers and the clothing they create. Such a definition, incongruity aside, may perhaps suggest a characteristic of applicant’s goods, namely, that they are considered highly fashionable by those embracing a surfer lifestyle." Read the Board use of "suggest" when talk about Couture alone for clothing.

It seems safe to say that this decision will forever been characterized as a "not precedential" and the Board will likely be upset if any applicant even attempts to use extract the language to identify exactly what the Board unequivocally stated.



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