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 In re Quicksilver, Inc., Serial No. 77734610 (May 18, 2010) [not precedential].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.