Friday, February 01, 2013

Test Your TTAB Judge-Ability: Does the Stylization of this Mark Render it Inherently Distinctive?

Applicant HCA International applied to register the mark shown immediately below for various goods and services in International Classes 16, 36, 42, and 44. The wording in the mark was disclaimed. The Examining Attorney refused registration on the ground of mere descriptiveness under Section 2(e)(1), but HCA argued that the stylization or design of its mark made it inherently distinctive. The Board issued a four-page opinion. How do you think it came out? In re HCA International Limited, Serial No. 85103030 (January 17, 2013) [not precedential].

HCA, of course, contended that its mark creates a distinctive commercial impression. The PTO maintained that the mark appears in ordinary font, and that the "impact of the stylization of the lettering is lost in the descriptive significance of the wording."

The Board found this cast to be analogous to In re Jackson Hole Ski Corp. 190 USPQ 714 (TTAB 1977). There, the PTO refused registration of the mark shown below [JACKSON HOLE disclaimed], on the ground that the mark was primarily geographically descriptive.

The Board reversed the refusal because the letters "JH" were "displayed in a distinctive and prominent fashion so as to create a commercial impression in and of themselves ...."

Similarly, here the letters L, O, and C, arranged vertically and in bold type, are "prominent and striking, to such a degree that they create a separate and inherently distinctive commercial impression consisting of the acronym 'LOC.'"

The PTO did not submit any evidence that LOC is a commonly recognized descriptive acronym. So the Board ruled that the mark as a whole is inherently distinctive, and it reversed the refusal.

Read comments and post  your comment here.

TTABlog comment: I dissent. Rather than the ordinary font of the applied-for mark, the JACKSON HOLE mark has a distinctive font. The font looks kind of old-westy. The "C" resembles a horseshoe and the "S' looks like a rattlesnake. I give a thumbs up to JACKSON HOLE, but thumbs down to the subject mark.

Text Copyright John L. Welch 2013.


At 8:31 AM, Anonymous Miriam Richter, Wilton Manors, FL said...

I can’t count the number of times I’ve looked at the JACKSON HOLE mark and yet I never noticed the horseshoe and the snake. However, to me, the S looks more like a sidewinder than rattlesnake.

But to get back in the strike zone, isn’t the point of picking a particular font or arrangement of the words in a mark, to communicate something to the consumer? On the other hand, I actually think the LOC is a bad choice for a medically-related mark because, although I now use LOC to refer to likelihood of confusion (strike one), in my previous career it meant loss of consciousness (strike two). They got lucky that the Board didn’t strike them out.

At 10:47 AM, Anonymous Joe Dreitler said...

Amen. Have read and cited to Jackson Hole since it was issued with mixed results. I'm not nuanced enough to see the old west part, and since it was for a very upscale ski resort, the old west isn't really relevant is it? Just think it points out that stylization of fonts/letters/designs/logos is even more subjective than most parts of our interesting practice.

At 11:57 AM, Anonymous Anonymous said...

one thumb or two?

At 1:45 PM, Anonymous Anonymous said...

John -- Do you really think the font used by JACKSON HOLE has a C that looks like a horseshoe and an S that looks like a snake? Or is that just bait on a hook for commentors? Here's my nibble: times change. Font libraries are are widely available and commonly used by consumers. Once-uncommon fonts are now familiar. Merely selecting an available font is not in and of itself sufficient to create distinctiveness.

At 1:18 PM, Blogger Ron Coleman said...

I agree with Anonymous -- it can't be that merely selecting a typeface transforms a mark, unregistrable for lack of distinctiveness, inherently distinctive.


Post a Comment

<< Home