Test Your TTAB Judge-Ability: Is "SOF" Merely Descriptive of Exercise Weights?
The USPTO refused registration of the mark SOF under Section 2(e)(1), finding it to be merely descriptive of exercise weights. Applicant appealed, arguing that SOF is not the phonetic equivalent of "soft," and pointing to third-party registrations for marks containing the terms "sof" or "soft" without disclaimers. How do you think this came out? In re McCrane, Inc., Serial No. 85276221 (March 5, 2013) [not precedential].
Examining Attorney Ronald McMorrow contended that "sof" is a misspelling of the word "soft," which describes a type of exercise weight that is coated or covered with a soft material. Internet evidence showed that various companies offer "soft dumbbells," "soft weights," and "Pilates soft weight balls."
Applicant McClane maintained that "sof" is not the phonetic equivalent of "soft," distinguishing its mark from the marks involved in the cases cited by the Examining Attorney. Third-party registrations purportedly showed that the PTO has registered marks containing the word "soft" or "sof" without disclaimer.
The Board observed that it is well established that a slight misspelling will not turn a descriptive term into a non-descriptive mark if it will be perceived by the consuming public as the equivalent of the descriptive term. Moreover, even highly altered terms may still be deemed merely descriptive [e.g., KWIX-TART]. And misspelled words have been found to be merely descriptive even if the pronunciation has been slightly altered. [e.g., AL-KOL, EXTRORDINAIRE, RICH 'N CHIPS, CAR-FRESHNER].
The policy underlying the rule that misspelled words may still be merely descriptive is spelled out in the Restatement of Unfair Competition:
Recognition of exclusive rights in variants and corruptions of descriptive words also imposes a risk of liability on subsequent users of the original words. *** Thus, unless the alteration is sufficient to avoid encumbering use of the original word, the variation remains descriptive.
The Supreme Court has expressed the same concern, in one case finding RUBEROID to be merely descriptive: "Bad orthography has not yet become so rare or so easily detected as to make a word the arbitrary sign of something else than its conventional meaning ...."
The Board found that registration of SOF would violate those policies. In the context of exercise weights, consumers are likely to see SOF as a "misspelling or corruption" of the word "soft" because "soft weights" and " soft dumbbells" are known in the marketplace.
The trademark registrations of record - including SOF TEE for a soft vinyl golf tee, and SOF GEL for gel-filled shoe inserts - strongly suggest that SOF may be perceived as a variant of "soft." The Board concluded that, overall, SOF is likely to be perceived as a misspelling or variant of "soft." In other words, the difference between SOF and "soft" is not "sufficient to avoid encumbering use of the original word."
And so the Board affirmed the refusal.
Read comments and post your comment here.
Text Copyright John L. Welch 2013.