Thursday, April 04, 2013

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 In re McCrane, Inc., Serial No. 85276221 (March 5, 2013) [not precedential].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.


At 8:16 AM, Blogger Frank said...

This is just bad policy and I hope that this decision is appealed to a judge who can look beyond the simplistic logic of the Restatement. No consumer thinks that SOF designates SOFT and Ron McMorrow knows it. But it seems that when you work long enough at the USPTO, you can't see the forest for the trees.

At 8:58 AM, Blogger Unknown said...

While I understand the policy, as a someone that works out a great deal and has for years, I do not assoicate the word "soft" with weights or exercise equipment. Does anything think a survey establishing this lack of connection between the mark and the goods would have changed the result for the Applicant?

At 10:29 AM, Blogger John L. Welch said...

What if the PTO could require a disclaimer of the word "soft," and then allow SOF to be registered?

At 9:23 PM, Blogger mhs101255 said...

And, of course, all those other registrations where a "SOF" mark for soft products was registered without a disclaimer are irrelevant, because decisions of prior examiners are not precedential and each case must be decided on its own facts.

Unless, of course, the TTAB wants to agree with an approach that was previously taken, in which case the Board seems to have no problem citing to prior registrations.

The big problem with the PTO's inconsistency is aptly described in an article/commentary on the Gordon & Rees law firm's website:

“Inconsistencies can be most troubling when practitioners rely on the Office register in counseling clients on mark selection and goods/services formulation. Most applicants do not have such a deep and far-reaching portfolio that a practitioner can rely solely on it in formulating critical advice.”


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