What is the Likelihood of TTAB Affirmance of a Section 2(e) Refusal?
I took a look at the TTAB's FOIA page in an attempt to determine, or at least estimate, the percentage of various Section 2(e) refusals that are affirmed by the Board. For the calendar year 2012, I counted 139 such decisions, of which 117 were Section 2(e)(1) mere descriptiveness rulings, and the remaining 22 were scattered among subsections 2 (primarily geographically descriptive), 3 (primarily geographically deceptively misdescriptive), 4 (primarily merely a surname), and 5 (functional).
Of the seven refusals under Section 2(e)(2), five were affirmed (PHILADELPHIA'S CHEESESTEAK, INTERIORSUSA.COM, VERMONT ORGANICS, BONDS NO 9S DUBAI, and THE MUNICH), and two were reversed (MDF IT & Design and TINSELTOWN).
All three Section 2(e)(3) were affirmed (REAL RUSSIAN, SWISS+TECH, and OLD HAVANA).
Of the seven Section 2(e)(4) refusals, four were affirmed (THE HENDRYX HOTEL, GRISWALD, RITTER, and CROMWELL), and three were reversed (LORCH, SCHOTTLER, and CARDANO).
Surprisingly, I think, four of the five Section 2(e)(5) refusals were reversed (massage hoop, pixilated Navy fabric designs, scored Hershey bar, and 3M hand sanitizer dispenser), while one was affirmed (concentric rings on suction cup). All five were non-precedential. In the first three, the applicant established acquired distinctiveness, while in the fourth, 3M's Section 2(f) evidence fell short.
Of course this data is not statistically significant, but I think one can draw some insight from them. In the 2(e)(3) realm, sellers of rum like to suggest a Cuban connection, for vodka it's Russia, and for hand tools it's Switzerland. On the functionality front, I think the reversals are a result of the lack of understanding of de facto versus de jure functionality on the part of the PTO Examining Corps.
Turning to the 117 Section 2(e)(1) mere descriptiveness, 96 were affirmed and 21 reversed, for an affirmance rate of approximately 82%. That is consistent with estimates that I and others have made in past years.
Five of the 2(e)(1) decisions were deemed precedential, but only the ARCADEWEB decision (a reversal) is of the least interest, mainly because the Board's ruling hinged on its unhappiness with the Examining Attorney's change in position on appeal. The other four precedentials were affirmances: CENTER OF SCIENCE AND INDUSTRY, SEMICONDUCTOR LIGHT MATRIX, SADORU, and COLOMBIANO COFFEE HOUSE.
NB: With regard to the 2(e)(1) cases, I counted a case involving several variations of the same mark as one case. For example, the GRAND PRIX SPORTS decision involved nine applications for marks comprising GRAND PRIX with various generic terms. I counted that as one affirmance, not nine.
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Text copyright John L. Welch 2013.
posted by John L. Welch @ 4/16/2013
8 comments
8 Comments:
would be interested to know if any of the reversed 2(e)(1) decisions (other than ARCADEWEB) were deemed precedential?
Good question. The other four precedential,decisions were affirmances: CENTER OF SCIENCE AND INDUSTRY, SEMICONDUCTOR LIGHT MATRIX, SADORU, and COLOMBIANO COFFEE.
John, thanks for this. Good to have the statistics in front of us when the client asks for a chance of success on appeal. Appreciate your work here...!
John, thanks for putting this together. Nice to have the statistics in front of you when the client asks for chances of success on appeal.
Interesting stats, thanks for sharing! Of course, the data from the Board decisions does not include successful appeals that were commenced but did not reach an opinion due to a change in position by the Examining Attorney during a request for reconsideration, remand, or otherwise.
Yes, thanks for the data.
On a somewhat related note, I was wondering recently if there is a reasonably simple and efficient way to determine what issues the Board will be deciding in upcoming cases, especially with respect to ex parte appeals. I'm specifically thinking about the laudatory descriptiveness issue that I noticed a "sea change" in from a CAFC decision last year. Because even if I could locate all 2(e)(1) cases, those would still require sifting through to see if the descriptiveness is "laudatory." I don't think TTABVUE has the requisite search engine for this.
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.
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In Sperry Rand Corp. v. Sunbeam Corp., 170 U.S.P.Q. 37 (C.C.P.A. 1971), the CCPA reversed the Board’s finding that LEKTRONIC was merely descriptive of electric shavers. The court disagreed with the Board’s reasoning that LEKTRONIC was “substantially the phonetic equivalent” of the word “electronic” and noted that while “LEKTRONIC may be phonetically close to ‘electronic,’ it does not necessarily follow that the mark LEKTRONIC is ‘merely descriptive’ of appellant’s goods. . . . The registration of appellant’s trademark LEKTRONIC will not interfere with the use of ‘electronic’ by appellee.”
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