Wednesday, May 22, 2013

TTAB Affirms Disclaimer Requirement of MONOGRAM in BR MONOGRAM for Handbags and Clothing

Banana Republic applied to register the mark BR MONOGRAM in the stylized form shown below, for various "higher end" handbag and clothing items, "excluding products personalized with the intended user's initials." Examining Attorney Leigh A. Lowry required disclaimer of the word MONOGRAM, deeming it to be both merely descriptive and deceptively misdescriptive under Section 2(e)(1). Banana Republic appealed. The Board affirmed the refusals. In re Banana Republic (Apparel), LLC Serial Nos. 77375273 and 77375380 (May 9, 2013) [not precedential].

Mere Descriptiveness: The Examining Attorney maintained that MONOGRAM describes a feature of BR's goods because handbags and clothing may include "the initials of the designer, sometimes in a repetitive or wallpaper design, but also in a single instance like a conventional monogram." She relied on Internet websites showing use of designer initials on clothing and bags, websites offering the option to add initials to such items, and third-party registrations for marks for clothing, bags, and monogramming services, which registrations included a disclaimer of MONOGRAM or resided on the Supplemental Register.

The Board rejected BR's argument that "high end" products are not likely to be monogrammed, and it observed that Applicant's exclusion of "products personalized with the intended user's initials" did not account for the appearance of designer initials on products. Moreover. BR's goods may be monogrammed by a third party, after purchase from applicant.

BR contended that MONOGRAM will be perceived as meaning high quality, but the Board found no evidence that the typical consumer would attribute this meaning to the word. It concluded that Applicant's promotion of the subject mark, and the unsolicited media attention given the mark, was not enough to overcome the commonly-understood meaning of MONOGRAM.

Deceptively Misdescriptive: Because Applicant's identification of goods specifically excluded "products personalized with the intended user's initials," MONOGRAM is misdescriptive of the goods. [At least the ones without a monogram - ed.]. Moreover, consumers are likely to believe the misdescription.

In fact, the evidence establishes that companies which offer clothing, tote bags, purses and related products often offer monogramming services, specifically the ability to personalize these goods with the intended user’s initials. Here, however, applicant’s mark includes MONOGRAM but applicant will not offer this type of monogramming service, as many of its competitors do and consumers have therefore come to expect.

Acquired Distinctiveness: Because the Board found the MONOGRAM to be "highly descriptive," Applicant BR's burden to show acquired distinctiveness is "concomitantly high." [What is the test for determining whether a mark is "highly descriptive" rather than just descriptive? ed.] BR's evidence fell short. Its promotional efforts were "underwhelming at best." Moreover, BR's use was not exclusive because some clothing designers monogram their products with their own initials, and others offer monogramming services.

Finally, BR asked that the case be remanded so that the PTO could consider 2(f) evidence based on five years of continuous use. It pointed out that by the time this appeal would be decided, the subject mark would have been in use for five years. The Board denied the request because it "would serve no useful purpose" in view of the highly descriptive nature of the mark: BR's five years' of use would not "add to the weight of the evidence" already submitted.

And so the Board affirmed the disclaimer requirement.

Read comments and post your comments here.

TTABlog note: In a subsequent ruling, the Board modified its decision as follows: "applicant is allowed to file a disclaimer with the Board until either: (1) the deadline for filing an appeal, in this case two months from the May 9, 2013 decision, if applicant does not file an appeal;1 or (2) if applicant does file an appeal, thirty days after the final disposition of the appeal, if it is ultimately unsuccessful. Applicant’s “provisional” disclaimers are withdrawn."

TTABlog comment: I'm not convinced by this opinion. If a consumer buys an item with the brand name BR MONOGRAM, won't he or she see that it isn't monogrammed? Won't they know at the time of purchase that monogramming services are not being offered by BR?

As for descriptiveness, how so? Again, the consumer can see that the goods are not monogrammed and won't be monogrammed by BR.

If anything, the mark is self-redundant: it points out that BR is a monogram, but I don't see that as making the mark descriptive of the goods.

What do you think?

Text Copyright John L. Welch 2013.


At 7:24 AM, Anonymous Anonymous said...

Regarding your questions, John: What you're missing, I think, is the theory underlying most of Section 2(e) - - that of competitive fairness. As a competitor, shouldn't I be allowed to accurately describe my own "high-end bags" as "monogram bags" (since they bear my monogram) without fear of an infringement suit? At least, that's the theory espoused in Abcor . . .

At 7:38 AM, Blogger John L. Welch said...

Well, third parties can always use "monogram" descriptively.
Maybe BR MONOGRAM is a unitary mark. like yesterday's NATURALLY POWERED.

At 10:41 AM, Anonymous Anonymous said...

I don't think this is a competitive fairness issue - can always use monogram(med) descriptively. I actually think there is a mental leap - it's a designer bag that is so "you" its monogram. The leap is the juxtaposition, particularly for such an intensely personal item as a handbag.

At 10:45 AM, Anonymous Anonymous said...

The decision seems to rest on a hypothetical rather than the facts in this case. The most relevant statement is, "... it is clear from
the evidence of record that [stuff]
identical or similar to those applicant offers under the involved mark commonly bear the initials, or “monogram,” of their designers." It is not alleged that there are any monograms here but I assume the Board is saying that because there could be monograms, it is descriptive.

This case is akin to the question of whether a party can register "trademarks" for products. Although the vast majority of trademark professionals would likely say yes, it appears that the Board is saying no. After all, one of the definition of monogram is "design composed of one or more letters, typically the initials of a name, used as an identifying mark."

At 10:56 AM, Anonymous Anonymous said...

So, let's say this is registered absent a disclaimer. I can, in adverting my high-end designer bags, claim that they are "monogram" bags (descriptively, of course. With lower-case "m")? And, by extension, I can promote my pop as as being "coca cola like" and my cars as having "porsche styling?" And not have to worry about pesky letters from Atlanta and Stuttgart? Wow! That's great news!

At 12:51 PM, Anonymous Anonymous said...

Agree with JW -- disagree with the TTAB. There are bags with banana designs and bags used to carry bananas but that does not make the word BANANA descriptive for bags.

And if the term MONOGRAM is "deceptive" -- then how could the mark be registrable with a disclaimer? The disclaimer does not cure the deceptiveness ...


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