Friday, June 14, 2013

Test Your TTAB Judge-Ability: Is “THE ORIGINAL & Oval Design” Merely Descriptive of Kitchen Towels?

The PTO refused registration of the mark shown below under Section 2(e)(1), finding it merely descriptive (laudatory) of “cleaning mitts of cloth and cleaning cloths; dish drying mats made of fabric and foam; gloves for household purposes, namely, dish drying gloves,” and for “kitchen towels and dish cloths.” Moreover, the PTO deemed the stylization of the mark insufficient to support registration on the Principal Register (with the words disclaimed) How do you think this came out? In re Schroeder & Tremayne, Inc., Serial No. 85157275 (May 24, 2013) [not precedential].

Both applicant and Examining Attorney Aretha C. Somerville submitted third-party registrations, some for marsk with the word ORIGINAL disclaimed, some not. This evidence did not reflect any clear PTO policy regarding the word and therefore, although the PTO strives for consistency, in this “battle of the registrations” there is “little persuasive value in the registrations submitted.” See In re Nett Designs Inc., 57 USPQ2d at 1566.

Instead, the Board turned to dictionary definitions to determine whether THE ORIGINAL has a laudatorily descriptive meaning. The Examining Attorney provided definitions of "original" as "new; fresh; inventive; novel: an original way of advertising." The Board also noted the definition "the first and genuine form of something, from which others are derived." The Board concluded that the word "original" "directly conveys the laudatory information that applicant’s goods are new, fresh, novel or the first and genuine form of the goods."

We understand applicant’s argument that it does not claim to be the original maker of kitchen towels and dish cloths, which it says “have certainly existed and been used for as long as kitchens and woven goods have existed.” *** However, it is not necessary that purchasers perceive the mark as describing the originator of the goods in general for ORIGINAL to be found merely descriptive. ORIGINAL is a term that also describes that a product has a new characteristic.

The Board noted, not surprisingly, that the addition of the word THE did not affect the laudatory meaning of ORIGINAL.

Applicant argued in the alternative that the mark as a whole is registrable with a disclaimer of THE ORIGINAL because it has a distinctive stylization and design. The Board referred to its discussion of this issue in In re Sadoru Group Ltd., 105 USPQ2d 1484 (TTAB 2012), in which it extensively analyzed the relevant cases. [TTABlogged here].

The Board found, again not surprisingly, that "the stylization and design elements of applicant’s mark are not sufficient to create a separate and inherently distinctive commercial impression apart from the term itself." The oval background design is common, and the stylized script is in a "rather ordinary font." Furthermore "the 'tildes' on either side of the words are not significant either."

In short, the Board found the subject mark to be "far more similar to the marks in which the stylization/design element was found not to create an inherently distinctive display."

And so the Board affirmed the refusal.

Read comments and post your comments here.

TTABlog comment: This case reminds me that the (ersatz?) rock group Spinal Tap was first called "The Originals," but upon learning of another group that already used that name, they changed to "The New Originals." Do you think THE NEW ORIGINAL would be registrable as inherently distinctive for dish towels? Is it oxymoronic, or merely doubly laudatory?

Text Copyright John L. Welch 2013.


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