Tuesday, September 10, 2013

FLOSS LOOPS Lacks Acquired Distinctiveness, Even Among Prison Inmates, Says TTAB

The Board affirmed a Section 2(e)(1) refusal to register the mark FLOSS LOOPS, finding it to be merely descriptive of dental floss and lacking in acquired distinctiveness. Applicant disclaimed FLOSS but claimed the benefit of Section 2(f) for the term LOOPS. The Board found that applicant failed to prove that the mark had acquired distinctiveness for general consumers, and that even if one considered the pertinent market as sales to prisons, its evidence was insufficient. In re Loops, LLC, Serial No. 85203745 (August 21, 2013) [not precedential].

Dictionary definitions, Internet evidence, and third-party patents submitted by Examining Attorney Lief Martin, as well as applicant's own specimen of use, led the Board to conclude that "floss loops" is at least highly descriptive of dental floss. Applicant therefore faced a heavy burden to prove acquired distinctiveness.

Applicant pointed to a Master Product List from the Florida Department of Corrections, but that document included "FLOSS LOOPS" in the same group as the generic terms "HAIR BRUSH" and "TOOTHBRUSH." Two newspapers articles were likewise of little help, one using the term "floss loops" generically, and the other making mere passing mention of "Floss Loops."

Applicant's sales amounted to some 285 cases of dental floss, a sum not sufficient to satisfy Section 2(f). It pointed to its other registrations for marks containing or consisting of the word LOOPS, but the Board found those other marks to be different in connotation: e.g., LOOPS FLEXIBLE TOOTHBRUSH HOLDER. [One registration, however, covered the word mark LOOPS for dental floss - ed.].

There was no evidence of sale of the goods to the general public. Because applicant's identification of goods is not restricted as to channels of trade or classes of consumers, the Board considered it appropriate to consider whether the subject mark had acquired distinctiveness with respect to the general public. It had not, and that alone was enough for affirmance of the refusal.

As to the sale of the goods to prisons, applicant provided evidence of its promotional efforts: letters to buyers and trade show exhibitions. The Examining Attorney urged dismissal of this evidence as not being directed to the ultimate purchasers, i.e., the prisoners. The Board, however, noted that correctional facilities themselves may purchase the goods for distribution, rather than sale, to prisoners. So those buyers may also be considered as relevant purchasers.

However, it was not clear that even among those prison purchasers, FLOSS LOOPS or LOOPS has acquired distinctiveness as a source-indicator. The evidence was too ambiguous and scant to permit a finding of acquired distinctiveness.

And so the Board affirmed the refusal.

Read comments and post your comments here.

TTABlog note:  Couldn't applicant make a claim to acquired distinctiveness of the word LOOPS by relying on its registration for LOOPS for dental floss? Trademark Rule 2.41(b) says that a prior registration for the "same mark" may be accepted by the PTO. Here, according to the Board, applicant was making a 2(f) claim only to the word LOOPS, and so, for our purposes, is that not the "same mark" as the prior registration?

Text Copyright John L. Welch 2013.


At 5:24 PM, Anonymous Anonymous said...

The Board says LOOPS is not the same mark as FLOSS LOOPS because it believes adding LOOPS as the second term to the mark creates a different commercial impression:

"many of applicant’s registrations are for marks that use LOOPS as
the first or only word of the trademark; these registrations convey a different commercial impression from FLOSS LOOPS, where LOOPS appears as the second word in the mark, and is used as a descriptive term for the shape of
the dental floss"

This result seems wrong. All applicant did was add a descriptive word (FLOSS) to a mark already registered (LOOPS) for the same goods. Seems like registration under 2(f) in part as to LOOPS with a disclaimer of FLOSS would be the proper outcome (couldn't this option have been retained in the alternative?).

I'm not saying that adding a descriptive term can never change the commercial impression of mark -- in some instances it probably can. But here -- don't think so.


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