Wednesday, September 18, 2013

Test Your TTAB Judge-Ability: Is "CARBON AUDIO" Merely Descriptive of Loudspeakers?

Carbon Audio, Inc. sought to register the mark CARBON AUDIO for "audio headphones; audio speaker enclosures; audio speakers; wireless indoor and outdoor speakers," but the PTO turned down the application, deeming the mark merely descriptive of the identified goods. Applicant argued that every product contains some amount of carbon, and the word "carbon" has no particular significance for its goods. How do you think this came out? In re Carbon Audio Holdings, LLC, Serial No. 85394582 (September 12, 2013) [not precedential].

Examining Attorney Laura Dawn Golden maintained that the word "carbon" immediately and clearly informs consumer that applicant's products may be made of carbon fibers. The evidence, she contended, demonstrates that carbon fibers are a "most desirable ingredient" in the goods identified by applicant.

The record evidence showed that there is a "huge market among audiophiles for high-quality loudspeakers." Among the priciest are speakers incorporating carbon fibers in their woofers, sub-woofers, and other components. The accumulated evidence "speaks for itself:" carbon fibers are a significant element of high-end loud speakers

The only question was whether the term "carbon," as adopted and used by applicant, is so "attenuated that potential consumers of stereo speakers will not make an immediate connection to 'carbon fibers.'" On this critical issue, the Board disagreed with applicant.

The Board was simply not persuaded that potential customers for stereo speakers would, upon seeing CARBON AUDIO, spend time "cogitating on Element #6 of the Periodic Table" in some abstract, cosmic, or generalized way. Instead, the Board found that customers, when encountering CARBON AUDIO in connection with speaker products, will immediately think of carbon fibers and the critical role they play in high-quality speakers. In short, the word "carbon" in the applied-for mark will immediately convey information about the quality or characteristics of the products.

Despite applicant's contention to the contrary, the Board concluded that competitors certainly need to use the word "carbon," in its narrow sense of "carbon fibers," to describe their audio products.

Therefore, the Board affirmed the refusal.

Read comments and post your comment here.

TTABlog note: Well, how did you do? Do you think this case deserves the "WYHA?" tag?

Text Copyright John L. Welch 2013.


At 8:54 AM, Anonymous ian said...

This is one instance where trademark examiners have to be nearly as attuned to the specific industry of the relevant application as patent examiners. This is why a trademark examiner's job is so difficult - I would not have thought that CARBON is descriptive, but seeing how the term is used in the industry makes it obvious.

At 10:02 AM, Blogger Pamela Chestek said...

As soon as I read "cogitating on Element #6 of the Periodic Table" I knew it was a Bucher opinion.

At 11:05 PM, Anonymous Anonymous said...

Continuing on the chemistry theme, the Board took a quantum leap in finding for the examiner. Despite properly framing the issue, whether consumers will equate carbon with carbon fiber, the Board concluded - without any explanation - that these two terms are synonyms. More offensive still, the Board did not agree with the examiner, who bears the burden of proof and failed to narrow this logic gap, it simply disagreed with the applicant who had the unenviable task of proving the negative. How does one go to prove that consumers do not understand carbon to mean carbon but means instead carbon fiber?


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