Test Your TTAB Judge-Ability: Which One of these Four Mere Descriptiveness Refusals Was Reversed?
The TTAB recently ruled on the appeals from the four Section 2(e)(1) mere descriptiveness refusals summarized below. Let's see how you do with them, keeping in mind that the Board affirms, by my estimate, more than 80% of these refusals. By the way, do you see any WYHA's here?
In re Tatham, Serial No. 77725646 (August 22, 2013) [not precedential]. [Refusal to register the mark GRAND PRIX RUGBY for "television broadcasting of rugby events and tournaments between rugby leagues" in Class 38; and "organizing and conducting rugby exhibitions and tournaments between rugby leagues" in Class 41 [RUGBY disclaimed]].
In re Brian Newville, Serial No. 85470364 (August 22, 2013) [not precedential]. [Refusal to register MANTLEMOUNT for "metal audio, video and computer wall and ceiling mounts" in International Class 6].
In re Assurant, Inc., Serial No. 85494137 (August 21, 2013) [not precedential]. [Refusal to register PREAUTHORIZED DEBIT PROTECTION for "underwriting and administration of payment protection insurance, namely, insuring payment of preauthorized payments" [PROTECTION disclaimed].
In re Goldberg, Serial No. 85365401 (August 19, 2013) [not precedential]. [Refusal to register THE DONUT for 'therapeutic hot and cold therapy packs"].
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TTABlog note: Answer in first comment.
Text Copyright John L. Welch 2013.
posted by John L. Welch @ 9/04/2013
8 comments
8 Comments:
THE DONUT was reversed.
THE DONUT doesn't describe "therapy packs", just applicant's specific shape of the therapy packs.
That would be like saying GOLDFISH is descriptive of "crackers" shaped like goldfish.
It's an important distinction.
I think the word GOLDFISH is descriptive of a cracker shaped like a goldfish.
See this December 18, 2008 TTABlog post: TTAB Finds "PUCK" Merely Descriptive of Hockey Puck-shaped Security Tags
http://thettablog.blogspot.com/2008/12/ttab-finds-puck-merely-descriptive-of.html
This is very interesting. That PUCK case seems to directly contradict THE DONUT result.
GOLDFISH was found to be not merely descriptive in Nabisco Inc. v. PF Brands Inc, 51 U.S.P.Q. 2d 1882 (2d Cir., 1990) because it is distinctive when used in connection with crackers. Even though it describes the shape of the crackers, it does not describe crackers in general.
Could the difference in the Nabisco case be that GOLDFISH was a famous mark or had achieved secondary meaning, and as a result was able to prevent Nabisco from making similar shaped crackers?
I agree, though, that the PUCK case seems to contradict the DONUT.
I'm not so sure that this result is inconsistent with the PUCK case, In re Invue Security Products Inc., Serial No. 77006342 (December 8, 2008).
The evidence there was that the product was shaped like a hockey puck. Here the products are sleeves, and when they are wrapped around an affected area like a finger, they are cylindrical.
The sleeves do not really resemble a donut except in a cross-section and by the fact that are round with a hollow center. In that sense, you could say that the sleeve suggests a donut, but I don't think that is the same as saying that the product is shaped like a "donut." I assume that was what the Board was trying to explain in its discussion of solid geometry.
In one branch of mathematics, topology, a donut (torus) and a cylinder are equivalent. They share similar properties and can be deformed into each other without cutting or pasting. At that level of abstraction, though, a doughnut is equivalent to a coffee cup. (the old joke that a topologist is a mathematician that can't tell the difference between a donut and a coffee cup.) But I don't think consumers would ordinarily operate at that level of abstraction.
Robert, yeah, they actually more resemble a Cronut...
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