Test Your TTAB Judge-Ability: Is JIN-JA Merely Descriptive of Herbal Tea?
The USPTO refused registration of the mark JIN-JA for herbal tea, on the ground of Section 2(e)(1) mere descriptiveness. Applicant appealed, contending that JIN-JA is an arbitrary term with no recognized meaning in English, and that U.S. consumers would not recognize or pronounce Jin-Ja as "ginger." The Examining Attorney maintained that the mark is the phonetic equivalent of "ginger," particularly as pronounced by persons with non-rhotic accents (i.e., persons who do not pronounce the letter "r" unless it is followed by a vowel sound). The Board panel was divided in its decision. How do you think it came out? In re Canada Enterprises LLC, Serial No. 85026331 (September 27, 2013) [not precedential].
The Examining Attorney relied on a Wikipedia entry entitled "Rhotic and non-rhotic accents," the latter accents being found in the South, New England and New York. [As they say in Boston, pahk your cah in Hahvad Squayah - ed.]. The panel majority was unimpressed by the PTO's evidence, It noted that Wikipedia evidence, when uncorroborated, is "fraught with shortcomings." [If Wikipedia evidence must be corroborated because of its shortcomings, why not just make it inadmissible? - ed.]. The non-English website evidence and the bare search engine results proffered by the PTO were insufficient to establish a prima facie case of distinctiveness.
Judge Bucher, in dissent, had no doubt that Jin-Ja "immediately conveys information about the most important ingredient of this drink, namely 'ginger.'" He looked to the prior statements of applicant's CEO, a third-party blog referring to applicant's main ingredient as "ginger (get it, 'jin-ja')," the flower imagery appearing adjacent applicant's mark, and the non-rhotic accent of South Philadelphia, applicant's original market. Judge Bucher found that this evidence corroborated the Wikipedia evidence that the panel majority dismissed.
Judge Bucher then offered some practical tips for Examining Attorneys in light of the subject cirumstances:
Examining attorneys cannot produce expert witnesses. These professionals who are on production cannot take valid and probative surveys to nail down "Philly speak" for the word "ginger."” Yet where an issue such as regional pronunciations comes into play, the challenge of making a prima facie case is a critical part of the assignment.
So perhaps as hundreds of very capable attorneys in the examining corps scratch their collective heads, trying to draw out “lessons-learned” from this reversal, a creative and efficient possibility might well have been to provide applicant and this Board with hyperlinks to online video clips – such as one where well-known MSNBC television commentator, Chris Matthews (who incidentally, likes to discuss on-air his “Philly accent”), towards the end of a four-minute segment, refers three times to EPIC’s Ginger McCall as "\'jin-jah\."
Read comments and post your comment here.
TTABlog note: I don't understand how the panel majority let this one get by. Isn't it obvious that jin-ja is ginger? Maybe I've lived in Boston too long.
Text Copyright John L. Welch 2013.
posted by John L. Welch @ 10/08/2013
6 comments
6 Comments:
John, I read this case last week and agree with the dissent. FYI - this native Bostonian, who has lived in California for almost 3 decades, got it right away!
Well, this New Yorker who has lived in South Florida for 20 years has to disagree with the Bostonians. I was clueless even when I looked at the specimen. My initial thought upon reading the post title was that JIN and JA had to be two of the ingredients!
Judge Bucher's dissent states that "a creative and efficient possibility [for the examining attorney] might well have been to provide applicant and this Board with hyperlinks to online video clips."
The problem with that suggestion is that it is directly contrary to Board precedent:
"A mere reference to a website does not make the information of record. In order to review the facts in this case, there should be evidence in the record. Also, if there should be further review, Congress has required that the 'Director shall transmit to the United States Court of Appeals for the Federal Circuit a certified list of the documents comprising the record in the Patent and Trademark Office.' 15 U.S.C. § 1071(a)(3)." In re Planalytics Inc., 70 U.S.P.Q.2d 1453, 1457 (T.T.A.B. 2004). See also In re Pac. Coast Bldg. Prods., Inc. Serial No. 77196001 (T.T.A.B. April 24, 2009) (non-precedential) (“The actual material that could be accessed through the hyperlinks was not submitted by the examining attorney, and therefore this material is not of record and cannot be considered.”).
I thought Jinja was a plant that South Americans or somebody smokes like marijuana.
yoYah mon. Yo can smoke and make tea with it mon. Rastafari luv the good jinja mon!!
Not sure what it is you anonymous folk are smokin, but my rasta friends liked ganja.
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