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 In re Canada Enterprises LLC, Serial No. 85026331 (September 27, 2013) [not precedential].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\."
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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.