Wednesday, June 11, 2014

Applicant Avoids Disclaimer of "EZ" Via Transferred Distinctiveness From Prior Registrations

Applicant DEQ sought to register the mark shown immediately below, for card games, gaming tables, and the like [NO COMMISSION and PAI GOW disclaimed], but the Examining Attorney required a disclaimer of "EZ." When DEQ declined to comply, the PTO refused registration. DEQ pointed to two prior registrations for EZ-containing marks, but the Examining Attorney maintained that direct evidence of acquired distinctiveness was required in view of the "highly descriptive" nature of EZ. The Board reversed. In re DEQ Systèmes Corp., Serial No. 85315739 (June 4, 2014) [not precedential].

In order to be eligible for a claim of acquired distinctiveness, a part or element of a mark must create a distinct commercial impression apart from the other elements of the mark. Here, EZ is presented in a larger font size than the other words in the mark, and those other words are descriptive. The design elements, and particularly the yellow and gold disk in lighter shading than EZ, serve to reinforce that separate and distinct nature of EZ. Therefore, Applicant DEQ may make a claim of acquired distinctiveness for that element.

As to whether EZ has acquired distinctiveness, the Board pointed to Rule 2.41(b), which provides that "in appropriate cases, ownership of one or more prior registrations on the Principal Register of the same mark may be accepted as prima facie evidence of distinctiveness." When a portion of a mark is involved, the portion in the application must be the same as or the legal equivalent of the corresponding portion of the prior registration. Two marks are legally equivalent when a "consumer would consider them both the same mark." Of course the goods must be the same, or related, for the two marks.

The mark of the first registration on which DEQ relied is set out immediately below; the registration covered card games, game tables, and the like. The second registration, for the standard character mark EZ BACCARAT, covered roughly the same goods. The word BACCARAT was disclaimed in both registrations. Neither registration included a disclaimer of, or a Section 2(f) claim for, the term "EZ."

The Board found the goods in the two prior registrations to be identical or highly similar to those of the subject application. The EZ in the second registration is the legal equivalent of the stylized version in the applied-for mark. As to the first registration, the stylized depiction of "EZ" conveys the same commercial impression as the stylized depiction in the applied-for mark. In other words, "the literal elements are identical and the stylization is not so great as to diminish or detract from the connotation or meaning of the term." The Board concluded that the "EZ" portions of the marks are legally equivalent.

The Board therefore found that the distinctiveness of "EZ" in the prior registrations transfers to the "EZ" portion of the applied-for mark, and it reversed the PTO's refusal, concluding that applicant's showing of acquired distinctiveness for that element was sufficient.

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Text Copyright John L. Welch 2014.


At 10:23 AM, Anonymous Anonymous said...

Nice job by counsel on this one. From my experience disclaimers are very hard to fight.

At 1:36 PM, Blogger John L. Welch said...

Several readers have pointed out that this decision seems inconsistent with the recent CHURRASCOS (stylized) decision, where that term was found to be generic despite the existence of a registration for the mark in standard character form for the same services.

At 2:31 PM, Anonymous Anonymous said...

It seems to me from reading only the summary of the case that the Board did not address the crux of the examiner's refusal which was that the EZ term required a stronger showing of distinctiveness evidence because the term EZ (phonetic for "easy") is so highly descriptive. It did not seem like the examiner had an issue with whether the prior registrations containing EZ could support the typical threshold level of evidence necessary to claim acquired distinctiveness, which presumably would also have included a declaration of exclusive and continuous use for 5+ years. The examiner's point was that EZ is so highly descriptive that the applicant needed to present evidence of actual acquired distinctiveness, i.e. actual impact of the mark element on consumers and consumers' recognition of EZ as identifying applicant. I guess the implication is that the TTAB disagreed with the examiner's assessment of the distinctiveness of EZ.


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