Thursday, June 26, 2014

Test Your TTAB Judge-Ability: Is DIAMOND Merely Descriptive of Paper-Cutting Dies?

The PTO refused registration of the mark DIAMOND, finding it merely descriptive of "paper cutting machine parts, namely, steel rule dies for cutting paper products." The examining attorney maintained, and Applicant Hannan Products conceded, that "diamond" describes one of the many shapes cut by steel dies. How do you think this came out? In re Hannan Products Corp., Serial No. 85442708 (May 30, 2014) [not precedential].

The Internet evidence submitted by Examining Attorney Helene Liwinski established that steel dies like those of applicant may be used to cut a variety of shapes, including diamonds and patterns in the shape of a diamond, and that the term is used descriptively by third parties. Hannon acknowledged that "steel die rules are not limited to any particular shape, and they can be any imaginable shape."

The Board therefore found that DIAMOND "immediately conveys knowledge of a quality, feature, function, or characteristic of the goods or services with which it is used," and so it affirmed the Section 2(e)(1) refusal.

Read comments and post your comment here.

TTABlog note:  So would the mark PUPPY DOG be merely descriptive of paper-cutting dies because a die is capable of cutting paper in the shape of a puppy dog?

Text Copyright John L. Welch 2014.


At 8:39 AM, Anonymous Anonymous said...

I think PUPPY DOG would be considered merely descriptive if it was used by third parties to describe the goods, as DIAMOND was here.

It's interesting to see what is descriptive to a particular trade or product, but appears to be arbitrary to the layperson.

At 10:15 AM, Anonymous Anonymous said...

I believe the trademark community has a strong contender for worst TTAB decision for 2014.


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