Test Your TTAB Judge-Ability: Is "O-RING CONDOM" Merely Descriptive of Condoms?

William Thomas Mistler applied to register the mark O-RING CONDOM for condoms, but the PTO found the mark to be merely descriptive of the goods under Section 2(e)(1) [CONDOM disclaimed]. Mistler contended that terms "O-ring" and "condom" are the antithesis of each other: the former "is a hollow circular element that defines a passage," whereas the latter is a sheath-like element that prevents passage. How do you think this came out? In re Mistler, Serial No. 85700737 (June 4, 2014) [not precedential].

O-ring
The Examining Attorney relied upon dictionary definitions of "ring," "condom," "O-ring," and "sheath," on applicant’s patent, and on a portion of applicant's website.

Applicant’s U.S. Patent No. 7,673,632, is directed to "a condom having an indicia indicating the proper orientation for use."

Preferably, the indicia is a fluorescent marking disposed on the inner side of the condom disposed at a location so that, when the condom is in the rolled configuration, the indicia is visible from the lower side only. More preferably, the indicia is a ring-shaped marking extending about the inner side of the tubular body. In this configuration, a user holding the condom can easily determine which is the upper side of the roll and which is the lower side of the roll. The user may then quickly orient the condom with the lower side facing toward the penis and unroll the condom in the proper direction.

According to Mistler's website, "O-Ring Condoms are designed for exceptionally quick and easy application. O-Ring Condoms feature a patented luminescent ring on the underneath side of the rolled condom, which can be seen in the daytime and nighttime. When the luminescent ring is facing down towards the body, the condom is ready to unroll."

60 = luminescent indicia
The Board noted that the dictionary evidence consistently defined “O-ring” as a gasket or rubber ring used as a seal in connection with machinery. Applicant's ring is not an O-ring. Moreover, there was no evidence that competitors have a need to use the term “O-ring” to describe their condoms.

The Board therefore reversed the refusal.

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Text Copyright John L. Welch 2014.