Tuesday, August 12, 2014

Test Your TTAB Judge-Ability: Is BOATS DIRECT USA Geographically Descriptive of Boat Dealerships?

The USPTO issued a Section 2(e)(2) refusal to register the mark BOATS DIRECT USA, finding it to be primarily geographically descriptive of boat dealerships. On appeal, applicant admitted that "the term 'USA' is generally know to mean the United States of America." And since applicant is located in Key Largo, Florida, a services/place association is presumed, a presumption that applicant failed to rebut. So "USA' is geographically descriptive, but what about the mark as a whole? How do you think this came out? In re Boats Direct, LLC, Serial No. 85418867 (August 7, 2014) [not precedential].

According to Board precedent, a mark comprised of a geographic term and generic terms, highly descriptive terms, or highly suggestive and laudatory terms, is considered to be primarily geographically descriptive. [e.g., MINNESOTA CIGAR COMPANY for cigars]. So the question was whether the phrase BOATS DIRECT is generic, highly descriptive, or highly suggestive and laudatory.

The was no dispute that BOATS is generic for boats [Doh!], but what about DIRECT? The examining attorney argued that the wording merely describes the nature of applicant's services: "the direct sale of boats." But there was no evidence showing what the "direct sale of boats" means. Although applicant admitted that some of the boats it sells are "factory direct," the PTO did not establish "that the term 'BOATS DIRECT' describes a feature of applicant's dealerships in factory-direct boats." Nor did any of the submitted dictionary definitions apply the word "direct" in conjunction with "boats."

To be clear, there is no evidence supporting the Examining Attorney’s contention that the term “Boats Direct” is merely descriptive or even that it is highly suggestive and laudatory. Accordingly, we find that the phrase “BOATS DIRECT” is not highly descriptive, generic or highly suggestive and laudatory.

The Board therefore found that the applied-for mark is not primarily geographically descriptive. However, pursuant to Trademark Rule 2.142(g), the Board re-opened the application for the purpose of entry of a disclaimer of the words BOATS and USA under Section 6 of the Trademark Act.

Read comments and post your comment here.

TTABlog note:  Any thoughts?

Text Copyright John L. Welch 2014.


At 5:00 PM, Anonymous Anonymous said...

"Direct", while weak, is not merely descriptive. WYHR?

At 11:55 PM, Anonymous Anonymous said...

Wouldn't BOATSDIRECTUSA be unitary and therefore no disclaimer required?


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