Test Your TTAB Judge-Ability: Is GOOD BOX Merely Descriptive of Wine?

Switzerly, Inc. sought to register the mark GOOD BOX for wine, but the USPTO refused registration, deeming the mark merely descriptive of the goods under Section 2(e)(1). On appeal, applicant argued that its mark does not describe the wine itself, but at most the packaging for the wine. How do you think this came out? In re Switzerly, Inc., Serial No. 85720234 (August 20, 2014) [not precedential].

Examining Attorney Karen K. Bush relied on dictionary definitions of, not surprisingly, "good" and "box," and on several Internet website printouts referring to "good wine in a box," "box wines," "boxed wines," and "good boxed wine." The Board concluded that in the context of wine, "box" and "boxed" refer to wine sold in a box, that "good" box wine is increasingly common, and that consumers seek out "good" box wine.

The evidence also established that the combination of "good" and "box" does not convey any commercial impression beyond the meaning of the individual terms.

Switzerly urged that GOOD BOX at most describes the packaging, not the wine itself, but it conceded that "[wines] may be categorized by type of packaging." The Board observed that because wine is a liquid, it typically is sold in some type of container or package, and applicant's mark must appear on the package.

[T]he predecessor to our primary reviewing court has held that a mark which is merely descriptive of the packaging of goods may be found merely descriptive for the goods themselves. J. Kohnstam, Ltd. v. Louis Marx & Co., Inc., 280 F.2d 437, 126 USPQ 362 (CCPA 1960). There, the Court found MATCHBOX SERIES merely descriptive of “toy model vehicles and toy model machines” sold in matchboxes.

Finally, Switzerly pointed to a number of registrations for marks in which the word "good" is not disclaimed, but the Board pooh-poohed that argument. First, applicant failed to submit this evidence prior to the filing of its appeal, and second, each application must be considered on its own merits and the PTO and the TTAB are not bound by the prior actions of individual examining attorneys in other cases.

Because consumers seek out good box wine, competitors have a need to use that term. The Board therefore affirmed the refusal to register.

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Text Copyright John L. Welch 2014.