Test Your TTAB Judge-Ability on these Four Mere Descriptiveness Refusals
Here are four recent appeals from mere descriptiveness refusals under Section 2(e)(1). Let's see how you do with them, bearing in mind that the Board affirms, in my estimation, more than 80% of these refusals. [Answers in first comment].
In re Tateho Kagaku Kogyo Kabushiki Kaisha d/b/a Tateho Chemical Industries Co., Ltd., Serial No. 79119845 (September 9, 2014) [not precedential]. [Mere descriptiveness refusal of PUREMAG for, inter alia, "“magnesium hydroxide, magnesium oxide, magnesium carbonate; magnesium oxide ceramics in particle and compacted form used as target material for sputtering, electron-beam deposition, evacuated deposition"].
In re New Energy Technologies, Inc., Serial No. 85673541 (September 10, 2014) [not precedential]. [Mere descriptiveness refusal of MOTION POWER & Design for "generators of electricity, namely, generators that generate electricity by capturing and converting kinetic energy into electricity"].
In re In re Hunter Engineering Company, Serial No. 85593757 (September 11, 2014) [not precedential]. [Mere descriptiveness refusal of ECAL for "automated systems, namely, micro-processor based hardware and software used to monitor the status of and self-calibrate equipment, namely, wheel balancers for balancing the wheels of land vehicles"].
In re Gyroz, Inc., Serial No. 85551984 (September 12, 2014) [not precedential]. [Mere descriptiveness refusal of GYROZ for "restaurant services, including sit-down service of food and take-out restaurant services"].
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TTABlog note: See any WYHAs here?
Text Copyright John L. Welch 2014.
posted by John L. Welch @ 9/15/2014
4 comments
4 Comments:
All four refusals were affirmed.
Surprised that GYROZ even elected to appeal!
only one that seemed even close was "motion power" and given the percentages of reversing the examiners, not very good chances of success in an appeal. Query - how many of those who appeal ex parte refusals ask for and give an oral argument? And does that help get a reversal percentage wise?
PUREMAG, in my opinion, should not have been refused on a 1052(e)(1) basis. Even though the refusal was affirmed by the Trademarks Trial & Appeal Board, I feel as though the mark is more suggestive than descriptive. The mark PUREMAG may conceivably be broken down to mean "Pure Magnesium." If this assumption were true, I believe the connotation of the mark is that whatever good or service received is strictly magnesium, in whichever form it takes. The explanation of the mark's goods or service consists of "magnesium hydroxide, magnesium oxide, magnesium carbonate; magnesium oxide ceramics in particle and compacted form used as target material for sputtering, electron-beam deposition, evacuated deposition." Based on this offered explanation, I believe the mark is not descriptive because many of those compositions are not purely just a magnesium element. Even this assumption is based on the notion that we are indeed talking about the elemental field. Many people may believe "mag" to mean its more layperson definition of "magazine." Hence I believe with all these factors it takes a stretch to put together the meaning of the mark, making it suggestive.
MOTION POWER & Design should have its refusal affirmed on descriptiveness issues. The goods identified by the mark are generators of electricity, which capture and convert kinetic energy ("motion"). This is quite literally a motion-powered generator, and in that regard the mark falls too closely in describing the good based on its function. The "Design" end of the mark can be construed to mean the design of the generators using kinetic energy to create electricity, thus the TTAB rightfully affirmed.
ECAL is definitely a descriptive mark and its refusal was rightfully affirmed by the TTAB. In common usage, an "E" preempting a word is often seen as standing for the word "electronic" such as email or e-commerce. The goods this mark was sought for was an automated system which was capable of monitoring self-calibrating equipment. ECAL could be construed as describing the good as "electronic calibrating" which describes the functions very well.
The final mark is the most descriptive of the four presented here. A gyro is a Greek delicacy, and the mark GYROZ was for a restaurant. Assuming the restaurant was predicated on the sale of gyros, the mark GYROZ is simply too descriptive. It sounds and appears as "gyros" which merely describes the meaning of the menu. As it stands, it is a textbook example of when a mark should be refused on descriptiveness grounds. The TTAB was correct in affirming its refusal.
Ultimately, I agree with three of of the four TTAB rulings, but believe I can make a case for PUREMAG to not be refused. In my opinion, it was unfairly refused.
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