TTAB Test: Is "THE EGG" Merely Descriptive of Facial Toning Devices?
The USPTO refused to register the mark THE EGG for "facial toning machines for cosmetic use" on the ground of mere descriptiveness under Section 2(e)(1). Examining Attorney Paul Moreno pointed out that applicant's machines or devices are egg-shaped, but applicant maintained that this is not a significant feature of the products. How do you think this came out? In re Flageoli Classic Limited, LLC, Serial No. 85811333 (October 30, 2014) [not precedential].
The Examining Attorney provided a (rather circular) definition of the word egg: "Something having the ovoid shape of an egg." He also submitted webpages showing that applicant and others refer to components of their facial toning machines as being "egg-shaped." in particular, applicant stated that its "handheld units store inside egg-shaped divider" and that "this device includes two hand-held, egg-shaped probes that are gently pressed to the skin."
The Board observed that "a word which describes the form or shape of a product falls under the proscription of Section 2(e)(1) of the Trademark Act." For example: V-RING for directional antennas, the primary components of which were shaped in the form of a "v" and a "ring;" CHAMBERED PIPE for an exhaust system consisting of a series of small tuning chambers; MATCHBOX SERIES for toys sold in boxes having the size and appearance of matchboxes; BEEFLAKES for frozen, thinly sliced beef; TOOBS for bathroom and kitchen fixtures in the shape of tubes; STRAIGHTS for straight legged jeans; WING NUT for for electrical connectors having winged projections for leverage while screwing; V-FILE for a card filing device in which the opening between the cards was in the form of a "v;" TTABLOG for blogs in the shape of the TTAB. [I made up that last one - ed.].
Of course, the word THE does not add any source-identifying significance to EGG. The Board therefore concluded that THE EGG is merely descriptive of the identified goods under Section 2(e)(1) because it "immediately and directly informs prospective purchasers and users of the shape or form of Applicant’s goods."
AFFIRMED.
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TTABlog query: Over-easy? Or egg on your face?
Text Copyright John L. Welch 2014.
posted by John L. Welch @ 11/17/2014
3 comments
3 Comments:
APPLE is not descriptive of computers because they have an image of an apple on them.
GOLDFISH is not descriptive of crackers because they are shaped like goldfish.
If I made a computer in the shape of a hippopotamus then HIPPOPOTAMUS would not be descriptive of computers.
This decision is stupid.
I have always disagreed with this type of analysis. Honeycomb is not descriptive for cereal. These decisions are so wrong for many reasons. It is still arbitrary to use the term "EGG" since such products can be in any shape. The fact that they are shaped as an egg only strengthens the arbitrariness in relation to such products.
Stupid? Wrong? The record shows that another egg-shaped product provided "ease of use around the nose and areas under the eyes." The decision says that Applicant was not the only one with facial devices who marketed "egg-shaped" products. Hence, THE EGG is no more arbitrary than STACKED (for vertically stacked single-serving wine glasses), MATCHBOX SERIES (for toy in a matchbox), PUCK (for puck-shaped security devices sold by a number of competing manufacturers), SQUEEZE 'N SERV (for ketchup), etc. If not generic, each of these terms can be registered on the Principal Register with a showing of acquired distinctiveness. Seems the Board would be rightfully criticized if it were oblivious to trends in the marketplace -- e.g., where permitting a monopoly on the name for the shape of the goods or product packaging affected competitive usage of shapes having significant utility. By contrast, APPLE for computers is really like THE DONUT, CRAYONS, etc., recent TTAB cases where competitive need was absent and the named shapes of goods or packaging were indeed found to be arbitrary.
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