Test Your TTAB Judge-Ability on these Four Mere Descriptiveness Appeals
Here are four recent appeals from mere descriptiveness refusals under Section 2(e)(1). Let's see how you do with them, keeping in mind that, by my estimation, the Board affirms more than 80% of these refusals. [Answers in first comment].
In re Internet Promise Group LLC, Serial No. 85892404 (March 23, 2015) [not precedential]. [Mere descriptiveness refusal of EAR NATURAL for "a packaging with a dropper that contains limited quantity of mustard oil, for dropping oil drops in the ear canal, for cure of middle ear infection, without use of antibiotics"].
In re EBCO, Inc., Serial No. 85894991 (March 27, 2015) [not precedential]. [Mere descriptiveness refusal of LOCKDOWN MAGNET for "magnets" [MAGNET disclaimed]].
In re Hookah Portable Enterprises, Inc., Serial No. 85829768 (March 27, 2015) [not precedential]. [Mere descriptiveness refusal of HOOKAH PORTABLE & Design for "electronic hookahs; hookahs" [HOOKAH disclaimed]].
In re Dish Network LLC, Serial No. 85851513 (April 2, 2015) [not precedential]. [Mere descriptiveness refusal of SMARTBOX for "set-top box"].
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TTABlog note: See any WYHAs here?
Text Copyright John L. Welch 2015.
posted by John L. Welch @ 4/08/2015
6 comments
6 Comments:
All four refusals were affirmed.
I found it interesting that In re Dish Network, In re EBCO, Inc., and In re Hookah Portable Enterprises all recite the 2(e)(1) test for determining whether a mark is merely descriptive as "whether it immediately conveys information concerning a SIGNIFICANT quality, characteristic, function, ingredient, attribute or feature of the product or service in connection with which it is used, or intended to be used" (emphasis added) and cite to In re Chamber of Commerce of US (Fed. Cir., 2012). Chamber of Commerce does not use or allude to "significant" being part of the test. The TTAB appears to apply the 2(e)(1) test the same in all cases though.
Sometimes the word “significant” is omitted from the Board’s statement of the test, but it is part of the test. See Grand Canyon West Ranch LLC v. Hualapai Tribe, 88 U.S.P.Q.2d 1501, 1504 (T.T.A.B. 2008) (“A term is merely descriptive if it immediately describes a significant quality, characteristic, function…”); In re ICE Futures U.S. Inc., 85 U.S.P.Q.2d 1664, 1665 (T.T.A.B. 2008) (“significant attribute or function” of the goods or services); In re O’Rourke, Serial No. 77093617 (T.T.A.B. December 2, 2009) (non-precedential) (“While the color of clothing and jewelry is clearly significant from a style perspective, except in a limited number of situations, from a trademark perspective the use of a color word in a mark for clothing or jewelry is unlikely to be perceived as descriptive of a significant aspect of those goods. For example, without a showing that all or most of applicant’s clothing is pink, in which case one might be able to conclude that the color word in the mark identifies a significant and ‘signature’ aspect of applicant’s clothing and jewelry, we find that the ‘pink’ portion of applicant’s mark is, at most, suggestive of one color that could be used on clothing and jewelry.”).
Interesting. Has the TTAB ever attempted to reconcile their selective use of "significant" in stating the 2(e)(1) test to confirm it is an aspect to consider?
In the EAR NATURAL case, I found myself agreeing with the TTAB. I agreed with the board that in using the definitions of each word, the mark was merely descriptive of what use the product had. I also felt that exploring websites was an interesting way of determining that using natural ingredients to cure everyday ailments, such as a middle ear infection, was a brilliant way of connecting the fact that others had this idea and that the product was connected to natural ingredients. In doing so, the board connected the natural ingredients to the mark, which bolstered the argument against registration of the mark. I would have agreed with the board in the refusal of the EAR NATURAL mark. The LOCKDOWN MAGNETS case was another case where both words definitions played against the use of the trademark. But putting them together immediately connected me to magnetic strips in doorways that could lockdown a door in an emergency. This was the immediate connection that made the mark merely descriptive, therefore, I agree with the TTAB. With the HOOKAH PORTABLE case, I’m also inclined to agree with the board’s decision. Both words separate would be merely descriptive, but combining them also creates a merely descriptive phrase that describes the product itself. Regarding the SMARTBOX mark, however, my immediate reaction is that this mark did not immediately bring to mind the goods that were being sold. But when the third party evidence was brought in to determine how similar marks were considered descriptive, it demonstrated the line of thinking the Board had in determining the eligibility. After considering the third party evidence, I would agree with the TTAB.
LOCKDOWN MAGNET clearly is a WYHA. Applicant's website is Exhibit A.
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