Test Your TTAB Judge-Ability on These Three Mere Descriptiveness Appeals
Here are three recent appeals from mere descriptiveness refusals under Section 2(e)(1) [Actually, one was a disclaimer requirement]. 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. Hint: at least one refusal was reversed and at least one was affirmed].
In re Affinity Gaming, Serial No. 85909611 (April 16, 2015) [not precedential]. [Requirement for disclaimer of the word SEVENS in the mark SILVER SEVENS for casino and casino services].
In re Free-Flow Packaging International, Inc., Serial No. 85679090 (April 27, 2015) [not precedential]. [Mere descriptiveness refusal of POWER PAK’R for “machines for manufacturing and dispensing packing material"].
In re Lloyd, Serial No. 85639318 (April 27, 2015) [not precedential]. [Mere descriptiveness refusal of ARTISTS COLLECTIVE ENTERPRISE for downloadable graphic novels and comic books].
Read comments and post your comment here.
TTABlog note: See any WYHA(s) here?
Text Copyright John L. Welch 2015.
posted by John L. Welch @ 4/29/2015
7 comments
7 Comments:
The first two were reversed. The third affirmed.
Wow - a rare win for the double entendre (I assume all packers are electrically "powered") so they gave it the suggestive meaning. I never win that battle!The others were no-brainers.
Second one is a WYHA. But it was reversed. So, nothing is a WYHA with this TTAB.
The 7s objection should be in the Examining Attorney hall of shame. Not surprisingly, the TTAB dispensed of it "forthwith."
The EAs get so caught up in the technical stuff that they don't stop to think about how consumers are really likely to perceive a mark.
I'm also puzzled by the second one. Looks like a clear WYHA to me, yet the applicant still prevailed.
I thought all three of these refusals would be affirmed. Upon reading the arguments in Silver Sevens, I was not surprised that Artist Collective Enterprise was the only one to be affirmed.
The question in each appeal was whether the mark was merely descriptive in the market in which it sought to be used, to their desired customer base. At first glance, the Silver Sevens image seemed to obviously describe casino services which, for me, also include resort services and a possible shopping centers. I immediately imagined casinos like Mohegan Sun and Foxboro (apart from Vegas or Atlantic City) which both provide services similar to Silver Sevens. To say that Silver Sevens is merely descriptive, however, might assume that every single casino and possibly strong associated symbols (Royal Poker cards, poker chips, or a black spade) would be descriptive of full extent of these services. The Applicant also uses the full spelling of Seven (using 7 in a graphic with the ‘v’ in Silver and Seven), which is not the typical “7” symbol I think of when imagining casino services. While the Examiner urges the court that sevens typically describe slot machine jackpots, they are usually bold, prominent, and red. Further, allowing this mark would not prevent other competing casinos from using sevens or 7s and this specific mark does not capture a significant, or even large portion, of the services provided.
The POWER PAK'R mark seemed a bit harder to believe as soon as I saw the bubble tubes. Once I realized the mark might be used as a superlative to refer to the inflated tubes’ extreme helpfulness when packing. The packing material (the tubes) can be coined power packers, and might be really good at their function. I do have to make an additional step or shift in my understanding, however, to ignore the first and more obvious use of the word packer that comes to mind--someone or something that packs. This mental shift is likely why the refusal was reversed. It might have also helped that the Applicant voluntarily disclaimed the properly spelled word “Packer” from the mark. In doing so, the Applicant may have strengthened POWER PAK’R by reinforcing first that they do not intend to allude to “packer” and second, that their use of PAK’R is to refer generally to the packing industry or process, not that they provide packing machines.
The last mark to me seemed generic to begin with, and I was interested to read that the specific context of its use formed the basis of the Applicant’s argument. The Applicant claimed that a consumer would not readily imagine the goods/services/ to be related to graphic novels and comics. In fact, the Applicant probably hopes that the mark can be distinguished as such and will likely make efforts to describe their services like the other marks mentioned. More specifically, the fact that Artists Collective Enterprise might be used with other indicia to allude to comic/graphic novel context weighs against the Applicant. The Applicant would need to provide additional indicia that would make the mark more descriptive (adding stylized images associated with graphic novels and comics) to attract intended customers/audiences or to inform his own market base that the collection pertained to their narrow interest. Besides the specific and narrow content base, the Applicants use of the mark is generic because it exactly describes a major element of their goods/services. Even if the Applicant plans to do something different than other artist collectives, the mark still describes a major aspect of the goods/services. Even the Applicant admits that the average purchaser of his graphic novels does not readily see his mark and associate it with the comic/graphic novel context as opposed to not understanding that any goods/services would be different than other artist collectives (namely, that a collective is a group of artists that work together to generate content for their specific industry).
As to the first case (Affinity Gaming), I would have affirmed the initial denial for descriptiveness. It is true that the connection could be described as taking two steps, but the key to descriptiveness is the immediacy of recognition. In some circumstances, multiple steps may indicate an elongated connection timeline. Yet humans make connections very quickly; this case is a good example of that truth. For consumers interested in gaming, SEVEN or SEVENS does have immediate connotations (to slot machines and card games). Both items are primary elements of casinos in the U.S., but of few other things. So the connection in this case would be largely immediate for relevant consumers, and the fact that it involves two steps, while true, does not (in my mind) save it from descriptiveness.
As to the second case (Free-Flow Packaging), I agree with the Board. While PAK’R and PACKAGING are close in spelling, they are quite different in what goods and services they describe. The Board had little relevant and strong evidence from the Examining Attorney, further tipping the scales in favor of the applicant. The only qualm I had was the seemingly exclusive reliance by the Board on a dictionary to define POWER. I agree the dictionary definition should be a part of the analysis, but POWER is a word like “technology” that has a shifting meaning which a dictionary may not fully reflect. Nonetheless, I think the Board still came out the right way.
Finally, as to the third case (In re Lloyd), I agree with the Board’s decision but not the entirety of its rationale. I am convinced by the Board that the name ARTISTS COLLECTIVE ENTERPRISES describes the services offered by the applicant. I do not agree with the Board’s apparent rationale that the words describe the way in which applicant’s goods are made, and therefore it also describes the goods. I think the Board should have more closely analyzed the services the applicant registered the name to cover, and restricted its holding to say the name describes them. There was no need to further expand case law holding that names describing the way in which goods are produced qualify as descriptive (a proposition the cases cited by the Board may suggest, but which I think is due for reevaluation).
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