Wednesday, June 24, 2015

TTAB Test: Is GROCERY GEAR Merely Descriptive of Reusable Grocery Bags?

The USPTO refused to register the mark GROCERY GEAR in the stylized form shown below, finding it to be merely descriptive of "reusable grocery bags." Applicant Penny Johnson appealed, arguing that the lack of evidence of third-party use of GROCERY GEAR in a descriptive manner established that the mark is not merely descriptive. How do you think this came out? In re Penny Johnson, Serial No. 86017471 (June 22, 2015) [not precedential].

Examining Attorney Karen Severson relied on dictionary definitions of "grocery" (food bought at a store) and "gear" (equipment, paraphernalia), noting that the word "grocery" appears applicant's identification of goods. The scant Internet evidence showed us of "fabulous grocery gear" in connection with reusable grocery bags, and "Grocery Gear: Keep your cool" for a "collapsible cooler used to carry groceries." Three third-party registrations disclaimed "grocery" and three disclaimed "gear" for reusable bags or shopping bags.

The Board found that this evidence established the descriptive meaning of GROCERY and GEAR for applicant's goods. The combination of the two words, it concluded, did not evoke any new or unique commercial impression.

Applicant itself has described its goods as “reusable grocery bags,” and the manner in which Applicant promotes its goods, i.e., “pack & transport grocery system,” consumers would understand that the applied-for mark describes the purpose and/or a feature of the goods, namely, that they are bags intended to carry items from a grocery store."

As for applicant's argument that no third-party uses the phrase GROCERY GEAR, the Board pointed out that a term may be merely descriptive even if the applicant is the first and only user of same. The Board also noted that "some" of the evidence showed third-party use of "grocery gear."

The Board found nothing incongruous in the mark, and the stylization of the mark did not detract from its descriptiveness. Although any doubt regarding mere descriptiveness must be resolved in favor of the applicant, the Board had not doubt here in affirming the refusal to register.

Read comments and post your comment here

TTABlog note: I think "gear" is too vague a term to be descriptive here. A bag is not "gear," by my way of thinking. The word tells you nothing more about the goods than what you would know by looking at them: obviously a bag for carrying groceries. What do you think?

Text Copyright John L. Welch 2015.


At 8:03 AM, Anonymous Mike Zall said...

Agree with your comments. Would it have been merely descriptive for "containers for carrying items purchased in a store"?

At 1:40 PM, Anonymous Anonymous said...

Gear is descriptive in this context. See, for example, TECH GEAR (for a variety of class 018 bags, GEAR disclaimed), GIDDYUP GEAR (for waist packs, GEAR disclaimed), and any of the many, many, many other similar marks for a variety of bags where GEAR is part of the mark and is disclaimed.

At 10:10 PM, Anonymous Paul Reidl said...

Another decision that has no basis in realsville. No consumer would see "gear" and think of re-usable shopping bags.


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