Tuesday, August 25, 2015

TTAB Reverses Genericness Refusal of SKINSLEEVES, Finds Acquired Distinctiveness

In a 31-page opinion, the Board reversed a refusal to register the mark SKINSLEEVES for "medical devices, namely, non-compression fabric covers for legs and noncompression fabric covers for arms, non-compression fabric covers for skin protection of a patient's limb such as a leg or an arm, non-compression knitted skin coverings to be used for protection of the legs or arms of patients who have fragile skin that may be prone to tears and abrasions; protective fabric medical coverings for wound prevention." The examining attorney had based the refusal on the alternative grounds of genericness and mere descriptiveness, but applicant overcame both refusals, the second one by proving acquired distinctiveness. In re J.T. Posey Company, Serial No. 85206911 (August 18, 2015) [not precedential].

Genericness: The Board found the genus of goods to be "medical protective fabric skin coverings for wound prevention." The relevant public consisted of "medical professionals specifically charged with patient safety." [The Board noted the patients themselves might also be buyers of the goods, but there was no evidence of record to that effect.]

As to the meaning of SKINSLEEVES, there were no dictionary definitions of the term. The examining attorney submitted four website examples of the use of "skinsleeves" or variations thereof in a generic sense. However, there were also articles showing third-party use of SKINSLEEVES as a trademark for applicant's products.

Applicant argued that the fact that several accused infringers agreed to stop using the term SKINSLEEVES was evidence of non-genericness, but the Board pointed out that the cessation of use may have resulted simply from the desire to avoid litigation and not from any acknowledgment of the source identifying significance of the term. Nevertheless, the Board decided not to consider earlier use of the term by these accused infringers in the evaluation of the evidence.

In view of the mixed record, the Board concluded that the PTO had failed to satisfy the clear evidence standard for a genericness refusal.

Mere Descriptiveness: The Board found that the mark SKINSLEEVES when used in connection with medical protective fabric skin coverings for wound prevention "immediately engenders the
commercial impression of 'sleeves for skin,'" and not, as applicant contended, "sleeves of skin."

[T]he wide third-party use of the word “sleeve” in connection with medical protective fabric skin coverings for wound prevention demonstrates that medical professionals are accustomed to seeing, in connection with medical protective fabric skin coverings for wound prevention, the word “sleeve” preceded by another descriptive term (e.g., arm, leg, and limb). Thus when confronted with the term SKINSLEEVES, they would perceive a sleeve for skin.

Acquired Distinctiveness: Applicant submitted declarations from seven customer attesting to the source identifying significance of SKINSLEEVES, but that evidence was too skimpy to be probative. The statements of applicant's attorney regarding sales figures over a two year periods were not proper evidence, and applicant did not submit "actual evidence" of its sales receipts and advertising expenditures.

Nonetheless, in view of the facts that there were no dictionary definitions of “skin sleeve,” there was vague evidence of only one competitor using that term, and there are only three academic articles referencing the term “skin sleeves,” the Board found that SKINSLEEVES "is not so highly descriptive that its registrability under Section 2(f) may not be determined on the basis of Applicant’s declaration of substantially exclusive and continuous use since 2004."

The Board therefore reversed the Section 2(e)(1) mere descriptiveness refusal.

Read comments and post your comment here.

TTABlog comment: Note that the fact that applicant was the first and nearly the only user of the term SKINSLEEVES did not rule out the possibility of the mark being merely descriptive. On the genericness issue, however, those facts are important, although not dispositive.

Text Copyright John L. Welch 2015.


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