Wednesday, July 27, 2016

TTAB Test: Should the Stylization of This Descriptive Term Support a Principal Registration?

The USPTO refused to register the mark JIUJITEIRO in the stylized form show immediately below, for various items of athletic apparel, including martial arts uniforms. Applicant One Nation conceded that the term (which means "a pracitioner of Brazilian jiu-jitsu") is merely descriptive of the goods by offering to disclaim the word "JIUJITEIRO," but the Examining Attorney refused to enter the disclaimer, maintaining that a mark may not be disclaimed in its entirety. Applicant appealed. How do you think this came out? In re One Nation Enterprises, Serial No. 86260948 (July 25, 2016) [not precedential].

The Board pointed out that the Examining Attorney was correct in asserting that a mark may not be disclaimed in its entirety. However, if the mark is in a stylized form that is distinctive, the mark may be registered on the Principal Register with a disclaimer of its literal element. The issue is whether the stylization creates an inherently distinctive commercial impression apart from the word itself.

The determination of whether a particular stylization is inherently distinctive is "necessarily somewhat subjective, and depends on the particular nature of the mark at issue." Applicant cited the JACKSON HOLE and CONSTRUCT-A-CLOSET cases as examples of marks found registrable on the Principal Register with disclaimer of the literal portion, but the Board found that those two cases did not strongly support applicant's position: in JACKSON HOLE the particular arrangement of the words was important, and in CONSTRUCT-A-CLOSET, letters were used as design elements.

The Examining Attorney pointed to the FRUTTA FRESCA and LA LINGERIE cases as examples of marks whose stylization was not sufficiently distinctive, but the Board noted that those cases provided only weak support for the USPTO's position because the marks were in ordinary, readable typefaces, and so the consumer would see little or nothing more than the generic words themselves.

Applicant's mark, in contrast, is not displayed in a font. Instead, it bears the appearance of an idiosyncratic hand-written cursive script. The literal element is not ready discernable on first impression.

While marks in many cursive scripts would surely fall closer to the [FRUTTA FRESCA and LA LINGERIE] marks ... in distinctiveness (or the lack of it), the fact that many cursive scripts are easily readable and indistinctive does not mean that all must be so. We think that in this case the stylization of Applicant’s mark is sufficient to create a distinctive commercial impression apart from the literal element of the mark, and sufficient to justify registration notwithstanding the descriptiveness of the disclaimed term. The stylization of Applicant’s mark is in essence a recognizable and distinctive design in its own right, regardless of the literal meaning conveyed by the word so displayed.

The Board concluded that applicant's mark is registrable on the Principal Register with a disclaimer of the word JIUJITEIRO.

Read comments and post your comment here.

TTABlog comment: How did you do? The mark looks like TINY I. FEIRO to me. I guess the lesson is the less legible the cursive script, the more likely it is inherently distinctive. Why would anyone want to use an illegible script mark?

Text Copyright John L. Welch 2016.


At 8:19 AM, Blogger Brad Salai said...

This makes sense to me. the 2(d) test is whether the purported mark is primarily merely descriptive. As applied to this mark, and the other marks that were distinguished by the board, the test becomes is the primary impression created by the mark the literal portion or the design portion. In this case, I have no trouble accepting that the literal portion is almost imperceptible, and that the design portion dominates the impression. The opposite is true of Jackson Hole and Construct a Closet.
Good call by the Board.

At 9:44 AM, Anonymous Anonymous said...

I can't get my head around why an examining attorney (and the managing attorney) would want to take this to the Board. This is not even a close case. Seems that the USPTO encourages ex parte appeals.

At 4:14 PM, Blogger Pamela Chestek said...

I disagree with the conclusion. I don't agree that illegibility = distinctiveness. The word is descriptive, so the target market knows what the goods are and would readily recognize the mark as simply a script version of the mark (perhaps in bad handwriting). This opinion seems to ignore the principle that you consider descriptiveness in the context of what the goods are.

At 8:19 PM, Anonymous Anonymous said...

Looking at that handwritten mark, I view it as a source indicator and not as merely describing a feature or characteristic of the goods. I too am surprised this went up on appeal.

At 8:33 PM, Anonymous Anonymous said...

"Tiny I. Feiro" ? Wasn't he the midget that Bill Veeck once sent up to pinch-hit?

At 8:55 PM, Blogger John L. Welch said...

This comment has been removed by the author.

At 8:56 PM, Blogger John L. Welch said...

No, that was Eddie Gaedel


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