Thursday, August 11, 2016

TTAB Test: Is "TOON KICKER" Merely Descriptive of Pontoon Motor Mounts?

The USPTO issued a Section 2(e)(1) refusal of the mark TOON KICKER, finding it to be merely descriptive of "outboard motor mounts, namely, brackets specifically design for connection to pontoon boats for mounting of secondary outboard motors." The Examining Attorney pointed to several uses of "toon" referring to a "pontoon" boat, and references to "kicker" as a small outboard motor. Applicant Lermayer submitted third-party registrations for marks containing the word "toon" that were issued without a disclaimer or a Section 2(f) claim. How do you think this came out? In Lermayer Outdoors, Inc., Serial No. 86128066 (August 3, 2016) [not precedential].

The Board noted that except for only one reference in a blog, the Examining Attorney's uses of "toon" were part of various trademarks. Use of a term in a trademark does not prove that the term in merely descriptive. It may show that the term has significance within an industry, and that significance may be a suggestive one. There was no dictionary evidence that "toon" is an abbreviation of "pontoon." Moreover, the term appears in several registered marks, without disclaimer.

Clearly TOON is derived from “pontoon”, but these third parties might well have chosen to use TOON in their trademarks because it is suggestive of pontoon, not because it is the equivalent of pontoon. The only evidence we have of any non-trademark usage of “toon” is a single blogpost, but that is simply not sufficient for us to say that “toon” is an alternative term for “pontoon” or is an accepted abbreviation for that word.

The Board concluded that the USPTO had failed to carry its burden to show that TOON KICKER is merely descriptive. Although KICKER has a recognized meaning as an auxiliary motor, that descriptive meaning is subsumed when used in the mark TOON KICKER.

Because of the odd phraseology, a consumer seeing this mark for brackets designed to mount secondary outboard motors to pontoon boats would have a mental “hiccup” to understand the purpose of the goods. *** The mental steps a consumer would have to go through to transpose TOON KICKER brackets into “brackets for kickers used on pontoons” is enough to put TOON KICKER on the suggestive side of the “fine line” between descriptive and suggestive marks.

And so the Board reversed the refusal.

Read comments and post your comment here.

TTABlog comment: What if the goods were outboard motors rather than mounts? Would that make a difference on the descriptiveness issue?

Text Copyright John L. Welch 2016.


At 8:39 AM, Blogger Brad Salai said...

I could see this going either way, but the interesting thing is how the board frames the analysis depending on the result.
They agree that kicker is descriptive/generic, and that the goods are "brackets for kickers used on pontoons." So to me the question is, knowing that, would a purchaser regard toon (the only word that is even arguably not descriptive,) as descriptive rather than suggestive of pontoons? I don't think it would be much of a mental leap to understand that toon refers to pontoon and decide this the other way.

At 11:23 AM, Blogger Mike said...

I think the double entendre argument should have been used here, with 'toon also invoking cartoons, and toon kicker generating a whole series of mental images.

At 7:23 AM, Blogger Unknown said...

It is increasingly obvious that the USPTO is becoming more and more enamored with "merely descriptive" refusals. I forget the exact numbers I saw recently, but the number of "merely descriptive" refusals have increased significantly.


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