Since applicant disclaimed "CATS" in all four applications, the Board's analysis focused on the term "& CO." The Board noted that business entity designations like "Co.," "Corp.," and "Inc." have no source identifying significance. Applicant, however, pointed to TMEP Section 1203.03(d), which states that "a disclaimer should not be required when the entity designation is used in an arbitrary manner and thus has trademark significance." It maintained that the use of ".CO" in its mark is arbitrary, since applicant is not an organization for or about cats, and there is no such entity as "CAT & CO." affiliated with applicant.
The Board agreed with applicant that "Co." in applicant's mark "serves not merely as an entity designation, but rather is in arbitrary use in association with the goods identified in the applications."
As Applicant contends: "Here, the Applicant's CAT & CO. connotes a faux company name suggesting the goods are produced by a firm where the principal is a cat, which on its face is fancifully absurd."
The Board therefore found that "& CO." carries trademark significance as a component of Applicant's marks and is not merely descriptive. And so the Board reversed the four refusals.
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TTABlog comment:Would you have refused registration? or WYHRR?
Text Copyright John L. Welch 2016.
Oh hell no. This was an easy reversal. Plenty of ON POINT registrations to support the PUB from an examiner's POV.
ReplyDeleteI agree that the examiner should have been able to find support for approving this application without any fear of a "clear error" demerit for having approved the application. Moreover, I would go so far as to consider the mark CAT & CO. a unitary mark not requiring any disclaimer.
ReplyDelete