Tuesday, October 11, 2016

TTAB Test: Which One of These Four Mere Descriptiveness Refusals Was Reversed?

By my estimation, somewhere around 80-85% of all Section 2(e)(1) mere descriptiveness refusals that reach the TTAB are affirmed on appeal. Well, here are four appeals that were recently decided. One refusal was reversed. Which one, pray tell? [Answer will be found in the first comment].

In re NTVB Media, Serial No. 86174087 (October 5, 2016) [not precedential]. [Section 2(e)(1) mere descriptiveness refusal of TV WEEKLY, in the stylized form shown below, for "Publications, namely, printed magazines, newspaper inserts, television guides, featuring information pertaining to media, television, movies, stars, trivia, gossip,media programming guides with information relating to video and audio content in television, movies,the Internet, web podcasts and radio programming, games, and puzzles” and the services of “Online publications, namely, online articles, guides, magazines relating to media, television, movies, stars,trivia, games, puzzles, gossip, media programming guides with information relating to video and audio content in television, the Internet, web podcasts and radio programming"].

In re Marabo North America Holdings Ltd., Serial No. 86464788 (October 5, 2016) [not precedential]. [Section 2(e)(1) mere descriptiveness refusal of JOINT'NMUSCLE for "Topical analgesic creams"].

Illustration by Bruce Blaus

In re ServiceNow, Inc., Serial No. No. 86474833 (September 28 2016) [not precedential]. [Section 2(e)(1) mere descriptiveness refusal of CREATORCON for "Arranging and conducting business conferences for software development"].

In re British Customs, LLC, Serial No. 86154804 (September 21, 2016) [not precedential]. [Section 2(e)(1) mere descriptiveness refusal of BRITISH CUSTOMS for "motorcycle parts, components and accessories, namely, wheels, rearview mirrors, engine rebuild kits sold as a unit, hub caps, brake cylinders, wheel bearing kits, fork crown covers, fork joints, gas caps, turn signals, sprockets, handlebar grips, clutch springs and fenders" and for "on-line wholesale and retail store services featuring motorcycle parts and accessories”].

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TTABlog comment: How did you do?

Text Copyright John L. Welch 2016.


At 6:26 AM, Blogger John L. Welch said...

The CREATORCON refusal was reversed.

At 8:11 AM, Blogger Shane Curcuru said...

What about British Customs? My first thought was squarely between Creatorcon and British Customs, since the other two are so clearly descriptive in a direct manner.

But since the motorcycle goods don't seem to be specifically made in Britain, why wasn't that one allowed?

At 8:38 AM, Anonymous Anonymous said...

In the “tv weekly” opinion, the Board dismissed the design element of the mark on the ground that “the placement of the descriptive word WEEKLY within the letter T appears to be nothing more than an aesthetic placement of the term. We do not believe consumers will view an additional or separate commercial impression created by the mark other than the merely descriptive meaning of the literal terms.”

What is “an aesthetic placement of the term”? Is it normal for words to appear inside other words in typical writing? It sounds like the applicant made a number of poor arguments, but I have to say I find this decision very unpersuasive. Viewing the applicant’s applied-for mark, I would immediately conclude it was a trademark based on the “aesthetic placement” of one word inside the other.


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