TTAB Test: Which One of These Three Mere Descriptiveness Refusals Was Reversed?
Here are three recent appeals from mere descriptiveness refusals under Section 2(e)(1). One of the refusals was reversed. Let's see how you do in the role of TTAB judge. [Answer in first comment].
In re Migeca S.p.A., Serial No. 87105947 (May 15, 2018) [not precedential] (Opinion by Judge George C. Pologeorgis). [Mere descriptiveness refusal of CA’PUCCINO COFFEE HOUSE AND KITCHEN & Design for, inter alia, coffee and café services [COFFEE HOUSE AND KITCHEN disclaimed].
In re Buchanan, Serial No. 86847785 (May 15, 2017) [not precedential] (Opinion by Judge Cheryl B. Goodman). [Mere descriptiveness refusal of KOPI CHAM MOCHA for "coffee based beverages"].
In re gebana AG, Serial No. 79189309 (May 25, 2018) [not precedential] (Opinion by Judge Anthony R. Masiello). [Mere descriptiveness refusal of GLOBAL FARMERS’ MARKET for various food items in classes 29, 30, and 31].
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Text Copyright John L. Welch 2018.
posted by John L. Welch @ 5/29/2018
2 comments
2 Comments:
The third one, GLOBAL FARMERS' MARKET, was reversed.
Like many applicants before it, the applicant in the KOPI CHAM MOCHA case tried to rely on the three-part test for descriptiveness laid out in No Nonsense Fashions Inc. v. Consolidated Foods Corp., 226 U.S.P.Q. 502 (T.T.A.B. 1985). However, the Board has pointed out numerous times in precedential decisions that that case is no longer good law:
"Since this decision issued in 1985, there have been numerous decisions from the Court of Appeals for the Federal Circuit and the Board making clear that the test for descriptiveness is whether a term 'immediately conveys knowledge of a quality, feature, function, or characteristic of the goods or services with which it is used.' In re Bayer Aktiengesellschaft, 82 USPQ2d at 1831, citing In re Gyulay, 820 F.2d 1216, 1217, 3 USPQ2d 1009 (Fed. Cir. 1987)."
In re Carlson, 91 U.S.P.Q.2d 1198, 1203 (T.T.A.B. 2009). I think the Board will have to go on pointing this out at least until McCarthy updates his treatise to stop citing No Nonsense for the proposition that "the Trademark Board adopts the three part test used in this treatise."
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