Friday, June 26, 2020

TTABlog Test: How Did These Three Section 2(e)(1) Mere Descriptiveness Appeals Turn Out?

The TTAB recently ruled on the appeals from three Section 2(e)(1) mere descriptiveness refusals summarized below. Let's see how you do with them, keeping in mind that last year the Board  affirmed, by my calculation, about 93% these refusals. Answer(s) will be found in the first comment.

In re Shimano North America Holding, Inc., Application Serial No. 88185338 (June 24, 2020) [not precedential] (Opinion by Judge George C. Pologeorgis). [Mere descriptiveness refusal of FLAT-FALL for "Fishing lures; Lures for fishing" in International Class 28. Applicant conceded that its fishing lures drop through the water, but the term “flat” does not describe their motion or position in the water.]

In re Fusion 360, Inc., Application Serial No. 88131491 (June 24, 2020) [not precedential] (Opinion by Judge Christopher Larkin). [Mere descriptiveness refusal of BUD SET for "Fertilizers; plant foods; chemicals for use in agricultural and industry, namely, microbial nutrient compositions, microbial compositions, bioremediation compositions, mineral fertilizing preparations, and plant nutrient compositions," in International Class 1. Applicant argued, inter alia, that the proposed mark is not merely descriptive because it does not describe a "significant function, attribute, or property" of the claimed goods.]

In re Daktronics, Inc., Serial No. 87101453 (June 22, 2020) [not precedential] (Opinion by Judge Cheryl S. Goodman). [Mere descriptiveness refusal of LIVETICKER (in standard characters) for “Computer graphics software” in International Class 9. Applicant argued, inter alia, that the Examining Attorney was attempting to “guess or infer” how Applicant will use its mark, and that “at this stage the Examining Attorney is in no position to determine” how Applicant will use its mark.].

Read comments and post your comment here.

TTABlog comment: See any WYHAs here?

Text Copyright John L. Welch 2020.


At 6:28 AM, Blogger John L. Welch said...

All three were affirmed.

At 10:33 AM, Blogger Unknown said...

Hi John, I note that the Board for In re Daktronics, Inc., Serial No. 87101453 stated “Because LIVETICKER is a composite mark, we examine the meaning of each component individually for descriptiveness in relation to the identified goods, and then determine whether the mark as a whole is merely descriptive in relation to the identified goods. See DuoProSS Meditech Corp., 103 USPQ2d at 1758. [Emphasis mine]

I have always argued that when analyzing a composite mark, the validity of the mark should be determined by viewing it as a whole. Q-Tips v. Johnson & Johnson, 206 F.2d 144, 98 U.S.P.Q. 86, 88 (3rd Cir. 1953), cert. denied, 346 U.S. 867 (1953). As the Fifth Circuit found, “common words in which no one may acquire a trademark because they are descriptive or generic may, when used in combination, become a valid trademark.” Association of Co-operative Members v. Farmland Indus., Inc., 684 F.2d 1134, 216 U.S.P.Q. 361, 366 (5th Cir. 1982), cert. denied, 460 U.S. 1038 (1983). The United States Supreme Court analyzed this rule, stating “the commercial impression of a trademark is derived from it as a whole, not from its elements separated and considered in detail. For this reason it should be considered in its entirety . . .” Estate of P.D. Beckwith, Inc. v. Commissioner, 252 U.S. 538, 545-6 (1920).


At 10:41 AM, Blogger Stacey Friends said...

I guessed the first and third, but Bud Set surprises me a bit...

At 3:53 PM, Blogger Mark Stein said...

I am not a gardener, but does fertilizer cause a bud to set?


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