TTABlog Test: Which of These Three Section 2(e)(1) Mere Descriptiveness Refusals Was/Were Reversed?
The Board has affirmed the first 15 Section 2(e)(1) refusals that it reviewed this year. Here are three more. At least one was reversed. How do you think these three cases came out? [Results in first comment].
Centerfield Nine Corporation, Serial No. 90399980 (March 24, 2023) [not precedential] (Opinion by Judge Cheryl S. Goodman). [Mere descriptiveness refusal of DEALER-FIRST BLACKJACK for “Entertainment services, namely, conducting live table games of chance and conducting games of chance via a computer network" [BLACKJACK disclaimed]. Applicant argued that the proposed mark "neither describes what action, or game move, is performed first, nor the plurality of actors among whom the Dealer is first” requiring the consumer “to mentally fill in multiple blanks."]
Next Phase Enterprises, LLC, Serial No. 90632171 (March 28, 2023) [not precedential] (Opinion by Judge Angela Lykos) [Mere descriptiveness refusal of FOODIE COLLECTIVE for "Cheese; Frozen appetizers and entrees consisting primarily of meat, fish, poultry or vegetables.” Applicant argued that its proposed mark merely "suggests quality food that a ‘foodie’ would love," and that its products are "directed to the entire universe of cheese and frozen item consumers -- not merely a subset of ‘foodie’ consumers," and so "[t]his incongruous mismatch between the mark and the intended users makes FOODIE COLLECTIVE ‘suggestive’ -- not ‘merely descriptive.’"]
In re Imperative Care, Inc., Serial No. 90192571 (March 28, 2023) [not precedential] (Opinion by Judge Frances S. Wolfson) [Mere descriptiveness refusal of ADVANCED FIBER TECHNOLOGY for “Medical catheters for use in the peripheral, coronary, and neuro vasculature; Component parts of medical catheters" [FIBER TECHNOLOGY disclaimed]. Applicant contended that the term ADVANCED is ambiguous in that it at most “ connotes a vague desirable characteristic but does not describe any of Applicant’s Goods with immediacy or particularity."]
Read comments and post your comment here.
TTABlog comment: How did you do? See any WYHA?s
Text Copyright John L. Welch 2023.
posted by John L. Welch @ 3/30/2023
6 comments
6 Comments:
The third one was reversed, the other two affirmed.
Reading the ADVANCED FIBER TECHNOLOGY case, I got the sense that the TTAB would have also reversed on the ground that "TECHNOLOGY" is too vague in connection with the goods. They repeatedly pointed out that the applicant disclaimed "FIBER TECHNOLOGY" and so the TTAB had to presume it was descriptive of the goods. "TECHNOLOGY" is one of those tricky words where it's hard to know if it would be descriptive or not. Here, I think "TECHNOLOGY" on its own is quite ambiguous and doesn't immediately describe anything about the catheters, but then, when you add "FIBER" to it, does that make it descriptive? But I definitely would have appealed based on the fact that "ADVANCED" is too vague to immediately convey any information about the goods other than they are somehow different than regular-old "FIBER TECHNOLOGY".
That is a surprise. I think ADVANCED FIBER TECHNOLOGY is the most descriptive of the three. I would have reversed the refusal of FOODIE COLLECTIVE. After all, the issue is "mere" descriptiveness.
I struggle to understand how they found ADVANCED FIBER TECHNOLOGY less descriptive than FOODIE COLLECTIVE. Part of it, for me, is also the "failure to function" aspect of ADVANCED FIBER TECHNOLOGY - it sounds like a common laudatory (or laudatory-adjacent) phrase. Interested to see if they considered that issue at all.
Once again, TTAB have injected unpredictabilty into the descriptiveness issue.
I feel like "Advanced" should be considered laudatory in this particular usage, which is why it is vague, and would fall under a subset of descriptive. There's no reason that laudatory use of words has to be limited to "great" and "best" when you look at the function of the word in the mark and whether it's delivering meaning or merely implying a heightened quality.
Hmm, the dealer's own hand is the last hand being dealt. I agree with Catherine comments about ADVANCED FIBER TECHNOLOGY.
Hi, the Centerfield Nine applicant here. Thank you for highlighting my appeal. Disappointed with the result, but knowing the odds of reversal, not particularly surprised. With that said, I simply cannot agree that a term that contains an adverb but not an associated verb -- "DEALER-FIRST BLACKJACK" -- *immediately* conveys the feature of the game. What the dealer shall do first, is missing, and (even among people familiar with the game) the brain needs to fill that blank in. Might just be a split-second, but that's a mental process nevertheless. The Examining Attorney was never able to express exactly what the dealer does first.
Post a Comment
<< Home