Thursday, June 09, 2005

TTAB Curiously Says "CONTACT YOGA" Not Merely Descriptive Of Exercise Mats

Remember Lynda Guber? In April, the TTAB ruled that her mark CONTACT YOGA was merely descriptive of publications on the subject of meditation and exercise (YOGA disclaimed). In re Guber, Serial No. 76469243 (April 22, 2005) [not citable]. See TTABlog posting here.

Lynda Guber

The very same Board panel has now ruled on another Guber application, this time finding the CONTACT YOGA mark not merely descriptive of "personal exercise mats, exercise blocks and exercise straps" (YOGA disclaimed). In re Guber, Serial No. 76469246 (June 1, 2005) [not citable].

A review of the file histories of these two applications indicates that the PTO's evidence was identical in both this and the prior Guber case. [The same Examining Attorney issued both final refusals.] In the second case, however, the Board minimized the significance of that evidence: "the Examining Attorney has made of record just two articles and one advertisement." Judge Hanak referred to this evidence as "meager," and asserted that:

"The Examining Attorney has simply not presented any evidence showing that the term "contact yoga" is used to describe any goods that persons may utilize when they practice contact yoga, including exercise mats, blocks or straps."

I have two problems with that statement: first, in the prior Guber decision, there was no evidence of use of CONTACT YOGA for publications, yet the refusal was affirmed; second, the issue here is mere descriptiveness, not genericness, and proof of use of the phrase at issue is not required.

In the second case, the Board went on to note that Applicant's goods may be used for various sports and exercise routines. So what? They certainly may be used for contact yoga, and that's what matters.

Judge Hanak continued:

"To be blunt, the Examining Attorney has never articulated, much less demonstrated, how applicant's mark CONTACT YOGA conveys any information about the qualities or characteristics of exercise mats, exercise blocks or exercise straps with the required 'degree of particularity.'"

Again, this writer suggests that Judge Hanak is not applying the correct test. The phrase "contact yoga" may not describe a "quality" or "characteristic" of exercise mats, but it certainly describes an end use for the goods. See TMEP Sec. 1209.03(p)(3); In re Wallyball, Inc., 222 USPQ 87 (TTAB 1984) [WALLYBALL held descriptive of sports clothing and game equipment]; In re National Presto Industries, Inc., 197 USPQ 188 (TTAB 1977) [BURGER held merely descriptive of cooking utensils].

Would Judge Hanak find "wrestling" or "aerobics" not merely descriptive of exercise mats? Shouldn't competitors be free to use the term "contact yoga" in connection with exercise mats, without fear of an infringement charge?

In sum, the TTABlog is at a loss to reconcile these two decisions. Maybe they were written by two different interlocutory attorneys. In any event, I think the Board got it right the first time.

Text ©John L. Welch 2005. All Rights Reserved.


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