Friday, April 14, 2006

Citable No. 22: TTAB Affirms Refusal of "SEPTEMBER 11, 2001" as Deceptively Misdescriptive

At 5:37 P.M. EDT on September 11, 2001, Moti Shniberg of Rosh Ha'ayin, Israel, filed an ITU application to register the mark SEPTEMBER 11, 2001 for books and entertainment services. The Board, in its 22nd citable decision of 2006, has affirmed a Section 2(e)(1) refusal to register on the ground that the mark is deceptively misdescriptive. In re Shniberg, 79 USPQ2d 1309 (TTAB 2006).

Moti Shniberg

In response to the Examining Attorney's request for information, pro se Applicant Shniberg stated that "None of applicant's books [is] on the subject of the events of September 11, 2001," and that "None of applicant's entertainment services will in any way cover the events of September 11, 2001." The Examining Attorney then withdrew the PTO's mere descriptiveness refusal but maintained the "deceptively misdescriptive" refusal.

The Board set forth the two-pronged test for determining whether a mark is deceptively misdescriptive: (1) whether the mark misdescribes the goods or services to which it applies; and (2) whether consumers are likely to believe the misdescription."

The PTO's proofs, including database and search engine results, established that "the date of September 11, 2001 has acquired special significance in America," and that the term SEPTEMBER 11, 2001 is "[c]ommonly used as a direct reference to the terrorist attacks on that date."

"The evidence shows that many publications and other media concerning the events of September 11 have used the date in the title of the books, articles, shows, and similar goods and services. From this information, we conclude that the term 'September 11, 2001' merely describes the subject matter of books and entertainment services concerning the events of September 11th."

The Board then found that when SEPTEMBER 11, 2001 "is used to identify [Applicant's] goods and services and the subject matter ... is not concerned with the events of September 11, 2001, the mark is misdescriptive." Thus the first prong of the test was met.

As to the second prong, the Board ruled that, in view of the numerous books, articles, and shows about the events of September 11, consumers are likely to believe the misdescription. "While the nature of the misdescription would become known after consumers studied applicant's books and entertainment services, that does not prevent the mark from being deceptively misdescriptive."

Applicant Shniberg made the cockamamy argument that his mark cannot be both descriptive and misdescriptive, pointing to Aristotle's principle of non-contradiction. The Board pointed out, however, that the PTO never said that: it refused registration on alternative grounds, and when "convinced that applicant's goods and services would not relate to the events of September 11," the Examining Attorney withdrew the mere descriptiveness refusal.

The Board therefore affirmed the refusal to register.

Text Copyright John L. Welch 2006.


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