Thursday, April 13, 2006

TTAB Affirms Three Deceptiveness Refusals of "SWISSGOLD" for Watches and Parts

Applicant Eastern Watch Company hit the trifecta with its application to register the mark SWISSGOLD for watches and clocks. The Board affirmed two Section 2(a) deceptiveness refusals (one for the SWISS part and one for the GOLD part), and one Section 2(e)(3) primarily geographically deceptively misdescriptive refusal. In re Eastern Watch Co., Serial No. 78402643 (March 27, 2006) [not citable].

Examining Attorney John T. Lincoski not surprisingly established that SWISS refers to Switzerland, one of the world's "leading manufacturers" of high quality watches and clocks, including gold ones. He also ably established that GOLD "refers to a precious metal," and that gold is often used in making high quality watches.

Applicant Eastern Watch conceded that its watches and clocks are not made in Switzerland; in fact, it emphasized that its goods are made in China. It lamely argued that its mark "suggests that the goods sold under the mark are of a high quality but does not infer that the gold in the goods come from Switzerland or that the watches sold under the mark are made in Switzerland."

The Board agreed with the PTO. The SWISS portion of the mark misdescribes all of Eastern's goods. Prospective purchasers are "certainly likely to believe" that the proposed mark actually describes the goods. Given the highly quality of Swiss watches and clocks, purchasers would be materially influenced into purchasing watches and clocks bearing the SWISSGOLD mark.

As to the GOLD portion of Eastern's mark, the Board's ruling was a little more complicated. Eastern's identification of goods included some products wholly or partially made of gold, as well as the following products: "watch movements, parts for watches, alarm clocks, wall clocks, [and] clocks not comprised wholly or partially of gold."

The Board first noted that the record lacked evidence that "prospective purchasers are likely to believe that the misdescription actually describes" these non-gold goods. Most of the PTO's evidence concerned watches being made from gold, not clocks and watch parts. Not to worry!

"However, applicant's goods include 'parts for watches.' It has been clearly established that watches are sometimes made from gold. It follows, based on this evidence that watches are made of gold, that parts of watches, particularly external replacement parts, may similarly be made of gold. Therefore, inasmuch as applicant's parts are not made from gold, the term 'gold' would deceive potential purchasers who were seeking gold replacement parts for their watches." (slip op., pp. 10-11).

The Board noted that it would not necessarily be apparent from inspection of the goods that these parts are not made of gold. Furthermore, because of the desirability of watch parts made of gold, "the GOLD element of the proposed mark would also be material to purchasing decisions of prospective customers."

The Board therefore wound up affirming all three refusals to register.

TTABlog note: Compare this decision with the Board's ruling last March in In re Glaze (TTABlogged here), reversing a Section 2(e)(3) refusal of SWISSCELL for batteries for lighting.

For an interesting comment on "geographical" marks, surf to Rebecca Tushnet's 43(b) blog, here.

Text Copyright John L. Welch 2006.


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