Tuesday, May 02, 2006

TTAB Okays "SWISSAIRE" Drawing But Affirms 2(e)(2) Refusal

The Board affirmed a Section 2(e)(2) refusal of the mark SWISSAIRE, finding it primarily geographically descriptive of "air filters for industrial installations," but it reversed the PTO's refusal to register under Section 2.51(a)(1), finding that the mark in the application drawing did not materially differ from the mark on the specimen of use. In re Flanders Corp., Serial No. 76475934 (April 20, 2006) [not citable].

As to the 2(e)(2) issue, Applicant Flanders Corporation did not contest that its goods come from Switzerland, and it understandably conceded that "Swiss" connotes Switzerland. Nor was there any argument that Switzerland is remote or obscure. Therefore, the Board found that "Swiss" is geographically descriptive of the subject goods.

The Board then considered whether the addition of the term "Aire" to "Swiss" results in a mark that is primarily geographically descriptive. "Aire" is a misspelling of "air," a "highly descriptive" term for air filters. In fact the word "Aire" has been disclaimed in a number of registrations, which "show that the term 'Aire" and "Air' would be perceived similarly." The Board observed that the addition of highly descriptive matter to a geographic term "does not detract from the mark's primary significance as being geographically descriptive."

Turning to the next question, the Board contemplated whether the mark in the application drawing, SWISSAIRE, is a "substantially exact representation" of the mark shown on the specimen of use, as required by Rule 2.51(a). Applicant's specimen and literature displayed two representations of the mark:

(illustration from the opinion)

The Examining Attorney and the Applicant agreed that "the mark on the specimen is shown with the words 'Swiss' and 'Aire' connected by a '+' design." Examining Attorney Vivian Micznik First maintained that the "+"' design in the specimen "is identical to the '+' sign on the Swiss flag," and that this design element is "inextricably bound to the literal portion of the mark because it is physically joined with the words in the mark, and it also enforces the meaning of the word SWISS in the mark." Applicant argued that it was just a plus sign. The Board agreed with the PTO that the design is "similar to the cross design in the Swiss flag."

The Board then tackled the question of whether the term SWISSAIRE creates a separate commercial impression, a question that is "assuredly a subjective one." Particularly pertinent was the Board's ruling in favor of the applicant in In re Lear Siegler, Inc., 190 USPQ 317 (TTAB 1976), in which the HY- and LINE portions of the mark HY-LINE were separated on the specimen of use by an "X" representing crossed drill bits.

"When we consider the mark in this case in light of the relevant case law, we conclude that the mark in the drawing is a substantially exact representation of the mark shown on the specimen. The 'plus' sign, if it is considered as the examining attorney argues a part of the Swiss flag, does not add anything additional to the mark inasmuch as the term 'Swiss' is clearly already part of the mark." (slip op., p. 15).

The Board therefore reversed the PTO's refusal to register on the ground that the mark in the drawing is "materially different from the mark in the specimen," but it affirmed the Section 2(e)(2) refusal.

Text Copyright John L. Welch 2006.


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