Thursday, June 29, 2006

Sarcasm Fails to Sway TTAB: Refusals of "ALLERGY WIPES" for Eyelid Wipes Affirmed

Perhaps sarcasm is not the best approach to take in a TTAB appeal. Applicant Roberta C. Freiberg presumably learned that lesson when the Board affirmed a Section 2(e)(1) refusal of her mark ALLERGY WIPES, finding it merely descriptive of "disposable eyelid wipes" [WIPES disclaimed]. In re Freiberg, Serial No. 76388348 (June 16, 2006) [not citable].

unrelated eyelid cleansing wipes

In addition to the 2(e)(1) ground, Examining Attorney Kelley L. Wells also refused registration because Freiberg's identification of goods was indefinite: disposable eyelid wipes could fall in any of three classes, depending on their composition. That got Freiberg started:

"These are facially antithetical positions; if the Examiner cannot understand from the description what the goods are, how can the Examiner be so cocksure of how the mark describes the goods."

Freiberg saw herself as the victim of a conniving Examining Attorney who had essentially set a prosecutorial trap:

"In an intent-to-use application, an examiner lacks specimens in which an applicant might be caught explaining how a mark relates to the goods. . . . However, if an applicant can't be relied on to scuttle his own application with specimens, an examiner has another tool that may be applied toward that same end. An indefiniteness objection and requirement for the applicant to describe the goods and their uses in great detail might maneuver the applicant into ponying up evidence of descriptiveness for the examiner."

Freiberg was caught between Iraq and a hard place:

"Thus the only response to the final refusal that Applicant could rely on as acceptable was an amendment to describe the goods in a way the Examiner had determined was merely described by the mark. The clarification requirement appears to have been a gambit to nail down a descriptiveness refusal."

The Board, however, saw no such "gambit," nor any ulterior motive in the PTO's stance: "we would have no difficulty in affirming the descriptiveness refusal with or without the amended identification."

Moreover, the identification requirement was "entirely reasonable," since wipes impregnated with non-medicated chemicals fall in class 3, and with medication in class 5. Plain wipes would be classified as paper products in class 16. Indeed, the Examining Attorney properly followed the guidelines set forth in TMEP Section 1402.03.

As to the descriptiveness refusal, Freiberg "scrupulously" avoided stating exactly what her goods are, but she did not deny that her wipes could be used in connection with allergies. Freiberg did, however, take another swipe at the Examining Attorney's reasoning:

"All the examiner proffers is the opinion that even the dullest consumer would, without using their imagination or taxing their brains in any way, 'immediately understand that eyelid wipes bearing the mark ALLERGY WIPES were used to treat or ease allergies.' While this does [] quite clearly suggest the Examiner's view of how the undersigned's [i.e., Applicant's Attorney's] brain stacks up against the dullest consumers' brain, it doesn't constitute evidence."

The Board again sided with the PTO: the term ALLERGY WIPES "immediately conveys the purpose or function of Applicant's goods, i.e., that the wipes are for use in connection with allergies." That is true regardless of whether Applicant's wipes fall in class 3, 5, or 16.

Finally, Freiberg argued that the PTO has issued "numerous principal registrations for block-letter marks including wipe formatives used in connection with wipe goods, where the marks are far more descriptive than the Examiner's conjecture regarding Applicant's goods." According to Freiberg, "[s]tare decisis, equal protection, and due process" require the PTO to treat Freiberg consistently, or "overturn the law as it was applied in the precedents."

However, Freiberg provided the Board with minimal information regarding these prior registrations, and so they were of "limited probative value." The two registrations that the Examining Attorney investigated turned out to be on the Supplemental Register, while other registered marks listed by Freiberg were "obviously distinguishable." In any event, as the Board has stated time and time again, "each case is unique and must be decided on its own merits."

In sum, Applicant Freiberg's attempt to wipe away the PTO's refusal to register may have raised a few eyelids, but it was ultimately futile.

Text Copyright John L. Welch 2006.


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