Monday, June 26, 2006

TTAB Affirms Mere Descriptiveness Refusals of "THIRTYS" and "TREINTAS" for Wheel Rims

The TTAB shot down Jesse James in his attempts to register the marks THIRTYS and TREINTAS for "automobile parts, namely, car wheel rims." The Board affirmed the PTO's 2(e)(1) refusals, finding the marks to be merely descriptive. In re James, Serial Nos. 76561134 and 76562049 (June 8, 2006) [not citable].

As to THIRTYS, Examining Attorney Jennifer Chicoski maintained that the mark refers to the diameter size of the rims in inches. Newspaper and Internet articles refer to 20s, 22s, 24s, and 26s as wheel sizes, and also to the term "30" and "30-inch" in relation to rims. And a "vignette" from an electronic bulletin board used the term "30's" to refer to huge wheel rims. Other evidence showed that rims are often referred to "by the number that describes their diameter in plural form."

Applicant James argued that the term THIRTYS is a "whimisical" spelling for tire rims having a diameter of thirty inches or greater, but the Board failed to see the whimsy. "It is no more whimsical than the earlier large size rims that were referred to simply as 'twentys,' '20's,' 'twenty-fours,' or '24s.' Moreover, the slight misspelling of the word "thirties" does not change its meaning.

The Board had no doubt that THIRTYS is merely descriptive of the identified goods.

Turning to the mark TREINTAS, Examining Attorney Toni Y. Hickey argued that "treintas" is the Spanish foreign equivalent of the word "thirties" and is therefore merely descriptive of the rim size of Applicant's goods.

Applicant, although agreeing that "treinta" means "thirty," disputed whether "treintas" means "thirties," and he further pointed to the lack of evidence that any entity has ever used the term TREINTAS for car tire rims.

The Board again found that "thirties" is descriptive of a feature of the goods (their size). The focus then became the translation of the word "treintas:" i.e., is it the foreign equivalent of the word "thirties?" The PTO submitted the declaration of Steven M. Spar, a Technical Translator at the USPTO, confirming that "the word treintas can be translated as 'thirties,'" and it also proffered some Internet evidence that "treintas" is the Spanish equivalent of "thirties."

The Board then ruled that Spanish speakers in this country would stop and translate "treintas" when used on car rims -- just as the term MARCHE NOIR in In re Thomas, Serial No. 78334625 (TTABlogged here) would be translated into "black market" by those familiar with the French language. [See TMEP Section 1207.01(b)(vi): the doctrine of foreign equivalents "should be applied only when it is likely that the ordinary American purchaser would stop and translate the foreign word into its English equivalent. Palm Bay Imports, Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 73 USPQ2d 1689 (Fed. Cir. 2005)."]

Applicant again contended without success that its mark is a whimsical, alternative spelling of "thirties.' As to Applicant's argument that no other entity uses the term, the Board once again pointed out that even if Applicant were the first and only user of the mark TREINTAS for its goods, that would not change the mark's mere descriptiveness. "This would be particularly true in this case where the development of thirty-inch rims for cars is apparently a rather new development and there would have been little opportunity for others to use the term previously."

The Board therefore affirmed the refusal of TREINTAS under Section 2(e)(1).

Text Copyright John L. Welch 2006.


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