Wednesday, May 16, 2007

TTAB Panel Majority Reverses Mere Descriptiveness Refusal of "WELDKIT" for Auto Suspension Systems

In the second divided panel decision this week (actually, the second of the year), the Board reversed a Section 2(e)(1) refusal of the mark WELDKIT, finding it not merely descriptive of "suspension systems for automobiles." Judge Bucher dissented. In re Weldkit, Inc., Serial No. 78521325 (May 10, 2007) [not precedential].

some sort of welding kit

The Examining Attorney, relying on dictionary definitions and several websites, asserted that the mark "immediately and logically conveys that applicant provides suspension systems for automobiles that include a kit for welding."

Applicant argued that the term is too broad to describe the goods with any immediacy or particularity, and further claimed that its goods do not require welding. As to the websites cited by the PTO, it pointed out that three have nothing to do with automobile suspension systems, and others either do not use the phrase "weld kit" or are unclear in meaning. (As Judge Bucher scoffingly noted, Applicant also maintained that some might take the word "kit" to refer to "kitten.")

The panel majority found the PTO's evidence insufficient to establish mere descriptiveness. "In sum, the sparse record does not establish that 'weld kit' is in common use for automobile suspension systems such that we could conclude that WELDKIT is merely descriptive."

Judge Bucher agreed that the evidence was "scant," but he noted that two websites showed that "these aftermarket components may require welding." He opined that the term "weld kit" would "immediately convey information about the nature of these suspension components." If indeed Applicant's goods are not welded on, then, according to Judge Bucher, "the mark should be refused under Section 2(e)(1) of the Act as being deceptively misdescriptive."

TTABlog comment: I agree with Judge Bucher. The majority seemed to be applying a genericness-like test, which would require proof that the term WELDKIT (or "weld kit") is actually in use by third parties for the identified goods. For purposes of mere descriptiveness, however, it does not matter that Applicant may be the first and only user of the mark. See, e.g., In re Zanova, Inc., 59 USPQ2d 1300 (TTAB 2001). It seems to me that the dictionary definitions coupled with common sense should have sufficed.

Text Copyright John L. Welch 2007.


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