Friday, February 20, 2009

Applicant Gets Benefit of the Doubt: "GREEN INDIGO" Not Merely Descriptive of Clothing, Says TTAB

The Board reversed a Section 2(e)(1) refusal to register the mark GREEN INDIGO, finding it not merely descriptive of "bottoms; [and] tops." Noting that there is a "thin line of demarcation between a suggestive and a merely descriptive designation," the Board saw the lack of evidence of descriptive use of the phrase in the clothing industry as indicative that the mark is only suggestive. In re Jones Investment Co. Inc., Serial No. 77249189 (January 21, 2009) [not precedential].

India Indigo Dye Lump

The PTO maintained that the mark "describes a specific characteristic of the goods, namely that they may come in the colors GREEN or INDIGO." Applicant argued that the words "green" and "indigo" have other meanings and when combined in its mark, are incongruous.

Applicant pointed to the existence of "green," environmentally-aware clothing, and it contended that "indigo" plays on the "earthy-vibe" conveyed by the mark as a whole, since indigo is a dye made from plants. [Note that the identification of goods is not limited to environmentally-aware clothing - ed.].

The Board agreed with the PTO that the two words have commonly-understood meanings that are merely descriptive of clothing, but it sided with Applicant regarding the incongruity of the combination:

A consumer must engage in mature thought or follow a multi-stage reasoning process to determine any specific attributes of applicant’s product: first, a consumer must connect the term "green" to a color, an environmental message or youth, and then must connect "indigo" to either a plant or a dye, let alone color. After making these respective connections, the consumer is then forced to make some sense out of the various meanings conveyed by the incongruous combination of the two terms. This need to resort to imagination renders the mark only suggestive.

The Board found nothing in the record indicating that others in the clothing field would need to use the term GREEN INDIGO to describe their goods. It agreed with Applicant that the mark would not preclude others from using "green" or "indigo" in a descriptive manner."

Noting that any doubts on mere descriptiveness are to be resolved in favor of Applicant, the Board reversed the refusal.

TTABlog comment: One thing that troubles me about this decision is the fact that Applicant's goods are not limited to "environmentally-aware" clothing. If someone looked at an ordinary top sold under the mark GREEN INDIGO, wouldn't that someone think of the two colors first? And even if some segment of the population would think environmental, there must be a vast number of consumers who would never think, looking at an ordinary top, that "green" means environmentally-aware.

Anyway, are you aware that the mark GREEN is registered for footwear? See the TTABlog posting here. Will the owner of the GREEN registration oppose GREEN INDIGO? Dare it?

Text Copyright John L. Welch 2009.


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