Wednesday, March 04, 2009

Divided Board Panel Affirms Mere Descriptiveness Refusal of "STEELWORKERS," Finds 2(f) Evidence Insufficient

A divided Board panel affirmed a refusal to register the collective membership mark STEELWORKERS for "indicating membership of a[n] (sic) labor organization," finding the mark highly descriptive of the membership of Applicant's organization, and Applicant's evidence of acquired distinctiveness insufficient to overcome the refusal. Judge David Bucher, in dissent, maintained that the majority had applied too high a standard for the Section 2(f) evidence, and that under the circumstances Applicant had provided sufficient evidence to overcome the Section 2(e)(1) refusal. In re United Steel, Paper and Forestry, Rubber, Manufacturing, Energy, Allied Industrial and Service Workers International Union AFL-CIO.CLC, Serial No. 78815310 (February 27, 2009) [not precedential].

The Examining Attorney argued that STEELWORKERS identifies a significant attribute of Applicant's organization, namely that the membership is comprised, in part, of steelworkers. All three panel members agreed, and Applicant conceded, that the mark is merely descriptive.

Moreover, the panel majority, consisting of Judges Holtzman and Ritchie, agreed with the PTO that STEELWORKERS is highly descriptive "of that aspect of the organization." Noting that "the more descriptive the term, the heavier the burden," the panel gave low marks to Applicant's scant evidentiary offerings. Applicant submitted a declaration of five-years' use and referred to its "50 plus years" of use of the mark, but submitted no verification of the latter. The five-year declaration alone, the Board observed, has been consistently held to be insufficient when the term sought to be registered is highly descriptive.

The panel majority found Applicant's evidence "conclusory" and lacking in sufficient detail as to the extent of media recognition and exposure. Consequently, the majority found the 2(f) evidence inadequate, and it affirmed the refusal.

Dissenting Judge Bucher agreed with Applicant that the mark STEELWORKERS is not "highly descriptive." Most of Applicant's members are involved not in steelworking but in many other occupations, and only some small minority is involved in steel-related work.

When used as a collective membership mark, [STEELWORKERS] readily reflects membership in a labor union - not the more limited occupational setting from which applicant's early members were drawn.

Judge Bucher therefore would not impose the same "heavy burden of proving acquired distinctiveness" as the majority.

Judge Bucher recognized that Applicant's attorney could have done a better job and that the record evidence was meager, but he "would argue that the modicum of evidence that emerges from this record should be deemed sufficient to establish acquired distinctiveness under the circumstances of this case."

[A]pplicant is the largest industrial labor union in North America. There is no compelling public policy reason why the term “Steelworkers” should be kept available for other labor organizations to use to identify their membership. I would argue that the Office has the latitude on this record to accept as true applicant’s decades of nation-wide usage, crediting skimpy evidence (yes, admittedly hearsay evidence of applicant’s history for almost seventy years and its approximately 800,000 union members, references to applicant as “Steelworkers” in a Supreme Court case way back in the 1950’s, political buttons depicting the names and/or images of candidates for many national presidential elections, etc.) as being sufficient to match a lowered level of descriptiveness.

TTABlog comment: I agree with Judge Bucher that the panel majority's slapping of the "highly descriptive" tag on Applicant's mark was questionable, and that in the real world STEELWORKERS identifies Applicant. As Judge Bucher eloquently put it, the Board was probably "watching the wrong rat hole with this decision."

Text Copyright John L. Welch 2009.


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