Wednesday, July 22, 2009

TTAB Grants Request for Reconsideration; Hell Freezes Over; Cubs Win World Series

Okay, I exaggerated a bit. At least regarding the TTAB. Most requests for reconsideration are lame or feeble, or both. Here, the Board granted Applicant O'Rourke-Nicaud's request for reconsideration of a tje Bpard's affirmance of a final refusal to register the mark shown below [GYM disclaimed], for health club services, on the ground of mere descriptiveness or deceptive misdescriptiveness. Prior to the Board's decision, Applicant had belatedly requested remand of the application to the Examining Attorney in order to amend the application to seek registration on the Supplemental Register. In re O’Rourke-Nicaud Ventures, L.L.C., Serial No. 77035443 (June 30, 2009) [not precedential].

The request for remand was filed "very late" in the appeal process: after briefing had been completed. Applicant explained that it had to wait until it had used the mark before it could seek the amendment to the S.R. It had indicated to the Examining Attorney that it was attempting to begin use of the mark but was delayed by the downturn in the economy. Applicant requested suspension of the application, but the Examining Attorney refused that request, and the appeal ensued. The Board sympathized with O'Rourke-Nicaud:

In view of the totality of the circumstances, including the fact that the amendment to the Supplemental Register is intended to obviate the refusal of registration, we find that applicant has shown the necessary good cause. [See TBMP Section 1209.04.]

The Board suspended the appeal and remanded the case to the Examining Attorney to consider applicant’s amendment to the Supplemental Register and its Amendment to Allege Use. The Board took no position as to whether registration of the mark on the Supplemental Register is appropriate.

TTABlog comment: What do you think? Will the Examining Attorney allow registration on the S.R.? Or will he or she deem the alleged mark to be generic? Is the gym really open 24/7?

Text Copyright John L. Welch 2009.


At 10:46 AM, Blogger Alex said...

I think the examiner will allow registration on the Supplemental Register if the applicant agrees to disclaim not only the word "GYM" but also the notation, "24/7" (in other words disclaiming all wording and essentially reigstering just the font/design). Hopefully, the applicant claimed the color orange so they could have something distinctive to protect in that mark.

At 1:32 PM, Anonymous Anonymous said...

Generic. Or at least I hope so as I recently faced the same objection for a similar application to the SR.

At 3:32 PM, Anonymous Anonymous said...

The font and stylization are no where near sufficient to carry this mark. Gym obviously is generic, but 24/7 is not generic of anything. Certainly descriptive of the gym's hours, and one could argue that it's suggestive of 24/7 health. Supplemental it is!


Post a Comment

<< Home