Thursday, September 03, 2009

WYHA or not WYHA? "CHROMALOY" Merely Descriptive of Surgical Implants, Says TTAB

What do you think? Does this one fall below the WYHA line? The TTAB affirmed a Section 2(e)(1) refusal to register the mark CHROMALOY, finding it merely descriptive of "surgical implants comprising artificial material." The Board concluded that consumers would recognize the term as the equivalent of "chrome alloy," which describes "a feature or characteristic of such surgical implants." In re Warsaw Orthopedic, Inc., Serial No. 77277657 (August 21, 2009) [not precedential].

Examining Attorney Dominick J. Salemi relied on dictionary definitions of "chrome" and "alloy" and on LEXIS/NEXIS excerpts in asserting that CHROMALOY describes "an important feature of applicant's surgical implants, namely that they are composed of two or more metallic elements, the prominent one being chromium."

Applicant Warsaw contended that "CHROM" is "a combining form meaning 'color,' used in the formation of compound words" and that "ALOY" is a surname and is the corporate symbol for Alloy Online, Inc. [So CHROMALOY means a colorful person with the surname Aloy? -ed.] Warsaw also pointed out that CHROMALOY is not used by third-parties and does not appear in a particular dictionary.

The Board first found that the term "chrome alloy" is merely descriptive of the goods because, based on the evidence of record, it merely describes a feature or characteristic of the goods. The record showed that chrome may be combined with other metal or metals to form an alloy.

The question then became whether CHROMALOY would be perceived by the relevant customers of surgical implants as the term "chrome alloy." The Board said yes because CHROMALOY is "simply a slight misspelling of the term 'chrome alloy.'" As the Supreme Court said in Standard Paint Co. v. Trinidad Asphalt Mfg. Co., 220 U.S. 446, 455 (1911), "Bad orthography has not yet become so rare or so easily detected as to make a word the arbitrary sign of something else than its conventional meaning ...." [Say again? -ed.]

The Board noted other cases in which a slight misspelling did not overcome a mere descriptiveness refusal: NU-ENAMEL, QUIK-PRINT, FASTIE (for "fast tie"), ORGANIK, HI-TORQUE, KWIXTART ("quick start"), KUF'N KOLAR (for guess what?). Warsaw argued that CHROMALOY has a "strange spelling which is difficult to pronounce." [Like TTABlog? -ed.] The Board, however, saw the spelling as no more novel than these other misspelled marks. And as to the pronunciation, "there is no requirement that the term CHROMALOY be pronounced exactly like the descriptive term 'chrome alloy.'" Moreover, "there is no correct pronunciation of a trademark." [I ask once again, what about BLACK CAT for firecrackers? -ed.]

The Board found the other meanings of "CHROM" and "ALOY" to be irrelevant, as were the lack of any third-party usage of the term CHROMALOY and the absence of CHROMALOY in the dictionary.

And so the Board affirmed the refusal.

TTABlog comment: I'm not a surgeon, and I don't play one on tv, but when I first saw this mark I immediately thought of "chrome alloy." I don't think I would have appealed. How about you?

Text Copyright John L. Welch 2009.


At 9:38 AM, Blogger Pamela Chestek said...

Hey John, you should set up a survey when you post the WYHA cases. I think it's a pretty easy function in Blogger, it could be fun.

And I WHA. Worth a try.

At 10:39 AM, Anonymous Anonymous said...

What is your alternative to appealing? If the client is committed to the mark and it has value for him/her/it, then the percent likelihood of success has to be pretty low to indicate that you should not appeal. And if the situation is such a loser to start with, why file at all?

At 11:46 AM, Blogger John L. Welch said...

The alternative to appealing is not appealing, and not wasting money on a lost cause.

Why file in the first place? Because sometimes an Examining Attorney may let the mark slip by.

At 11:18 AM, Blogger Heather Bond Vargas, Esq. said...

I looked at it and saw "krom uh loi" as one word with the accent on the "uh". I did not see "chrome alloy". I may have appealed.


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