Tuesday, October 06, 2009

WYHA? Is "SCENT STRIPES" Merely Descriptive of Plastic Garbage Bags?

Suppose your client filed an application to register SCENT STRIPES for plastic garbage bags and the like. Examining Attorney Doritt Carroll cites definitions of the two words, your client's product packaging "touting that applicant’s bags feature scented stripes," and a statement by your client's Director that the products "are scented." She issues a final refusal to register on the ground of mere descriptiveness under Section 2(e)(1). Would you have appealed? In re Intellectual Property Development Corporation Pty Ltd., Serial No. 77206766 (September 15, 2009) [not precedential].

Applicant feebly argued that the mark is not descriptive but merely suggestive because "it requires imagination and thought to reach a conclusion that the goods are bags for household use." It relied on third-party registrations for marks that include the word SCENT, and on a statement from its Director that the mark has no significance or meaning in the trade. The Board was not moved.

Severely undermining the foundation of applicant's argument ... are applicant's Director's statement that "applicant's products are scented," and applicant's very own use of the term "stripes" on its packaging for kitchen garbage bags ....

The third-party registration evidence was once again not persuasive, since the Board is not "privy to the files in these registrations," and is "not bound by the prior actions of examining attorneys."

Applicant's argument about the need for "thought and imagination" to conclude that its products are scented bags was way off the mark. The Board pointed out once again that "[t]he question is not whether someone presented with only the mark could guess what the goods or services are. Rather, the question is whether someone who knows what the goods or services are will understand the mark to convey information about them."

The Board concluded that the applied-for mark "immediately informs prospective customers that [Applicant's] bags have scented stripes that help to eliminate odors." And so it affirmed the Section 2(e)(1) refusal.

TTABlog comment: Suppose the mark included the design of a skunk. Could Applicant then claim that SCENT STRIPES is a double entendre? Would that argument pass the smell test?

Text Copyright John L. Welch 2009.


At 10:06 AM, Anonymous Chris said...

The double entendre argument seems to be the only thing that has been reasonably successful in overcoming 2(e)(1) final refusals. That being said, it is only a double entendre if there is a second connotation/significance as applied to the goods and services, so I don't think adding a skunk design to the mark alone would overcome it. Maybe if the bag were skunk shaped...


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