Monday, December 14, 2009

WYHA? "MANWEAR" Merely Descriptive of Retail Men's Clothing

We haven't had many WYHAs lately, what with all those Hot Stove League cases, so let's take a look at this one. Webid Consulting, based in London, sought to register the mark MANWEAR for "online retail stores featuring men's clothing and accessories and small leather goods from suppliers other than applicant." Examining Attorney Brendan D. McCauley issued a Section 2(e)(1) refusal on the ground of mere descriptiveness. The TTAB affirmed. How would you have argued the appeal? In re Webid Consulting Ltd., Serial No. 77397586 (December 10, 2009) [not precedential].

Not surprisingly, the Examining Attorney relied on dictionary definitions of "man" and "wear," as well as on various webpages using the term "manwear" to refer to men's clothing. He also submitted excerpts from foreign websites, but most of them appeared to be "from those in the clothing industry who are poorly translating another language into English." The Board wisely gave those websites "less weight than websites clearly describe their products in English." [Why give these foreign websites any weight? This is not a highly technical field? For a discussion of foreign website evidence, see "The TTAB and Foreign Website Evidence - Quo Vadis?" by John L. Welch and Ann Lamport Hammitte].

The Board found the foreign website evidence "interesting" because it showed "that when the term 'manwear' appears in the context of websites about clothing (even those with grammatical and other idiosyncrasies), there is nothing incongruous about the use of the term MANWEAR."

The Board concluded that consumers who "see the term MANWEAR in association with clothing-related services ... would understand immediately that the services are directed to clothing for men."

Applicant argued that the combination of "man" and "wear" creates an "obvious incongruity in the mind of the prospective purchaser." The Board failed to see any incongruity. It noted that descriptive terms that are misspelled are still merely descriptive, citing a somewhat cryptic 1911 Supreme Court decision:

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, as different, to bring the example to the present, as the character of an article is from its origin or ownership. Standard Paint Co. v. Trinidad Asphalt Mfg. Co., 220 U.S. 446, 458 (1911).

Finally, Applicant lamely argued that its mark "is not commonly used or understood to relate in any way to [Applicant's] services." Of course, it is black-letter law that even if applicant is the first or only user of a descriptive term, that fact does not mean that the term is not descriptive.

And so the Board affirmed the refusal.

TTABlog comment: Well, would you have appealed? Since about 4 out of 5 mere descriptiveness refusals are affirmed on appeal, what do you think the odds were for a successful appeal here?

TTABlog postscript: I thought bad orthography was a reason for seeing the dentist.

Text Copyright John L. Welch 2009.


At 12:30 PM, Blogger Seanrk924 said...

Honestly, the Mark is descriptive. Maybe if it was spelled MANWHERE. Mark should have been applied for as a design and just disclaim MANWEAR.


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