Friday, January 15, 2010

Finding Applicant's 2(f) Evidence Misdirected, TTAB Affirms Requirement for Disclaimer of CHILDREN'S in "THE CHILDREN'S PLACE"

The Board affirmed a requirement that Applicant disclaim the word CHILDREN'S in the mark THE CHILDREN'S PLACE & Design for children's clothing, retail store services featuring same, and other goods and services. In a rambling 17-page decision, it found the word to be at least merely descriptive (Applicant conceded same) and Applicant's Section 2(f) evidence to be, simply put, off the mark. In re The Children's Place Services Company, LLC, Serial No. 77216904 (January 7, 2010) [not precedential].

Applicant TCP attempted to overcome the disclaimer requirement by establishing that the word CHILDREN'S has acquired distinctiveness. Unfortunately, however, Applicant did not submit any evidence that the word CHILDREN'S per se has acquired distinctiveness. Instead Applicant provided proofs that the phrase THE CHILDREN'S PLACE as a whole has acquired distinctiveness.

But Applicant did not claim that the entire mark had acquired distinctiveness under Section 2(f). It asserted only that CHILDREN'S had. In short, "applicant's arguments that, when registration is sought pursuant to Section 2(f), a disclaimer of a descriptive element of the mark is not required, are not applicable to the present situation."

Had Applicant claimed acquired distinctiveness for the mark as a whole, then its proofs would have been relevant (but if the word CHILDREN'S is generic, it would still have to be disclaimed). However, because Applicant was attempting to claim acquired distinctiveness of only the word CHILDREN'S, it had to submit proof of distinctiveness of that word alone.

Had Applicant submitted proof of the distinctiveness of CHILDREN'S alone, then the Board would have considered the genericness of the word (and would have found it to be generic). But it did not have to reach that issue because Applicant didn't get past the mere descriptiveness hurdle.

TTABlog comment: As the Board observed, Applicant was essentially seeking exclusive rights in the word CHILDREN'S in connection with children's stores and children's clothing. In other words, following Applicant's logic, it would be entitled to register the word CHILDREN'S for these goods and services. Are you kidding me?

Text Copyright John L. Welch 2010.


At 11:12 AM, Anonymous Paul Reidl said...

To me, this falls into the WYHA category. The argument seems like such a stretch, and fighting over a disclaimer requirement in this context seems like an expensive timewaster.

At 9:38 AM, Anonymous John Huff said...

Only if by "kidding", John, you are referring to a young goat, and only arbitrarily referring to children.

At 10:58 AM, Anonymous Orrin A. Falby said...

I agree with not accepting the disclaimer. However, I do not understand why they did not argue that the mark as a whole is unitary and apply the 2(f) claim to the entire mark. I am not certain what they were trying to accomplish here. Did they simply not understand the law?


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