Tuesday, January 12, 2010

WYHA? TTAB Affirms Mere Descriptiveness Refusal of "TITANIUM" for Kitchen Applicances

Would You Have Appealed this one? The USPTO refused registration of the mark TITANIUM for various kitchen appliances on the ground of mere descriptiveness under Section 2(e)(1). The Board affirmed in a seven-page opinion. In re BSH Home Appliances Corporation, Serial No. 77010429 (January 5, 2010) [not precedential].

Examining Attorney Allison P. Schrody contended that "Titanium" is merely descriptive because it identifies "the color or type of metal finish applied to the goods." She supplied Internet printouts showing use of the term in connection with large kitchen appliances (e.g. "Thor Titanium Washer/Dryer").

Applicant BSH ignored this evidence and lamely argued that TITANIUM is merely suggestive of the goods because the mark "requires imagination to reach any conclusion as to the nature of the goods." [I imagine they have a titanium finish - ed.] According to Applicant,“consumers would undergo a mental pause [because]...due to the wide range of products that may be made of titanium or feature a titanium finish, a potential purchaser of the goods would pause to reflect as to the type of goods or services that may be offered in connection with [the] mark "

The Board thought that argument was just BSH, pointing out once again that the determination of mere descriptiveness must be made not in the abstract, but in the context of the involved goods. The question is not whether one can guess what the goods are from the mark, but whether the mark conveys information about the goods.

Here, consumers will immediately understand that the word "titanium," when used in connection with kitchen appliances, describes the color or finish of the goods.

And so the Board affirmed the refusal.

TTABlog comment: This "mere-descriptiveness-as- a-guessing-game" argument made my list of the "Top Ten Losing TTAB Arguments" back in 2001.

Text Copyright John L. Welch 2010.


At 9:09 AM, Anonymous Franco A. Serafini said...

Your "Top Ten Losing TTAB Arguments" paper is quite interesting. I suppose we have all used some of those arguments from time to time.

I would be interested in knowing of you had an opinion about the "Top Ten Winning TTAB Arguments." Thank you in advance.


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