Friday, May 07, 2010

Test Your TTAB Judge-Ability on This Section 2(e)(1) Mere Descriptivenes Refusal of "CLUB DANCE" for Restaurant and Bar Services

How would you rule on this appeal from a Section 2(e)(1) mere descriptiveness refusal of the mark CLUB DANCE for restaurant and bar services? The Examining Attorney relied on third-party registrations for restaurant services, in which CLUB or DANCE has been disclaimed, and on evidence of businesses that offer restaurant services and dancing. Applicant Scripps argued that its customers will be familiar with applicant’s television program of the same name and so the mark will tie in the restaurant with the television program. In re Scripps Networks, Inc., Serial No. 77418854 (April 27, 2010) [not precedential].

As to Scripps' television program (last broadcast in 1999), the Board pointed out that Scripps did not claim transferred acquired distinctiveness under Section 2(f). "Therefore, we cannot consider whether, because of any consumer perception of CLUB DANCE as a source-identifier for a television program, CLUB DANCE has acquired distinctiveness as a trademark for restaurant and bar services."

The Board then ominously noted the "thin line" between suggestiveness and mere descriptiveness. But it concluded that CLUB DANCE falls on the suggestiveness side of the line.

The Board agreed with Scripps' assertion that restaurants "do not usually offer a place to dance." [But sometimes they do, don't they? - ed.] And although nightclubs generally include bar services and often offer food, "they are not the same as restaurants." The Examining Attorney's evidence regarding establishments that offer food and dancing did not convince the board that this is a characteristic of restaurant and bar services as opposed to nightclubs.

In addition, the mark CLUB DANCE has "an unusual syntax, since the familiar term is 'dance club.'"

Finally, the Board noted that any doubt on mere descriptiveness must be resolved in favor of the applicant.

And so the Board reversed the refusal.

TTABlog comment: If you saw a sign that said CLUB DANCE on a restaurant, would you think it offered dancing? I believe so. If not merely descriptive, is CLUB DANCE deceptively misdescriptive?

Perhaps better evidence on the part of the PTO would have brought about a different result.

Text Copyright John L. Welch 2010.


At 11:15 AM, Anonymous Anonymous said...

I think the reversal of the words and unusual syntax does give it a different connotation. Too often, the office takes the words apart and says DANCE and CLUB are descriptive and disclaimable, therefore the term is descriptive. I think they got it right here, but good luck trying to stop third parties, so what does a registration really get them, except maybe in five years when they can become incontestable.

At 4:00 AM, Anonymous Mark Lebow said...

Whoever made the first comment is spot on. Ditto.


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