Thursday, September 02, 2010

WYHA? TTAB Affirms Mere Descriptiveness Refusal of "POLYMERLATEX" for Chemicals

Applicant failed to bounce back from a Section 2(e)(1) mere descriptiveness refusal of POLYMERLATEX for various chemicals, sealing agents, and other stuff. The Board affirmed, easily knocking down every argument made by Applicant. Which leads to the question, WYHA? In re PolymerLatex GmbH, Serial No. 79053418 (August 19, 2010) [not precedential].

Examining Attorney Chrisie Brightmire King submitted dictionary, encyclopedia, and Wikipedia entries, scientific journal articles, and excerpts from Applicant's own website, in convincing the Board to conclude that "the term 'Latex' in applicant's mark, POLYMERLATEX, describes the nature of applicant's goods, which are, or include, 'latex' in one form or another, and, at a minimum, the term 'polymer' describes a component of the latex compound." [And I thought I used a lot of commas! - ed.] Moreover, Applicant's own descriptive use of "polymer" and "latex" at its website is "strong evidence that the mark is descriptive."

Several patent applications owned by Dow Chemical and BASF confirmed that polymer emulsions and dispersions like those produced by Applicant are commonly referred to as "polymer latex." The fact that Applicant's largest competitors use the term descriptively "is persuasive evidence that purchasers for applicant's latex would view the term descriptively as well."

As to another patent application using the term descriptively, Applicant argued that it now owns that application and so the application does not show "others using the mark with similar goods." The Board, however, found that this is simply more evidence of Applicant's own descriptive use. [I guess they should have amended the application, huh? - ed.].

Of course, the fact that the term is used as two words instead of in Applicant's compound form is legally insignificant.

Finally, the Board noted Applicant's prior registration for POLYMER LATEX & Design for essentially the same goods, in which registration POLYMER LATEX is disclaimed. Although a disclaimer does not preclude Applicant from obtaining registration for that term, the disclaimer is "further evidence that POLYMERLATEX, the equivalent of POLYMER LATEX, is a descriptive term."

And so the Board affirmed the refusal.

TTABlog comment: These WYHA? cases make me wonder whether I ever should have posted this song. Am I partly to blame for encouraging these quixotic trips to the TTAB?

Text Copyright John L. Welch.


At 10:29 AM, Anonymous Alex Butterman said...

There is one semi-legitimate reason I would have appealed this considering the applicant appears to be foreign and perhaps the mark is not yet in use in the U.S. The appeal may have been a stall tactic to obtain additional time to get a foreign registration or allegation of use for the Supplmental Register. A Supplemental Register registration would not be an option if the mark is not yet in use and a corresponding registration from its home country is not available for a Section 44(e) filing basis.

Of course, this assumes that the mark is still capable of acquiring distinctiveness and is not generic because a generic mark cannot even obtain a Supplemental Register registration.


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