Thursday, January 06, 2011

Test Your TTAB Judge-Ability: Must "SERVICE CREW" be Disclaimed for Retail Store Services?

When Sears sought to register the mark SEARS BLUE SERVICE CREW in standard character form, for "retail department store services; retail store services featuring appliances, electronics, lawn and garden equipment," the Examining Attorney required a disclaimer of SERVICE CREW. The Board rendered a split decision. What do you think? In re Sears Brands, LLC, Serial No. 77558337 (December 20, 2010) [not precedential]

Examining Attorney Paul A. Moreno relied on dictionary definitions of the constituent words and on several Internet website pages using the term "service crew." Sears claimed that SERVICE CREW is not merely descriptive and that the entire mark is a unitary phrase or slogan that does not require the disclaimer.

According to Sears, consumers must perform "additional mental steps to conclude what type of assistance may be involved." It urged that the entire mark is unitary, and would be perceived as a whole, because of the rhyming of "blue" and "crew" and because of its incongruity ("what is a blue service crew?").

Finally Sears argued that its mark is a double entendre because the term "Blue Crew" is "identified with fan clubs for teams whose main color is blue": thus the phrase BLUE SERVICE CREW "makes consumers think of an appliance and electronics fan club." [LOL! - ed.]

The panel majority agreed that SERVICE CREW is incongruous because it "does not immediately call to mind retail department store services or its employees." [Is that the right question? Shouldn't the mark be considered in the context of the services, not in the abstract? - ed.] According to the majority, "'Service Crew' is not the usual or normal way that consumers refer to a retail department store or its employees." [But the law says that even if an applicant is the first or only one to use a particular term, the term may still be descriptive - ed.] Recognizing the "thin line separating merely descriptive terms from suggestive terms," the majority therefore concluded that SERVICE CREW is "highly suggestive, not merely descriptive."

As to whether Sears' mark is unitary, the majority observed that it must consider how the average purchaser would view the mark. "This can be best accomplished by looking at the specimen filed with the application," but there was no specimen for this ITU application. So the Board looked to the website evidence and found the logo form of the involved mark depicted above, used in connection with repair and maintenance services.

Although Sears filed to register the mark in standard character form, "because applicant has already used the mark in connection with repair and maintenance services, it is reasonable for us to assume that it will continue to use a similar format in order to take advantage of the goodwill already created by the mark, as well as in the investment in creating the logo and associated advertising." [What a strange statement! Why should the Board assume any such thing? - ed.]

The majority concluded that "[c]onsumers will not break the mark SEARS BLUE SERVICE CREW into its component parts but will regard it as a unitary mark, in part, because the mark rhymes." Noting that registration of the mark "does not create or recognize any rights in the individual elements of the mark apart from the mark as a whole," the Board concluded that a disclaimer of SERVICE CREW is not necessary. [Then why should there ever be a disclaimer requirement for any mark? -ed.]

Judge Wellington dissented, particularly disagreeing with the majority's reliance on the website evidence of use.

TTABlog comment: The Board's approach to disclaimer issues is, to say the least, murky. For another disclaimer decision that is perhaps even stranger, see the Board's recent ruling in In re AmQuip Crane Rental, LLC, Serial No. 77331303 (December 6, 2010) [not precedential], where the Board reversed a requirement for disclaimer of CRANE in the mark AMQUIP THE CRANE PEOPLE & Design for crane rental and leasing services].

Text Copyright John L. Welch 2011.


At 9:33 PM, Anonymous Martin said...

I find the whole disclaimer requirement to be unnecessary, and this case only supports that belief. As you point out, the Board notes that trademark rights are rights to a mark as a whole, not individual components. I seriously doubt any trademark owner of a composite mark that contains descriptive and/or generic wording would try to bring a 2(d) claim based on that descriptive/generic wording alone (and if they did, would probably be laughed out of the room). Everyone already knows the wording is descriptive, why do we need disclaimers to state the obvious? Trademark owners are already protected against registration of unregistrable material by Section 2(e)(1), so worrying about disclaimers in composite marks comprised of registrable and unregistrable matter ends up being a waste of everyone's time and energy.

At 4:24 PM, Anonymous Anonymous said...

@Martin's comments: Foregoing all disclaimers helps no one really. It's like saying "There's no need for me to record a deed or get a survey of my land because everyone knows where my house is and my fenceline is." Like records of physical property, disclaimers are part of what makes the public record clearer on just where property rights begin and end.

If examiners were more rigorous in considering terms and requiring disclaimers, or some applicants more intellectually honest about what portions of marks are truly fair game, then all would benefit by having a more trustworthy record of what things enjoy exclusive rights. And this directly affects other analyses, such as 2(d) and 2(e)(1).

The converse of one of your arguments is equally true: if a disclaimer does not change a mark, and you have no intention of enforcing rights over an unregistrable term by itself, why fight so hard against the requirement?

At 6:23 PM, Anonymous Orrin A. Falby said...

My understanding also is that that a disclaimer does not limit any rights that you have or may eventually gain in the “disclaimed portion” of the mark and I think the statute specifically states that (somebody check me on that). The legislative history on Section 6 of the Act specifically mentions the scenario where an attorney would accept a disclaimer without advising his/her client, so the ramifications of the disclaimer do not appear to too serious because the authors of the Act recognized the need to protect the client rights in such situations. My experience is that most attorneys just accept the disclaimer whether the EA is correct in requiring it.

However, there are situations, such as in the post, when the combination of words that are otherwise descriptive form a unitary term that has its own meaning apart from the individual parts, when the EA would incorrectly insist on a disclaimer. The combination of AMERICAN and LIVING, for example. There is no question that AMERICAN can be geographically descriptive or deceptively misdescriptive, but AMERICAN LIVING takes on a different connotation . . . freedom, apple pie and baseball, among other things. One EA was willing to go through with an appeal on this, but we took advantage of the Consistency Review pilot program that the PTO ran that year and were successful in getting a decision that AMERICAN LIVING is a unitary phrase and therefore, the disclaimer is not required. For what its worth, the mark some how seems stronger without the disclaimer ;-)

I strongly believe that you should not accept disclaimers just because the EA requires them. The client’s interest should be protected in light of the current law. If the disclaimer requirement is deemed to be unnecessary, I think it would increase adversary proceedings because there is an air of confidence that goes with having a registration where none of the elements have been disclaimed.


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