Test Your TTAB Judge-Ability: Is "MONSTER" Merely Descriptive of Automotive Accessories?
Monster Cable filed an ITU application to register the mark MONSTER for various automotive and truck accessories, including suspension struts and truck bed liners, but Examining Attorney Steven W. Jackson found the mark to be merely descriptive and refused registration under Section 2(e)(1). Application argued (1) that just because there is a vehicle called a "monster truck" does not mean that "monster" is descriptive of automotive accessories, (2) that "monster" per se has no direct relationship with automotive accessories, and (3) because average consumers do not drive monster trucks, the word "monster" does not directly describe automotive accessories. How would you rule? In re Monster Cable Products, Inc., Serial No. 78348832 (January 24, 2011) [not precedential].
The Board affirmed the refusal in a terse, 10-page decision.
It pointed out that whether a term is descriptive or not is determined in the context of the goods, not in a vacuum: the question is not whether one presented with the mark could guess what the goods are, but whether someone who knows what the goods are will immediately understand the mark as conveying information about the goods.
The Board observed once again that a mark need not describe all the goods in the application for the subject mark to be merely descriptive: even one will do. Here, the application includes "suspension struts," and consumers "will immediately perceive MONSTER brand suspension struts as being for monster trucks." Likewise for truck steps and truck bed liners.
And so the Board affirmed the refusal.
TTABlog comment: I think this case could have been added to the WYHA (Would You Have Appealed?) folder, don't you?
Text Copyright John L. Welch 2011.
posted by John L. Welch @ 2/10/2011
6 comments
6 Comments:
I find it interesting that the Board is quoting from dictionary.com and wikipedia. In patents, such quotations are not allowed (in theory), because those sources are not peer-reviewed and as such are considered not reliable. Is there a different standard in trademarks?
Isn't this applicant also frequently in the WYHO (would you have opposed) folder?
TMEP 710.01-
Given its inherent limitations, any information obtained from Wikipedia® should be treated as having limited probative value. If the examining attorney relies upon Wikipedia® evidence and makes it of record, then additional supportive and corroborative evidence from other sources should also be made of record, especially when issuing final actions.
Also, so long as applicant has opportunity to rebut Wiki evidence, it's given some value. Here, clearly, the ebay and other retail websites were the nails in the coffin for Monster.
I noticed the EA offered applicant Supplemental registration (pending AAU, of course), though I would argue this appears generic under Central Sprinkler - "ATTIC" for sprinklers. Would've been interesting to see this bully have to swallow a generic refusal for its famed MONSTER family of marks/products.
A Bully gets beat.
They should have been more careful with the description, but will they really ever sell this stuff?
Monster is in the top 3 of TM bullies, if not the clear top 1.
What if the products were not for "monster" trucks, but were for just regular pick-up trucks you could buy from a Chevy dealer? Would the mark have been considered deceptive or deceptively misdescriptive? Any thoughts?
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