Thursday, March 24, 2011

Test Your TTAB Judge-Ability: Must OUTFITTERS Be Disclaimed for Retail Cosmetics and Jewelry Services?

Applicant Retail Royalty refused to bow down to the PTO's demand that it disclaim the word OUTFITTERS in its application to register the marks AMERICAN EAGLE OUTFITTERS and the design mark shown below, for retail store services in the field of fragrances, cosmetics, personal care products, and jewelry. Applicant had previously disclaimed OUTFITTERS in several of its registration, including registrations for soap, perfume, and jewelry. In re Retail Royalty Company, Serial Nos. 77791067 and 77979784 (March 9, 2011) [not precedential].

The numerous proffered dictionary definitions were consistent in defining "outfitter" as "a shop that provides equipment for a specific purpose." The term is disclaimed in numerous third-party registrations, mostly for clothing and footwear, but not disclaimed in several others for those goods. Applicant did not contest that "outfitter" is descriptive for a retailer that deals in clothing, equipment, supplies and services for camping and outdoor activities.

The Board concluded that OUTFITTERS, as applied to the goods at issue, "is just suggestive." It rejected the PTO's feeble argument that "soap and sunscreen are personal care products that have definite utility in supplies for outdoor activities and camping," and that "watches are a kind of jewelry useful in many types of activities like camping."

The Examining Attorney further argued that "applicant does not operate different retail stores, some of which operate as an outfitter of clothing and outdoor goods and some of which feature, fragrances, cosmetics, personal care products, and jewelry." The Board was unmoved: "Be that as it may, mere descriptiveness is determined on the basis of the specific identification of goods and/or services set forth in an application."

The Board also pooh-poohed Applicant's earlier disclaimers because "[t]rademark rights are not static, that is, such rights do not remain constant over time." The perception of "outfitters" has varied over time, and the dictionary definitions of record demonstrates that the term is only suggestive here. Moreover, each case must be decided on its own facts and the Board is not bound by prior actions of examining attorneys. Applicant's prior disclaimers are "merely illustrative of shade and tone in the total picture confronting the decision maker."

And so the Board reversed the refusals to register.

TTABlog comment: Well, what do you think? Is American Eagle an "outfitter" or not? Just how much can it do to stop other outfitters from using the term?

Text Copyright John L. Welch 2011.


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