Friday, March 11, 2011

TTAB Affirms Refusal of BENCH VAC for Vacuum Cleaners Due to Applicant's Failure to Comply with Request for Information

In this oddball case, the Board affirmed a refusal to register the mark BENCH VAC for "vacuum cleaners" because Applicant failed to comply with a Rule 2.61(b) requirement that it provide information about the goods. However, the Board reversed a Section 2(e)(1) mere descriptiveness refusal because the Examining Attorney's evidence (two dictionary definitions) was insufficient. In re Shop Vac Corporation, Serial No. 77542156 (February 28, 2011) [not precedential].

Mere descriptiveness: The Examining Attorney contended that because Applicant did not respond to his request for information, "it is reasonable to infer" that the goods comprise vacuum cleaners for use in connection with a worktable or bench.

Not so fast, said the Board. It is inappropriate for an Examining Attorney to speculate about the goods in an ITU application. Applicant stated that its goods might be used on a bench, but it argued that "the place where a product might be used is not an important enough concern in the purchasing decision to warrant a descriptiveness rejection."

The Board sided with the Applicant because there was no evidence that BENCH would be understood by relevant consumers to describe a significant aspect of Applicant's goods.

Request for Information: Applicant failed to respond to the information request until its reply brief, where it stated merely that it has no marketing materials. Applicant did not explain its failure to provide information, but essentially argued that the question should be deferred until a statement of use is submitted. The Board said not so fast.

If applicant truly has no information about the exact nature of its vacuum cleaner because, for example, it is still in the design stage, applicant should have so stated. On the one hand, applicant’s goods are identified as "vacuum cleaners," which encompasses all types of vacuum cleaners for all types of uses. However, information about whether applicant’s vacuum cleaners are intended or designed for use in a workshop environment and/or on or in connection with a workbench is quite relevant to the question of descriptiveness.

And so the Board affirmed the Rule 2.61(b) refusal but reversed the Section 2(e)(1) refusal.

TTABlog comment: Now why would Applicant want to call its product BENCH VAC? Why did it choose the word BENCH? Maybe in honor of a certain Hall of Fame baseball catcher?

Text Copyright John L. Welch 2011.


At 9:54 AM, Anonymous Anonymous said...

When I was examining, my manager read me the riot act for using a needless requirement for information and I think there need to be standards here too. Particularly with a descriptiveness refusal, the Office carries the burden and shouldn't be able to discharge that with a requirement for information which basically states: Applicant will confirm that its mark is descriptive.

There's a wealth of internet evidence out there and if between google, wikipedia, amazon, acronymfinder, and the applicant's website, the Examiner cannot find support for the refusal, maybe it's not well placed.

At 2:41 PM, Anonymous Anonymous said...

When I was examining, we were told to assume marks were descriptive and to make the information requirement where we felt it was necessary. I think this makes sense, a product might be so new, that by the time a mark is approved for registration, the marked has commonly used as a descriptor, and then the company can become a trademark bully, because third party users don't have the $$$ to pony up for a cancellation. Here, a quick search for bench vaccum reveals that power tool companies, e.g.: make bench vacuums for cleaning up tool benches. For the consumers of tool benches, BENCH VAC means something...something descriptive. Here, is the Board saying that the Examining Attorney should have issued the requirement, and then gone final on the requirement, and then the Applicant would appeal it? I think attaching evidence of third party usage of bench vacuum would be enough for 2(e)(1). Here, it looks like the examiner slept the possible 2(e)(1) in the inital office action, and then was prodded by the manager to issue the 2(e)(1) in the second office action. I think if he had included third party usage of bench vacuum the Board would have sustained the 2(e)(1).


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