Friday, October 28, 2011

Test Your TTAB Judge-Ability: Is MEGA-SAMPLER Merely Descriptive of Cigars?

Cigars International, Inc. sought to register the mark MEGA-SAMPLER for cigars, but the Examining Attorney refused registration on the ground of mere descriptiveness. Applicant's goods feature, according to the Examining Attorney, "a large selection of representative cigars." Applicant argued that the "mega" prefix is ambiguous and therefore that the mark is, at worst, suggestive. How would you rule? In re Cigars International, Inc., Serial No. 77262426 (September 14, 2011) [not precedential].

The question for the Board was "whether the term MEGA-SAMPLER conveys information about a significant feature of applicant's goods with the immediacy required by the Trademark Act."

The Examining Attorney submitted webpages showing use of the term "Mega-Sampler" by online retailers, but the Board noted that most of them referred to Applicant's usage of its mark rather than being merely descriptive uses by third parties, and others used the term "in the form of a source indicator." The record did reflect use of "Mega-Sampler" by two of Applicant's competitors, but Applicant asserted that those were infringements that it "continues to pursue."

Applicant also submitted third-party registrations from various fields for marks containing the "mega-" prefix, urging that they "reflect more than a dozen years of Office practice apparently treating composite marks having a 'MEGA-' prefix as inherently distinctive." In addition, Applicant pointed to several non-precedential TTAB rulings in which the TTAB explicitly referred to the MEGA- prefix as being suggestive.

The Board concluded that MEGA-SAMPLER is suggestive, not merely descriptive. The prefix "mega-" suggests a relatively large number of cigars, and Applicant usually includes fifteen to twenty-five cigars.

[B]ased upon all the evidence in this record, we agree with applicant that whatever the attenuated connections between the connotations of the component words and applicant’s goods, the information conveyed herein is not immediate enough to sustain a descriptiveness refusal. Applicant admits it may be somewhat laudatory, serve as a boast, an exaggeration, a swaggering or whimsical use of a common English-language prefix, but that applicant coined this moniker and with few exceptions has successfully policed usage of this term in its field of competition.

The Board agreed with Applicant that the mark "seems too ambiguous to cause consumers to associate that phrase with a feature or characteristic of appellant's cigars." There is no proof that others need to use this term in order to compete, and it does not immediately convey knowledge about a feature of the goods.

And so the Board reversed the refusal.

TTABlog comment: Would BIG SAMPLER be merely descriptive? I think so. "Mega-" means big to me. So I think it's merely descriptive. It immediately tells me that there are a lot of cigars, relatively speaking, in the sampler. I.e., it's not a mini-sampler.

Text Copyright John L. Welch 2011.


At 9:18 AM, Anonymous Anonymous said...

In my view, it is not even trademark use, but informative.

At 10:03 AM, Anonymous Bob Klein said...

I think it if tries to go after the other users of mega-sampler they may find themselves faced with survey evidence that mega-sampler in the context of the goods is merely descriptive.

At 11:48 AM, Anonymous Anonymous said...

There are 3516 marks that contain the word MEGA, including MEGA MILLIONS for the Illinois Department of Revenue.

There are 41 that contain a disclaimer of MEGA.

So more often than not it appears to be accepted as a trademark.

At 12:15 PM, Anonymous Anonymous said...

I think this is a case where common usage over time requires a reversal in previous examination practice and Board rulings, assuming more evidence of this common and arguably descriptive use exists than did in the Board's previous cases. I'm surprised that evidence was not presently available to the examiner.

I'm agreeing with Bob Klein that I doubt a thorough gathering of present evidence would support distinctiveness and sufficient exclusive use to sustain enforcing exclusive rights to this claimed mark.

At 12:21 PM, Blogger John L. Welch said...

The last paragraph of the opinion suggests that a different outcome might ensue on a different record:

"Of course, in the event that applicant’s competitors need to use this combined term to describe their own goods in this field, they will be free to oppose registration to applicant. If they could create a record that establishes that this term has mere descriptive significance in
connection with goods similar to those of applicant, such an opposition would be sustained."


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