Wednesday, September 19, 2012

Precedential No. 31: TTAB Affirms Mere Descriptiveness Refusal of "CENTER OF SCIENCE AND INDUSTRY"

In a straightforward ruling, the Board affirmed a Section 2(e)(1) refusal to register CENTER OF SCIENCE AND INDUSTRY, finding it to be merely descriptive of "education and entertainment services, namely, operating a museum and conducting workshops, programs and demonstrations in the field of science," and lacking in acquired distinctiveness. And despite 35 years of use of the alleged mark, millions of museum visitors, and the receipt of national awards, Applicant failed to prove its claim of acquired distinctiveness under Section 2(f). In re Franklin County Historical Society, 104 U.S.P.Q.2d 1085 (TTAB 2012) [precedential].

Mere Descriptiveness: Examining Attorney Jason Paul Blair relied on dictionary definitions of the constituent words, on third-party usage of the same or similar names for museum services, and on other uses of the individual words in connection with those services.

The Board found that the dictionary evidence showed the applied-for mark to be descriptive, and the third-party websites established that there is a competitive need to use those words. Although Applicant's identification of goods is broader than "museum services," a descriptiveness refusal is proper if the mark is descriptive of any of the identified services.

Here, it is clear that consumers would understand the applied-for mark to convey information about Applicant's services: namely, "a place where services that concern science and industry are provided."

Acquired Distinctiveness: The Board agreed with the PTO that CENTER OF SCIENCE AND INDUSTRY is highly descriptive of Applicant's services, since it "directly and easily" conveys information about the services. Of course, the greater the descriptiveness of a term, the greater the evidentiary showing needed to establish acquired distinctiveness.

Applicant relied on a declaration from its director of marketing stating that the mark has been in use for 35 years, and on the facts that the museum has received 20 million visitors from all 50 states, has garnered media attention, features "rare artifacts," and has collected national awards.

The Examining Attorney argued that the Applicant is not known by the proposed mark, but rather by the acronym COSI, pointing out that in none of the materials submitted by Applicant does the proposed mark appear without the acronym. Even on Applicant's own website, the term COSI appears prominently, while the full term CENTER OF SCIENCE AND INDUSTRY appears only once, and in small type under the larger letters COSI.

The Board therefore concluded Applicant's evidence of acquired distinctiveness was insufficient, and it affirmed the refusal to register.

Text Copyright John L. Welch 2012.


At 9:53 AM, Anonymous Anonymous said...

Overall, the mark seemed pretty descriptive though 35 years of substantially exclusive use seems like a pretty decent case for 2f.

The one issue that sticks with me in this decision is the Board stating that consumers wouldn't recognize CENTER OF SCIENCE AND INDUSTRY alone because Applicant doesn't use it that way. But how can that be reconciled with the Examiner accepting the AAU? I suppose that's not technically on appeal but it seems quite unfair for the Office to say on the one hand that the specimen demonstrates that a mark is in use (and that consumers would recognize it) but then on the other hand to state that it's only ever used with COSI and therefore, consumers wouldn't recognize it.

Pretty close call on this one but while the tie goes to the runner on 2e1, the Office gets the win on 2f and that might be the right decision. Board didn't seem pleased with Applicant's (lack of) evidence and the Examiner might have even been able to exclude the screenshots for lack of a URL and date - pretty clear reminder to load those Response with good evidence, especially when an appeal is a possibility.


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