Monday, May 20, 2013

WYHA? TTAB Affirms Mere Descriptiveness Refusal of PADPIVOT for Pad Computer Stands

Examining Attorney Alice Benmaman issued a Section 2(e)(1) refusal of the mark PADPIVOT, deeming it merely descriptive of a "[s]tand specially adapted for holding tablet computers, PC tablets, pad computers, digital book readers and electronic book readers." She relied on dictionary definitions of "pad" and "pivot," and on a photograph of Applicant's goods taken from his website (shown below). Would you have appealed? In re Bernie Graham, Serial No. 85255894 (May 10, 2013) [not precedential].

The Examining Attorney concluded that the combination of "pad" and "pivot" is descriptive of a "stand specially adapted for holding ... pad computers...."

Applicant argued that because a certain retailer required a label change to add the phrase "portable table stand," the subject mark was not sufficient "to describe the nature of the device so as to entice sales." He asserted that "[r]easonable consumers without knowledge of the PADPIVOT mark and goods were unable to understand what the goods were with the PADPIVOT mark applied directly thereto without additional language that would qualify as “merely descriptive”'to provide such information to consumer."

The Board disagreed. First, the retailer did not say that consumers were unable to understand "what the goods were," but only that it wanted to emphasize that the goods function as a stand. Secondly, the determination of descriptiveness is not madde in a vacuum, but in relation to the goods in question. Moreover, whether a mark will "entice sales" is wholly irrelevant to the issue at hand.

Applicant next argued that various dictionaries do not include a definition of "pad" that applies to his product. However, Applicant refers to a "pad computer" in its identification of goods, and the Examining Attorney supplied a pertinent definition from an on-line dictionary. The picture from Applicant's website shows a ball-and-socket joint that would allow a pad computer to "pivot."

Finally, the concatenation of "pad" and "pivot" provides no new meaning to the two words.

And so the Board affirmed the refusal.

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Text Copyright John L. Welch 2013.


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