Wednesday, June 19, 2013

Test Your TTAB Judge-Ability: Is "SW3 UK" Geographically Deceptively Misdescriptive of Clothing?

The PTO refused registration of the mark SW3 UK & Design, shown below, for women's clothing, deeming it to be primarily geographically deceptively misdescriptive under Section 2(e)(3). Applicant Lankshear admitted that SW3 is a London postal code for the Chelsea district, but denied that relevant consumers would know that fact. How do you think this came out? In re John Lankshear, Serial No. 85239139 (June 6, 2013) [not precedential].

To support a Section 2(e)(3) refusal, the PTO must first show that the place named in the mark is generally known to relevant consumers, and not remote or obscure. Purchasers must readily recognize the designation as the name of a geographical place, and not merely as an arbitrary term being used as a trademark.

The Examining Attorney maintained that the designation SW3 is synonymous with the Chelsea District of London, famous for its shopping and designer clothing boutiques. Therefore, he asserted, consumers would assume that Applicant's goods come from England. He relied on various Internet pages referring to various stores within the SW3 postal area, and to a Wikipedia entry referring to "Swinging Chelsea."

Applicant argued that the general purchasing public is not aware of the fact that SW3 refers to the Chelsea District of London. Furthermore, he pointed to a several registered marks that refer to zip codes or postal codes (SW2, SW3, SW4, BEVERLY HILLS 91210 & design, DR. 90210, and 33139).

The Board focused on the words SW3 and UK, observing that the crown design and the disclaimed word BESPOKE have "less probative significance" in the Section 2(e)(3) analysis.

There was no dispute that SW3 connotes a geographical location. The question was "how many people in the United States would know the geographical significance of SW3? That is, how many American consumers would know that SW3 identifies the district of Chelsea in particular?"

The Board found the PTO's evidence "inadequate to show that an average American consumer purchasing women's clothing would, upon seeing applicant's mark, conclude that it relates to a neighborhood in London, namely, Chelsea." Even if consumers recognized that SW3 is a British postal code, "there is little evidence that they would recognize it as the code for Chelsea." The designation UK, appearing in very small letters, "does nothing to aid prospective consumers in identifying Chelsea." The Board concluded that the geographical significance of SW3 to the average American consumer is so minor or obscure that it must be considered an arbitrary designation for applicant's goods.

Moreover, to the extent that consumers recognize the meaning of SW3, it would connote a "trendy style, viewed more as evoking an attitude of a place. As to the third-party registrations, only one (33139) covered clothing, but the Board saw no reason to deviate from PTO practice of registering such marks, absent a stronger showing by the PTO.

Finally, the Board noted that the evidence was also insufficient to show a goods/place association with Chelsea, i.e., that Chelsea is associated with the production of clothing.

And so the Board reversed the refusal.

Read comments and post your comment here.

TTABlog note: for a collection of Section 2(e)(3) cases, go here.

Text Copyright John L. Welch 2013..


At 11:25 AM, Anonymous Anonymous said...

Looks like the Board completely ignored the deceptively misdescriptive nature of "UK", focusing solely on "SW3".

At 2:51 PM, Blogger NaderAlfie said...

The EA was out of control with that refusal. Good decision and good thinking with the zip code evidence.

At 6:17 PM, Anonymous Anonymous said...

It may have been a goods decision but you need to actually read the decision and look at the evidence before criticizing the EA. He/she has to make a judgement based on the evidence. You might try it.


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