Wednesday, December 18, 2013

TTAB Affirms Failure-to-Function Refusal of 668-Word "Mark" for Printed Matter

In 2001, pro se applicant Prema Jyothi Light filed an application to register the alleged mark shown below for cartoon strips, storybooks, and other printed matter, but Examining Attorney Linda Lavache refused registration, maintaining that the applied-for matter fails to function as a mark under Sections 1, 2 and 45 of the Trademark Act. Furthermore, the PTO refused to accept several proposed amendments to the drawing because they each constitute a material alteration of the proposed mark shown in the original drawing. The Board affirmed the refusals. In re Prema Jyothi Light, Serial No. 76293326 (December 13, 2013) [not precedential].

(click on photo for larger picture)

The proposed mark comprises the wording SHIMMERING BALLERINAS & DANCERS CHARACTER COLLECTION on the top left, surrounded by columns of what appear to be names of various characters. [By my count, 668 words in all, counting an ampersand as a word - ed.].

Failure to function: The critical question was whether consumers would view the applied-for mark as a source indicator. The Board reviewed the specimens of use, as well as other record evidence, and concluded that the proposed mark fails to function as a trademark.

The Board agreed with the examining attorney that "because of the sheer number and visual display of the words in the applied-for matter, it faces a significantly more difficult task in being perceived as a unitary trademark." The Board contrasted this case with the TWOALLBEEF-PATTIESSPECIALSAUCELETTUCECHEESEPICKLESONIONSONASESAMESEEDBUN  case, in which McDonald's provided sufficient evidence to establish acquired distinctiveness. In re McDonald’s Corporation, 199 USPQ 490 (TTAB 1978). [hyphenation added to the mark - ed.].

[W]e do not, in this case, have the same type of persuasive evidence that would allow us to reverse the examining attorney’s refusal. We also find that the much greater number of words in applicant’s proposed mark, as compared to the list of ingredients in the McDonald’s case, presents an even higher hurdle for applicant to overcome when trying to establish that her proposed mark would be perceived as such. In short, the quantity of information in the proposed mark is simply too great to be a useful means for consumers to differentiate one source from another.

The original specimens of use depicted the applied-for mark on pages from what applicant called playbooks." But rather than appearing to be a trademark identifying the source of the goods, the proposed mark merely identifies what appears to be a title (perhaps of a story) and a list of fanciful, fictional names for dancers. Applicant's substitute specimens, in which a "TM" symbol appears adjacent "Shimmering Ballerinas," likewise failed to show trademark use. At best, the TM symbol suggested that "Shimmering Ballerinas" is the trademark.

In sum, the Board agreed with the examining attorney that the applied-for mark, as used on the specimens, "is merely informational and will be perceived as such. Applicant's claim of acquired distinctiveness, based only on here alleged long use, must fail because the applied-for mark was never perceived as a trademark.

Material alteration of the applied-for mark: On several occasions, the examining attorney suggested that applicant amend the application drawing to delete all of the wording except SHIMMERING BALLERINAS & DANCERS, but applicant refused to do so. Instead, on three occasions, applicant proposed a new drawing of the mark. Rule 2.72(a)(2) provides that a Section 1(a) applicant may amend the drawing of the mark if "[t]he proposed amendment does not materially alter the mark."

The Board found that each of three proposed amendments to the drawing would materially alter the mark. The first would remove the columns of names and display them in a radial manner with SHIMMERING BALLERINAS & DANCERS in the middle. The second would remove the stylization and the columns and would present the mark as a single standard character mark. The third attempt depicted the same matter shown in the original drawing with the addition of a colorful background, stars, and rays of light emanating from the top left corner. [Note: the amended drawings would not have solved the failure-to-function problem - ed.].

Therefore, the Board affirmed the examining attorney's refusal to accept the amended drawings.

Read comments and post your comment here.

TTABlog note: This applicant apparently had no clue as to what she was doing. Even if she were able to register this 668-word mark, what exactly would be the scope of protection? Minuscule, at best.

Text Copyright John L. Welch 2013.


At 9:22 AM, Anonymous Anonymous said...


Application Filing Date
Jul. 31, 2001

(is this the record for pendency of a mark not involved in an inter-partes proceeding?)

At 10:54 AM, Anonymous Erik Pelton said...

The application was filed in 2001, and the case on appeal since 2005. While the USPTO is very helpful and considerate of pro se applicants, they need additional ways to prevent applications such as this one from becoming a huge drain on resources.

At 12:14 PM, Anonymous Anonymous said...

I was going to say that this is the progression of the "Legalzoom" generation of applications but 2001 might precede Legalzoom.

At 2:23 PM, Anonymous Anonymous said...

I think the Board missed an important opportunity to distinguish trademark law from copyright law here.


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