Tuesday, January 28, 2014

What is the Likelihood of TTAB Affirmance of a Section 2(e) Refusal?

I reviewed the TTAB's FOIA page in an attempt to determine, or at least estimate, the percentage of various Section 2(e) refusals that are affirmed by the Board in calendar year 2013. I counted 167 such decisions, of which 148 were Section 2(e)(1) mere descriptiveness rulings. Of the remaining 19, 4 were Section 2(e)(1) deceptively misdescriptive refusals, and the other 15 were scattered among Sections 2(e)(2) (primarily geographically descriptive), 2(e)(3) (primarily geographically deceptively misdescriptive), 2(e)(4) (primarily merely a surname), and 2(e)(5) (functional), as discussed below.

Starting with the Section 2(e)(1) mere descriptiveness refusals, the Board affirmed 126 out of 148, for an affirmance rate of 85.1 percent. Only one of these decision was precedential: In re Positec Group Limited, 108 USPQ2d 1161 (TTAB 2013) [precedential], deeming the mark SUPERJAWS to be merely descriptive of machine tools and hand tools, including jaws and metal vice jaws. [TTABlogged here].

All four of the Section 2(e)(1) deceptively misdescriptive cases were affirmed (WHITE JASMINE, AOP, GREEN SEAL, and BR MONOGRAM). The first two were precedential decisions: In re White Jasmine LLC, 106 USPQ2d 1385 (TTAB 2013) [TTABlogged here] and In re AOP LLC, 107 USPQ2d 1644 (TTAB 2013) [TTABlogged here].

Of the five refusals under Section 2(e)(2), geographical descriptiveness, only one was affirmed (NEWBRIDGE HOME). The four that were reversed were ASHBURN, ACHOUFFE, BLUE RIDGE, and KAPALUA. [Perhaps the PTO examining corps could use a refresher course on Section 2(e)(2)?]

The single Section 2(e)(3) refusal (primarily geographically deceptively misdescriptive) was reversed (SW3 UK).

Of the three Section 2(e)(4) surname refusals, two were affirmed (MERLO'S and MOTT'S) and one was reversed (JAKEMANS).

Finally, four of the six Section 2(e)(5) refusals were affirmed (clear plastic game package, black packaging for floral arrangements, peppermint flavor for nitroglycerin spray, and pet food container). The two reversals involved a woven leather pattern for handbags and the sound of three clicks for eyeglass frames. Three of the 2(e)(5) decisions were precedential: black floral packaging in In re Florists’ Transworld Delivery, Inc., 106 USPQ2d 1784 (TTAB 2013) [TTABlogged here]; peppermint flavor for nitroglycerin in In re Pohl-Boskamp GmbH & Co. KG, 106 USPQ2d 1042 (TTAB 2013) [TTABlogged here]; and the pet food container in In re Mars, Inc.,  105 USPQ2d 1859 (TTAB 2013) [TTABlogged here].

Read comments and post your comment here.

TTABlog note: Last year, the mere descriptiveness affirmance rate was about 82%. For last year's estimates, go here

Text copyright John L. Welch 2014.


At 4:43 PM, Anonymous Rob said...

Speaking of FOIA disclosures, why has it been well over a decade since the PTO released any of the Director's decisions on trademark petition?

At 2:06 PM, Anonymous Clifford D. Hyra said...

The ASHBURN and BLUE RIDGE reversals concerned the same Examining Attorney and Applicant.

I recently appealed a refusal based on deceptive misdescriptiveness, but after the brief was filed it was sent on to publications. That seems to happen a lot, which seems very important when Applicants are deciding whether to appeal (WWHA?). Sure there's an 80% affirmance rate, but if 50% of appealed cases are allowed before going to a decision, in reality you have a base 60% success rate for appeal. I doubt the pre-decision allowance rate is 50%, but 20-30% would not surprise me.


Post a Comment

<< Home