Tuesday, May 27, 2014

Test Your TTAB Judge-Ability: Is LINKED SYSTEM Merely Descriptive of Power Tools With Interchangeable Batteries?

The PTO refused registration of the mark LINKED SYSTEM for power tools and battery packs, finding the mark merely descriptive of the goods under Section 2(e)(1). The Examining Attorney maintained that applicant’s "system of power tools is connected – linked – because multiple tools can be using the same interchangeable battery" and "are connected and recharged with a single recharging system." What do you think? In re The Black & Decker Corporation, Serial No. 85857683 (May 22, 2014) [not precedential].

B&D pointed out that just because its tools use a common battery or charger does not make them "linked," and that no one else refers to products with interchangeable batteries as "linked" or as a "linked system." Referring to the dictionary definitions submitted by the PTO, B&D urged that the products are not "linked" because they are not connected together, and they do not comprise a "system" because they do not form a network to serve a common purpose.

The Board ruled in favor of B&D, concluding that the PTO had not established its case. Noting that there is a fine line between suggestiveness and mere descriptiveness, the Board found that LINKED SYSTEM falls on the suggestive side. The mark does not immediately describe with any particularity a characteristic or feature of the goods. At most it suggests that the goods are connected, without saying how.

It is not fatal that a mark conveys some information in addition to indicating the source of the goods or services. One may be informed by suggestion as well as by description. In re Reynolds Metals Company, 480 F.2d 902, 178 USPQ 296 (CCPA 1973). The mark at issue, LINKED SYSTEM, is typical of so many marks that consumers encounter in the marketplace: a highly suggestive mark that tells consumers something general about the product, without being specific or immediately telling consumers anything with a degree of particularity.

Although the Board had some concerns about the descriptiveness of the mark, the record evidence did not support the refusal. Observing that any doubt regarding descriptiveness must be resolved in favor of the applicant, it reversed the refusal.

Read comments and post your comment here.

TTABlog note:  So how did you do?

Text Copyright John L. Welch 2014.


At 8:02 AM, Anonymous Gene Bolmarcich said...

I don't know if I have ever more quickly applied the "seat of the pants" test to a 2(e) issue. This one was not even in the ballpark. What a shame that an Examining Attorney would even consider that this mark is descriptive.

At 11:35 AM, Anonymous Anonymous said...

I disagree with the decision.

At 5:46 PM, Anonymous Gene Bolmarcich said...

I think it's very wrong for the Board to speculate on what they might do on a different record or in an opposition proceeding. They do this often. It serves no purpose and in my opinion is very inappropriate for a "court" to do this.

At 12:44 PM, Blogger TMAttorneyHeller said...

I agreed with the Board.


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