Friday, August 01, 2014

Test Your TTAB Judge-Ability on These Five Section 2(e)(1) Mere Descriptiveness Refusals

By my estimation, somewhere around 80-85% of all Section 2(e)(1) mere descriptiveness refusals that reach the TTAB are affirmed on appeal. Well, here are five appeals that were decided in July 2014. How do you think they came out? Do you see any WYHAs here?

VISUAL MUSIC CONCEPTS for "Printed music books containing songs from the public domain printed in an oversized layout for visual learning; Flash cards featuring music notes to reinforce note recognition, printed in a oversized layout for visual learning; Stickers for piano keys made out vinyl static cling sheets and printed in an oversized layout for visual learning." In re Maria C. LaMon, Serial No. 76709973 (July 30, 2014) [not precedential].

SCREEN EXTEND for "A slide mechanism with a pair of channels on opposite ends that are positioned on the backside of a mobile device as a feature of the mobile device; the mechanism on the backside of the mobile device stows and deploys a hidden display screen to and from the backside of the wireless mobile device." In re Internet Promise Group LLC, Serial No. 85690175 (July 29, 2014) [not precedential].

DIGITALPREP for "dental software for automatically generating an electronic model of a cutting guide positionable on a patient’s teeth and marking margins on the electronic model of a patient’s teeth." In re B & D Dental Corp., Serial No. 85591438 (July 25, 2014) [not precedential].

TASTY FISH CO. for seafood [FISH CO. disclaimed]. In re Tasty Fish Co., LLC, Serial No. 85740939 (July 22, 2014) [not precedential].

LOCALSHOPPER for "advertising and marketing services, namely, promoting the goods and services of others through mobile phone marketing communications, website advertising and mobile phone applications." In re Triad Digital Media, LLC, Serial No. 85631785 (July 17, 2014) [not precedential].

Read comments and post your comment here.

TTABlog note:  So how did you do? Here's a hint: they all came out the same way. Which one is the biggest WYHA?

Text Copyright John L. Welch 2014.


At 9:31 AM, Anonymous Tom Dunn said...

Love these posts, especially on Friday mornings. As for the biggest WYHA, to me it's a close call between TASTY FISH CO and EXTEND SCREEN but I think I have to give it to TASTY FISH CO., even though there is currently pending a TASTY BEVERAGE CO. application for retail sale of beverages where the examiner is requiring a disclaimer of BEVERAGE CO but not of TASTY - go figure.

At 4:42 PM, Anonymous Doug said...

Looks like the goods id and prosecution doomed the first three. For instance, "visual" probably did not need to be used in the goods ID of the somewhat incongruous VISUAL MUSIC.
The $599 appellate package was unsuccessfully used on VISUAL MUSIC and TASTY FISH CO.

At 9:21 PM, Blogger Pamela Chestek said...

I would have gone with LocalShopper as the most descriptive—had I been asked to file it, I would have counseled about a possible generic refusal.

And Tasty Beverage Co. is a block away from me! I'm over there all the time ...

At 10:55 AM, Blogger Pamela Chestek said...

Fascinating. The TASTY BEVERAGE CO. application Tom pointed out has a new office action, dated August 1, requiring disclaimer of the full phrase TASTY BEVERAGE CO.

At 11:00 AM, Blogger Pamela Chestek said...

There is, incidentally, a 7th Circuit decision that held that "tasty" was not generic for salad dressing. Henri's Food Products Co. v. Tasty Snacks, Inc., 817 F.2d 1303, 2 U.S.P.Q.2d 1856 (7th Cir. 1987).


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