Monday, November 10, 2014

WYHA? "CURBSIDE EXPRESS" Merely Descriptive of Grocery Delivery Services, Says TTAB

As a rule of thumb, if an opinion in a Section 2(e)(1) appeal is seven pages or less, the chances are very high that it's a "WYHA?" In this one, the USPTO refused registration of the mark CURBSIDE EXPRESS, deeming it merely descriptive of "retail and on-line grocery store services featuring home delivery." The Board's opinion is just over six pages. Looking at the record evidence, would you have appealed? In re Phoenix Intangibles Holding Company, Serial No. 85849629 (November 7, 2014) [not precedential].

Examining Attorney Marilyn D. Izzi relied on website evidence referring to "curbside + liftgate" and "curbside delivery" as services in which items are transported to the curb of the customer, and the customer is then responsible for unloading the item from the back of the truck and carrying it into his or her home or office. Alternatively, the item is unloaded by the deliverer and deposited on the curb.

A dictionary definition of "express" not surprisingly indicated that it means "to send something using a service that will deliver it very quickly." And third-party registrations with disclaimers of "express" confirmed that descriptive meaning.

Considering the mark as a whole, the Board had no doubt that "the mark would immediately convey to customers the information that a feature of Applicant’s service is the availability of a speedy delivery of the purchased groceries to the customer’s home (without the promise that they would actually be carried directly into the home)."

And so the Board affirmed the refusal.

Read comments and post your comment here

TTABlog note: Well, would you have?

Text Copyright John L. Welch 2014.


At 3:28 PM, Anonymous Mark Graham, Esq. said...

Is there a new paradigm in USPTO practice on the Trademark side? It seems as if every mark is presumed to not be entitled to registration, either on descriptiveness or LOC grounds or, paradoxically, both.
I have a couple of applications where the clients' marks stand refused under LOC grounds based on subsisting registrations of marks owned by different entities, which should be logically impossible (if the Register is in order, as it is "presumed" to be), and simultaneously also as being too descriptive to be registerable.
What the HECK is going on? I've been doing this 30 years, and I can no longer give a client a reliable opinion on the registrability of its mark, unless I want to just say it will probably refused and I can't really say if many thousands of dollars in prosecutions fees, etc., will be likely to be successful.
M Graham, Esq.

At 4:24 PM, Anonymous Becky Lessard said...

Phoenix Intangibles holds a registration for CURBSIDE EXPRESS on the Supplemental Register - they decided to amend from the Principal the Supplemental Register after receiving a 2(e)(1) refusal (before filing the CURBSIDE EXPRESS application just decided upon).

It appears Phoenix Intangibles took a different approach for this CURBSIDE EXPRESS application - with frustrating results.


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