Wednesday, January 06, 2016

TTABlog Test: Is "E GAR" Merely Descriptive of Electronic Cigars?

The USPTO refused to register the mark E GAR, finding it merely descriptive of the goods: "Electronic Cigars, Namely, an electronic device to heat liquids to create a vapor for a human to inhale by mouth being a battery, an LED light source, a mouthpiece, and a cartomizer, in the nature of a compartment for the fluid to be heated, a heating coil, and a vaporizing chamber." Applicant admitted that "E" is an abbreviation for "electronic," but denied that "GAR" is short for "cigar." How do you think this came out? In re Land Sky Sea, LLC, Serial No. 85923067 (January 4, 2016) [not precedential].

The word "namely," when used in an identification of goods, typically focuses the application on the particular words following the word "namely." Here, however, the additional language merely provides a detailed description of the function of the various components of applicant's devices. And so the Board found the goods to be, simply, "electronic cigars."

Applicant contended that "[a] substantial portion of U.S. consumers do not understand the term
E GAR to refer to an electronic non-tobacco inhaling device which does not contain tobacco." Rather, they would see the term as an arbitrary or coined term.

The Board found that "E GAR" is a readily understandable abbreviation of "electronic cigar," and is consistent is consistent with evidence showing that electronic cigarettes are referred to as "E Cigarettes," which may be abbreviated as "Ecig." Moreover, third parties have referred to electronic cigars as "E-Cigars."

More importantly, Examining Attorney Jacquelyn A. Jones submitted evidence of third-party use of "E-GAR" and "e-gar" in association with electronic cigars: e.g., "From the website, under the heading “What is a Personal Vaporizer (Electronic Cigarette)? " the statement that: "There also exist an E-Cigar (sometimes called an E-Gar), and an E-Pipe."

The Board observed also that even if applicant had been the first and only user of "E-gar," the mark would still have been merely descriptive of the goods.

Based on careful consideration of all the record evidence, we find that consumers viewing the term E GAR would recognize it as an abbreviation of “e cigar” or electronic cigar. Therefore, E GAR is merely descriptive in association with Applicant’s goods in that it immediately conveys knowledge of features or characteristics of those goods, that is, that they are electronic cigars.

And so the Board affirmed the Section 2(e)(1) refusal.

Read comments and post your comment here.

TTABlog comment: WYHA? At first, I was thinking that a "gar" is a needle-shaped fish, and an e-gar an electronic needle-shaped fish. But once you put "e-gar" in the context of electronic cigars, well, forget the fish.

Text Copyright John L. Welch 2016.


At 9:36 AM, Anonymous Anonymous said...

I disagree. I do not believe that the evidence supports a finding that E Gar is descriptive for electronic cigars. While the decision cites a few examples that "E-Cigar" was a known term, I believe the record had scant evidence that "E Gar" was commonly used to describe electronic cigars. The Board relied on 3 measly third party articles as evidence of descriptiveness of "E Gar." There was no dictionary definitions where "gar" meant "cigar" and no use of the mark by competitors. Without more appropriate evidence, in my opinion, E Gar should have been deemed suggestive, not descriptive and passed forward. I don't think this was a close case, but even if the Board did think so, under its own precedent it should given the applicant the benefit of the doubt and passed it forward for Publication. Then, if competitors thought the mark was descriptive, they would have a chance to oppose.

At 12:07 PM, Anonymous Anonymous said...

I agree that there is dictum in the precedents for "Then, if competitors thought the mark was descriptive, they would have a chance to oppose."

Has that ever been a holding?

At 5:49 AM, Blogger John L. Welch said...

The idea that "others would have a chance to oppose" is an explanation or a result of the "benefit of the doubt rule." It is not a ruling or a holding.


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