Friday, April 29, 2016

Precedential No. 12: TTAB Affirms 2(e)(1) and 2(d) Refusals of HOUSEBOAT BLOB for Inflatable Mattresses

The Board affirmed two refusals of the mark HOUSEBOAT BLOB for "Inflatable float mattresses or pads for recreational use, namely, mattresses and pads from which the user may be launched into the air and onto a body of water; Inflatable mattresses for recreational use, namely, mattresses from which the user may be launched into the air and onto a body of water" [BLOB disclaimed]. It found the mark merely descriptive under Section 2(e)(1), and likely to cause confusion with the registered mark THE BLOB for goods legally identical to applicant's goods. In re Fat Boys Water Sports LLC, 118 USPQ2d 1511 (TTAB 2016) [precedential].

Mere Descriptiveness: The record evidence established that the term "blob" refers to a type of air mattress used on bodies of water as a recreational device whereby one is catapulted off the blob when another person jumps onto the other side of the blob. The question was whether the mark HOUSEBOAT BLOB, as a whole, is merely descriptive of the goods.

Applicant anachronistically argued that the Board should apply the degree of imagination test, the competitors' use test, and the competitors' need test, relying on No Nonsense Fashions, a 1985 TTAB decision. The Board, however, pointed out that No Nonsense has been superseded by subsequent CAFC and Board rulings.

Under the current standard, there is no requirement that the Examining Attorney prove that others have used the mark at issue or that they need to use it, although such proof would be highly relevant to an analysis under Section 2(e)(1). The correct test is whether the phrase forthwith conveys an immediate idea of an ingredient, quality, characteristic, feature, function, purpose or use of the goods.

Applicant's own marketing materials described a version of its product "that will accommodate House Boats and Yachts." The Amazon web page for applicant's product described it as "perfect to attach to a houseboat or small cliff ...."

Considering the mark as a whole, the Board concluded that the words in combination "would be immediately understood to mean a blob-type inflatable launch pad that is specialized for use in association with a houseboat." Thus, the mark conveys an immediate idea of the nature and purpose of the goods, and the Board found the mark to be merely descriptive of the goods.

Likelihood of confusion:  Applicant argued that the cited mark THE BLOB is a double-entendre that "uses the fame of the movie 'The Blob' ... and the descriptive/generic meaning of 'blob.'" However, there was no evidence of record to establish that Registrant promoted its goods with a reference to the film, but even if the cited mark has a double entendre that applicant's mark does not, "in light of the evidence and the description of the goods for the mark THE BLOB, it is much more likely that customers would perceive it to mean an inflatable, floating launch pad." Similarly, consumers would perceive HOUSEBOAT BLOB to be a special type of inflatable launch pad for use with a houseboat.

Applicant argued that the term "blob" in the cited registration has little or no source identifying significance, but the Board, in light of the presumption to which the registration is entitled, refused to consider the contention that the cited mark has no distinctiveness or is generic. On the other hand, in light of the "usage evidence bearing on the public's understanding of the term BLOB," the Board found the mark to be a weak source indicator.

Even so, we see little in Applicant’s mark to distinguish it from Registrant’s mark, as Applicant’s mark merely adds a highly descriptive term to the registered mark, in such a way as to indicate to customers a suitable purpose of the goods. And although the registered mark includes the word “THE,” which is absent from Applicant’s mark, the presence or absence of this word is unlikely to allow consumers to meaningfully distinguish the marks, because we cannot find on the evidence of record that consumers would associate the trademark THE BLOB, as used on these goods, with the classic movie.

The goods of the application and cited registration are legally identical in part (although the goods of the cited registration are limited to use by youth camps, church camps, campgrounds, and other outdoor recreation businesses), and they therefore presumably travel in the same, normal channels of trade to the same classes of consumers.

Considering the evidence and the relevant duPont factors, the Board found confusion likely and it therefore affirmed the Section 2(d) refusal.

Read comments and post your comment here.

TTABlog comment:  The opinion includes a brief discussion of "incontestable" registrations and their import in the likelihood of confusion analysis. It pointed out that a mark is not considered stronger because its registration is "incontestable" (i.e., more than five years old). "The registrations alone are incompetent to establish any facts with regard to ... any reputation [the registered marks] enjoy or what purchasers' reactions to them may be." 

BTW: I continue to assert that there is no such thing as an "incontestable" registration. Section 15 refers to the right to exclusive use of a mark becoming incontestable, but registrations can always be contested on certain grounds, like fraud and abandonment. So to call a registration incontestable is, I think, misleading and inappropriate.

Text Copyright John L. Welch 2016.


At 10:14 AM, Anonymous Anonymous said...

Where's the precedent for a double-entendre requiring proof that a registrant promotes its goods a certain way? What a bizarre decision. The Board opted to grant a generic mark (according to their own findings) the presumptions of validity rather than assume (as the rest of the world would) that any person see "THE BLOB" would immediately think of the famous movie! There was evidence of the fame of the movie in the record. Hope it's appealed.

At 10:59 AM, Blogger Briggs said...

I'm the owner of the Fat Boy - I wish you would use my pictures on here because they are far superior to anything any company has ever made. We set 2 world record and we are currently used as the touring 'launch pad' for Nitro Circus. IT's the best 'blob' in the industry, hands down... yet no one can buy it because a company took to use the court system to stop competitors instead of making a superior product. I feel like the justice system failed me here... I went to great lengths to make something incredible and yet now I can't even sell it. The word blob is generic in the industry - in essence - I'm not selling iPhones, i'm selling phones. And yet, a company has been able to TM a word that is so generic, no other word is used as competition in the industry. It basically takes my company off the map - a great company I might add...

At 12:41 PM, Anonymous Anonymous said...

Completely agree with your comment on routine and unfortunate misuse of "incontestable."

At 2:26 PM, Blogger John L. Welch said...

I really don't like the Section 2(d) ruling at all. How is this case different from the recent FAVORIT decision?

As to use of the term "blob," since the word is generic for these mattresses, anyone can call its mattress a blob. Anyone should also be able to register a mark combining the word "blob" with a non-descriptive term. In light of this decision, however, the owner of THE BLOB is emboldened to harass others who try to register or use BLOB-formative marks.

At 2:35 PM, Blogger Briggs said...

So the blob company came after me - they sent me a Cease and Desist stating that although I never explcitly called my product THE Blob or WATERBLOB (no spaces) that they could sue me for using the term BLOB on grounds that 'blob' was the word of their true trademark and 'WATER' and 'THE' were merely descriptive. In light of this decision, I'm wondering if this would hold up in court?

At 4:31 PM, Blogger Unknown said...

My first thought was of the movie Heavyweights, which is about a camp and a pivotal moment surrounds an issue with their water air mattress, also called "The Blob."

It was my understanding that genericide was an exception to incontestability - it seems a pity that the TTAB doesn't see it that way.

At 7:49 PM, Blogger John L. Welch said...

I think what you mean is that a registration more than 5 years old may still be attacked on the ground of genericness. Here, applicant did not counterclaim to cancel the registration, and so the Board had to treat the registration as valid.

At 9:54 AM, Blogger Unknown said...

There is no counterclaim in an ex parte appeal. The applicant would have to petition to cancel, but even if successful would still have the 2(e)(1) issue regarding registration of the mark.


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