Thursday, July 28, 2016

TTAB Test: Is SKINNIBELT Generic for Belts?

The USPTO refused to register the term SKINNIBELT for "belts," deeming it generic for the goods. The Examining Attorney maintained that "skinny belt" is the generic name of a category of belts. Applicant appealed. How do you think this came out? In re Jasco Solutions L.L.C., Serial No. 86308947 (July 25, 2016) [not precedential].

The Board noted that if "skinny belt" is generic, so is "skinnibelt," since the phonetic equivalent of a generic term is itself generic.

The Examining Attorney made of record retail website evidence offering women's apparel, and including many references to "skinny belts," but in many cases the context did not allow the Board to distinguish between descriptive and generic use.

Often, the context suggested that the term is not generic: for example, the following list "Accessories/belts/ skinny, medium, wide." One would not expect "medium belts," or "wide belts" to be generic, but rather merely descriptive of width.

Other websites display "skinny belt" alongside items described by variations of this wording: e.g., "Skinny Leather Belt, Skinny Faux Leather Belt, skinny thin Patent Leather Belt, ...." The interposition of other descriptive words between "skinny" and "belt" suggest that "skinny" is merely an adjective.

The Examining Attorney submitted several examples that appeared to use "skinny belt"  in a generic sens: e.g., "The red skinny belt by far stands out as the most popular colorful belt ...." However, these same sources also suggest that "skinny" might be just an adjective: e.g., "skinny rectangular belts."

Finally, the Board noted that nearly all of the products referred to in the USPTO's evidence as "skinny belts" were narrow in width. Applicant's belts (see above) are relatively wide but very thin in terms of the fabric from which they are made. Thu,s this suggest a disagreement as to what a "skinny" belt actually is.

The Board found the USPTO's evidence to be equivocal, and it does not clearly show that the relevant public understands the term "skinny belt" as a reference to a genus of belts, rather than merely a combination of the generic word "belt" to which the descriptor "skinny" has been applied.

Since the USPTO failed to provide the required clear evidence of genericness,the Board reversed the refusal.

Read comments and post your comment here.

TTABlog comment: How did you do? In my experience, belts are displayed by length, not width. So all the "36"s will be hung on one peg, etc. The widths of the belts on the peg may vary. But there is no little sign saying "skinny belts." If there were, that's where I'd go.

Text Copyright John L. Welch 2016.


At 9:11 AM, Anonymous Anonymous said...

I agree that Skinny Belt is not generic. But, based on the Board's conclusion that belt is generic and skinny is a descriptor, it seems to me that the mark is merely descriptive.

At 9:57 AM, Anonymous Darlene Klinksieck said...

Silly me; I thought perhaps it was a belt that actually made one's waist look smaller -- and, if so, my next comment was going to be "Where can I buy one?"

At 10:47 AM, Blogger Unknown said...

John, I think your point regarding length vs. width is slightly more true for men's belts than women's belts, which tend to have more variation for fashion reasons than just holding-up-one's-pants reasons. If you look at department store websites for women's belts, it's much more common for women's belts to be organized by width. For example, the Lord & Taylor, Nordstrom, and Macy's websites, under their respective Belts sections, each offer the option to select by style or width and, sure enough, each one offers the options of "Skinny," "Medium," or "Wide."

I don't think that'd be the case for men's belts (which rarely are as wide or as thin as women's belts), but I doubt "skinnibelt" is a brand being marketed to men (though I could be wrong).

I'm a little surprised at the result, frankly.

At 10:54 AM, Blogger Unknown said...

Also, I'd be curious if the same opinion would occur if someone tried to register "leather belt" or (in this case more directly relevant) "elastic belt" which could similarly be described as just an adjective. I imagine a company like Diane Von Furstenberg might make a similar claim that they could register "wrap dress" for the same reason. It's just very bizarre to me, though I suppose this is part of the somewhat difficult distinction between whether something is descriptive or generic.

At 12:18 PM, Anonymous Alex said...

I agree that SKINNY is probably descriptive as applied to belts and clearly not generic. There are several different meanings for SKINNY in this context which applicant could argue which while maybe not persuasive enough to claim the mark is suggestive, clearly should prevent a determination of genericness. For instance, is the belt itself "skinny;" is it intended to make the wearer appear skinny; is it for only skinny people; is it skinny only because of the material it is made of; etc. So SKINNY can describe the belt in a number of ways but it still describes the belt.
In response to another commentator, LEATHER is more than merely descriptive because it has a more specific meaning than "skinny" and it refers to a specific quality of a belt which is often a material (no pun intended) quality desired by purchasers of belts so if it is not descriptive because the belt is not leather, it would likely be considered misdescriptive.


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