Wednesday, October 12, 2016

CAFC Affirms TTAB: 660-Word Proposed Mark Fails to Function As a Trademark

The CAFC upheld the TTAB's affirmance [TTABlogged here] of a refusal to register the mark shown below, comprising about 600 words, for, inter alia, cartoon prints, paper dolls, and coloring books, finding that substantial evidence supported the Board's finding that the proposed mark merely conveys information and does not function as a trademark. In re Prema Jyothi Light, Appeal No. 2014-1597 (October 7, 2016) [not precedential].

(click on photo for larger picture)

The court observed that, although there is no limit on the number of words permitted in a trademark, the Board was correct in finding that the exhaustive list of characters, in columnar form, weighs in favor of finding no registrable trademark.

Applicant Light argued that her purported mark has acquired distinctiveness, but the court agreed with the TTAB: absent "evidence that the matter has been promoted as a trademark, we cannot find that the applied-for mark has acquired distinctiveness regardless of the time the applied-for mark has been used in this manner."

The court also upheld the Board's ruling that applicant's proposed amendments to her purported mark constituted material alterations of her mark and were therefore unacceptable.

Read comments and post your comment here.

TTABlog comment: The examining attorney had suggested that applicant amend the application to seek registration of just the words SHIMMERING BALLERINAS & DANCERS, but applicant did not do so.

Text Copyright John L. Welch 2016.


At 8:55 AM, Anonymous Bob O'Connell said...

Did the EA really suggest that? Wouldn't that be about as material an alteration of the mark as you can get? Surely the only proper course would have been to file a new application for just SHIMMERING BALLERINAS & DANCERS.

At 9:54 AM, Anonymous Anonymous said...

The recommendation by the examiner is misplaced as it would be a material alteration of the applied-for mark.

At 10:33 AM, Anonymous Anonymous said...

Why not just file a copyright application...?

At 11:42 AM, Anonymous Anonymous said...

How could they have amended the mark per the TTABlog comment? Seems like a significantly material alteration.

At 3:37 PM, Anonymous Anne Gilson LaLonde said...

I wonder if the pro se applicant got at least some legal advice - she didn't appeal to a district court so she didn't have to pay the USPTO's fees and costs.

At 4:34 AM, Anonymous Anonymous said...

Interesting, when compare to Apple's registered trademark (Reg. No.: 4706799).


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