Thursday, February 16, 2017

TTAB Affirms Rejection of New Drawing, Reverses Geographical Refusal of OAK PARK Design Mark for Beer

The Board rejected applicant's attempt to amend the drawing of the mark shown below to delete the words "SACRAMENTO CA," finding that such an amendment would be a material alteration of the mark as filed. However, the Board reversed a Section 2(e)(2) refusal of the original mark for beer because Oak Park of Sacramento, California, is too obscure a location. In re Oak Park Brewing Company, Inc., Serial No. 86329948 (February 14, 2017) [not precedential].

Material alteration: In an application under Section 1(b), an applicant may amend the drawing of the mark if "[t]he proposed amendment does not materially alter the mark." Rule 2.72(b)(2). The general test is whether the mark would have to be republished after the alteration. In short, the new and old versions must create the same commercial impression.

The evidence showed that there are several locations named "Oak Park" in the United States, including Oak Park, Illinois, known for the large collection of homes designed by Frank Lloyd Wright. It is also the birthplace of Ernest Hemingway and contains three homes of writer and Tarzan creator Edgar Rice Burroughs.

The Board concluded that removal of "SACRAMENTO CA" changes the commercial impression of the mark because it no longer refers to Oak Park of Sacramento, California, but may refer to another Oak Park. Or OAK PARK may simply be seen as an arbitrary designation of a park dominated by trees, with no geographical reference.

And so the Board affirmed the rejection of the proposed new drawing.

Geographical Descriptiveness The first prong of the Section 2(e)(2) test requires that the mark (or portion thereof) be a place generally known to the public. The USPTO's evidence showed that Oak Park is located within the Sacramento city limits. The population of Sacramento is about 400,000. Newspaper stories established "[a]t best" that a former mayor of Sacramento, who played in the NBA, grew up in Oak Park of Sacramento.  [Can you name him?]

Considering the evidence as a whole, the Board was not persuaded that "Oak Park" identifies a geographic location generally known to the American purchasing public for beer. Oak Park in Sacramento is minor and obscure. At one time it was an important suburb of Sacramento, but fell into decline. Although Sacramento is not an insignificant city, nothing in the record indicated that the specific area of Oak Park has any significance outside of Sacramento. "At best, the record showed that one professional basketball player grew up there, a fact probably not generally known to the American beer-drinking public."

Because the USPTO failed to satisfy the first prong of the Section 2(e)(2) test, the Board reversed the refusal.

Read comments and post your comment here.

TTABlog comment: Talk about obscure? That's what the words SACRAMENTO CA are in the applied-for mark. I think the USPTO should have allowed the amendment of the drawing and then refused registration under Section 2(e)(3).

Text Copyright John L. Welch 2017.


At 7:39 AM, Anonymous Anonymous said...

Oak Park is outside Detroit. Excellent Jewish delis (and coney islands).

At 9:51 AM, Anonymous Anonymous said...

Kevin Johnson - point guard for the Phoenix Suns

At 9:54 AM, Blogger Dave Oppenhuizen said...

I'm also surprised that they found the amendment to be a material alteration of the mark. That one wasn't even close in my mind. You can barely see the words "SACRAMENTO CA" in the mark. And I don't fully understand why the geographic significance of those words have any special bearing on the overall commercial impression of the mark. Removing text that is barely discernible is a clear immaterial alteration in my book. I guess what I'm saying is, who cares what it says when you can't even read it. Imagine seeing that logo on a beer bottle. The text would be so small it probably wouldn't even be printed legibly.

At 10:24 AM, Anonymous Anonymous said...

I bet there are 50 places in the USA named Oak Park. So the phrase doesn't indicate anyplace, particularly when you delete the Sacramento reference, as John properly said should have been done.

Another example of Bureaucrats enjoying the power to say NO!

At 8:00 AM, Anonymous Anonymous said...

Whether or not "Sacramento CA" appears in small type is irrelevant. Because the wording consists of searchable, source identifying matter, the deletion would result in a material alteration.

At 10:23 AM, Anonymous Anonymous said...

"Because the wording consists of searchable, source identifying matter, the deletion would result in a material alteration." is wrong.

It is a material alteration if the change in the mark causes a change in the commercial impression of the mark, and the small print geographic blurb does not change the commercial impression of the mark.


Post a Comment

<< Home