Wednesday, March 22, 2017

Precedential No. 4: Despite Amendment of Drawing to "SharpIN," TTAB Treats Mark as Standard Characters and Affirms Descriptiveness Refusal

The Board affirmed a Section 2(e)(1) refusal to register the mark SHARPIN, in standard character form, finding it merely descriptive of "cutlery knife blocks which incorporate built-in sharpeners that automatically sharpen knives." Applicant Calphalon asserted that the examining attorney had failed to enter its amendment of the mark to the special form "SharpIN" and instead improperly treated the mark as a standard character mark (although the examining attorney accepted the amendment to the drawing). Calphalon further contended that SharpIN (in special form) is incongruous or a double entendre. No dice, said the Board. In re Calphalon Corp., 122 USPQ2d 1153 (TTAB 2017) [precedential].

Form of the Mark: The Board first considered whether the mark of the amended drawing, SharpIN, should be treated as a standard character mark or a special drawing mark. Applicant's counsel discussed the amendment of the drawing from SHARPIN to SharpIN with Examining Attorney Michael P. Keating and now maintained that the examining attorney disregarded that discussion and failed to designate the mark as a special form mark. At a minimum, Calphalon argued, the examining attorney should have contacted it to seek clarification. See TMEP Section 807.03(h) ("When it is unclear from the record whether the submitted drawing was intended to be a standard character drawing, the examining attorney must contact the applicant for clarification.”)

The Board, however, found that the record was not "unclear" as to whether the submitted drawing was intended to be treated as a standard character drawing. Applicant's amended drawing met the requirements of Rule 2.52 for a standard character drawing "because the letters in its mark continued to be depicted in Latin characters, and the uppercase and lowercase letters in the drawing are part of the 'standard character set that lists letters, numerals, punctuation marks, and diacritical marks that may be used in a standard character drawing.'" TMEP § 807.03(b).

A standard character mark may be depicted in any font style or size, but the USPTO will convert the depiction to a standardized typeface for printing in the Official Gazette and on the registration certificate. Similarly, if the application is filed electronically, the mark will be automatically converted into the standard-character field to a standardized typeface.

The Board pointed out, when Calphalon requested the drawing amendment via TEAS, it did not select the special form option; the standard character designation remained the designation of choice. The amended drawing did not, as Calphalon argued, require the Office to re-designate it as "special form."

Calphalon invited a remand to the examining attorney for "clarification to special form," but the Board saw no remand needed since the examining attorney had treated the drawing properly. Nor was the Board moved by applicant's assertion that it first learned that the drawing would be treated as a standard character drawing when it received the examining attorney's appeal brief. It was applicant who so characterized the mark when submitting the amended drawing (i.e., it did not choose the special form option).

Having elected to seek registration of its proposed mark as a standard character mark, and having offered no persuasive justification for taking a contrary position for the first time in its reply brief on appeal, Applicant must have the descriptiveness of the mark assessed without limitation to any particular depiction of that term.

Mere Descriptiveness: Not surprisingly, the examining attorney contended that consumers would perceive the mark SHARPIN as equivalent to the word "sharpen" and thus descriptive of a function of the goods. Calphalon maintained that the mark does not immediately convey a readily understood meaning to consumers as to the nature of the goods. The Board, however, pointed out once again that the determination of mere descriptiveness is not a guessing game: a mark must be considered in the context of the goods at issue.

As to incongruity, the Board found nothing incongruous about the standard character mark SHARPIN. It immediately invokes an "association with the phonetically-identical and otherwise virtually-identical word 'sharpen,' and there is nothing incongruous about the use of the word sharpen (or its phonetic equivalent SHARPIN) to describe the function of goods identified as 'cutlery knife blocks which incorporate built-in sharpeners that automatically sharpen knives.'"

Calphalon claimed that the mark is a double entendre: "[c]onsumers will understand the mark to refer both to sharpening knives and that a sharpener is built within the knife block." The Board found that the first proposed meaning is the only readily apparent one for the mark in standard character format.

Applicant’s mark is not a double entendre because Applicant’s briefs make it clear that the possible existence of Applicant’s second proposed meaning of SHARPIN—that "a sharpener is built within the knife block"—inheres in the presentation of the mark in a special form as SharpIN, and that is not the form of the mark for which Applicant seeks registration.

And so the Board affirmed the refusal.

Read comments and post your comment here.

TTABlog comment: Well, I suppose applicant will file a new application for SharpIN in special form. How do you think that application will fare? If SharpIN is considered a double entendre, are both meanings merely descriptive of the goods?

Text Copyright John L. Welch 2017.


At 5:33 PM, Anonymous Anonymous said...

How does a special form help at all?
Why not just go to Supplemental?

At 7:52 PM, Blogger Unknown said...

Yes, I was going to suggest supplemental. Of course there are limitations there. I would probably do both!


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