Friday, March 24, 2017

TTAB Test: Is "THE BOX" Merely Descriptive of Packaged Charcoal?

The USPTO refused registration of the mark THE BOX, in standard character and design form, for "charcoal; charcoal packaged in charcoal starter," finding the proposed mark to be merely descriptive of the goods and requiring a disclaimer of THE BOX in the design mark. The evidence showed that applicant's charcoal is packaged in a vented box that the user lights to ignite the charcoal. Applicant argued that its mark is mere suggestive because most charcoal is packaged in bags, and many items are packaged in boxes. How would you rule? In re Charcoal Box USA, L.L.C., Serial Nos. 86532794 and 865336461 (March 22, 2017) [not precedential].

The Board found that THE BOX merely describes a central feature or characteristic of applicant's goods. "Applicant goods are not just simply contained in a box and then poured into a charcoal grill. Rather, the box itself is an integral feature of the charcoal starter, and serves as the chimney for the  charcoal while it heats."

Even if the majority of grilling charcoal is packaged in bags, the Board noted, that does not diminish the descriptiveness of applicant's charcoal contained in a box.

The Board rejected applicant's assertion that, although THE BOX describes the packaging for the goods, it is only suggestive of charcoal or charcoal starter. The Board pointed to the MATCHBOX SERIES case, in which that mark was found to be merely descriptive of toy vehicles sold in boxes having the size and appearance of a matchbox. Applicant's product is aptly described as "box charcoal" or "charcoal in a box." Because applicant's goods and its packaging are intertwined, it is appropriate to consider whether THE BOX describes a feature of the packaging of the goods.

Applicant pointed to the USPTO's issuance of a registration for BBQ BAG for charcoal briquettes, but the Board once again observed that it is not bound by the issuance of prior registrations. Applicant also pointed to 16 third-party registrations for marks containing the word BOX, but the Board noted that those registrations identify goods and services unrelated to those at issue here.

Finally, applicant feebly argued that "box" has numerous definitions, none of which relate to boxes containing charcoal. For the umpteenth time, the Board pointed out that the meaning of the term must be considered not in the abstract but in the context of the identified goods.

And so the Board affirmed the Section 2(e)(1) refusal of THE BOX, and it also affirmed the requirement that applicant disclaim that term in connection with the design mark.

Read comments and post your comment here.

TTABlog comment: Was this a WYHA? Discuss among yourselves.

Text Copyright John L. Welch 2017.


At 9:22 AM, Anonymous Anonymous said...

I am on the fence of this one. What if the mark was just BOX, without the article THE? Would you expect the same outcome?

At 9:45 AM, Anonymous Anonymous said...

"the Board once again observed that it is not bound by the issuance of prior registrations."

Stare decisis? Stare Decisis? We don't need no stinkin' stare decisis!

At 10:44 AM, Anonymous Anonymous said...

"Applicant pointed to the USPTO's issuance of a registration for BBQ BAG for charcoal briquettes, but the Board once again observed that it is not bound by the issuance of prior registrations."

This is why the Board will always be a Kangaroo Kourt. They can do whatever they want. Trump would love these guys - if he was aware of their existence.

At 10:54 AM, Blogger John L. Welch said...

Nonsense. The Board can't be required to follow the decision of a single examining attorney in passing an application to publication. Otherwise we would be stuck with the decisions of the least competent examining attorneys.
Stare decisis does not apply to a decision of a single EA.

At 11:35 AM, Anonymous Anonymous said...

"While equality of treatment of all applications is a goal, it cannot invariably be realized when hundreds of different examiners interpret the law in thousands of applications over a number of years. The proper application of the statute will always trump the goal of uniformity of treatment. The fact that an examiner in the past may have imprudently granted a registration in similar circumstances is not a reason for the present Examiner, the Board or a court to perpetuate the mistake so that it spreads like a virus, eventually eroding the reliability and integrity of the federal register." McCarthy, Section 19:126.50.

That's how I used to explain it to disgruntled attorneys when I was an examining attorney.

At 2:57 PM, Anonymous Anonymous said...

Now, had the applicant applied for a product configuration mark of charcoal as a box and could support that such a configuration is not functional, I think they would have gotten a nice product configuration trademark registration because maybe that would be viewed as inherently distinctive?

At 9:06 AM, Blogger John L. Welch said...

No way a box would be considered inherently distinctive. It's a basic geometric shape. See recent Icelandic Provisions decision.


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