Tuesday, March 14, 2017

TTAB Test: Is KRISMAS Merely Descriptive of Holiday Store Services?

The USPTO refused registration of the mark KRISMAS for, inter alia, retail store services featuring holiday merchandise and for entertainment services, finding the mark to be merely descriptive under Section 2(e)(1). Applicant/appellant pointed to 292 third-party registrations for marks containing the word "Christmas," without disclaimer. How do you think this came out? In re Imaginif, Inc., Serial 86420607 (March 6, 2017) [not precedential].

Examining Paula M. Mahoney maintained that the applied-for mark KRISMAS is the phonetic equivalent of "Christmas," and would therefore describe a feature or characteristic of applicant's Christmas-themed retail and entertainment services.

Applicant contended that KRISMAS is not merely a misspelling, but is suggestive of the secular nature of applicant's services: it "provides secular experiences and goods to those not observing the birth of Jesus Christ." Thus, said applicant, there is an incongruity between "Christmas" and KRISMAS.

However, applicant's own use of the word KRISMAS implied that it and the public at large regard the term as descriptive of the Christmastime theme of its retail and entertainment services. At its website, applicant uses the terms "Christmas" and KRISMAS interchangeably. The Board agreed with the Examining Attorney that "Applicant's use refers to the holiday based on the traditional, religious Christmas holiday, as well as offering secular items or services related to this time of year."

Applicant also made the inevitably losing argument that, from the mark alone, consumers will not "automatically assume or even have any clear idea what Applicant's goods and services are." Of course, a mark must be considered in the context of the pertinent goods and services and services, not in the abstract. In short, the determination of mere descriptiveness is not a guessing game.

The Board observed that applicant's competitors must be free to use "Christmas" or its phonetic equivalent, KRISMAS, for seasonally-appropriate goods and services.

With regard to the 292 third-party registrations for marks containing the word Christmas, without disclaimer, the Board pointed out that third-party registrations are not conclusive on the issue of descriptiveness. Each case must stand on its own merits. None of the registrations sought to monopolize "Christmas" per se for Christmas-themed goods and services. Only one mark comprised the word "Christmas" alone, and that was for computer game software. The other marks include "distinguishing elements rendering them, in context, not descriptive of their identified goods or services." [Some were registered under Section 2(f): e.g., CHRISTMAS IN NEW YORK for greeting cards - ed.].

The Board noted that there is a thin line of demarcation between a suggestive mark and a merely descriptive one, and that doubt should be resolved in applicant's favor. Here, the Board had no doubt, and so it affirmed the refusal.

Read comments and post your comment here.

TTABlog comment: Is this a WYHA? a WYHO-HO-HO? Are you looking forward to EESTIR?

Text Copyright John L. Welch 2017.


At 11:10 AM, Anonymous Anonymous said...

Applicant's spelling is unique and visually distinctive.

There is case law that lets your register a distinctive stylized presentation of a generic mark, as long as you disclaim other presentations of it, so how about if the applicant had disclaimed exclusive rights to the word "Christmas" and any audible equivalent to Christmas?

At 12:28 PM, Blogger RT said...

The unfortunate thing is that now the 9th and 2nd Circuits have accepted the "guessing game" rationale for finding descriptive terms to be suggestive--and the Fed. Cir. seemed to go far in that direction for Dot.Blog. So is it really a losing argument any more?

At 1:44 PM, Anonymous Anonymous said...

@Anonymous at 11:10 am: It may be the case that one can "register a distinctive stylized presentation of a generic mark" but the applicant here sought registration of a standard character mark not a distinctive stylized presentation. Is there a case where the TTAB permitted registration of an intentionally misspelled mark where applicant had adopted a disclaimer of the proper spelling of the applied-for mark?

At 10:09 AM, Anonymous Anonymous said...

The guessing game test was discussed in last week's CAFC oral arguments for the Earnhardt appeal of . Also of note, the panel was not impressed with the clarity of the Board's February 26, 2016 decision in regards to the application of In re Hutchinson Technology.

At 10:09 AM, Anonymous Anonymous said...

anonymous at 1:44, this is Anonymous at 11:10.

To answer your question: I dunno.

But what rational basis is there for the distinction?


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