Tuesday, October 10, 2017

TTAB Test: Is "PERSON" Merely Descriptive of Wearable Electronic Devices?

The USPTO refused registration of the applied-for mark PERSON, finding it merely descriptive of  wearable computers, wearable electronic devices, smart watches, and other goods. The examining attorney maintained that the term "describes a significant feature of these goods for wear on the human body, distinguishing them from a wearable device for, for example a dog or horse." How do you think this appeal came out? In re Caleb Suresh Motupalli, Serial No. 86573858 (October 2, 2017) [not precedential] (Opinion by Judge Thomas W. Wellington).

The examining attorney's evidence of mere descriptiveness was minimal. She submitted two examples of third-party use of the term "person" in connection with wearable electronic devices, and dictionary definitions of "person" (a human being) and "consumer" (a person who buys goods and services). Internet excerpts showed the term "wearable computing" to mean "electronic devices that are worn on the body or clothes."  From this evidence the examining attorney concluded that the applied-for mark "describes the intended use of the goods."

Applicant Motupalli, appearing pro se, argued that the examining attorney took too broad an approach; "if PERSON is descriptive for this reason then it is descriptive of virtually all goods, as long as the goods are used by humans." The examining attorney agreed that "Applicant has correctly stated the policy."

On the scant evidence of record, the Board found that PERSON, by itself, does not "convey any meaningful information regarding a quality, feature, function, characteristic or purpose of the identified goods." The term is extremely broad: a "person" will be the consumer for all goods and service imaginable.

There is insufficient evidence demonstrating that consumers would readily understand it in connection with the identified goods as conveying the information that the intended end user is a human being. The “immediate idea” of a quality, feature, function, or characteristic of the goods or services conveyed by a descriptive term “must be conveyed forthwith with a ‘degree of particularity.’”

The Board found that PERSON does not convey such an "immediate idea" with "a degree of particularity." The term is "too vague as to what or how a "person" is being referred to - whether it is the consumer, the end user of the goods, or if the term is somehow an expression of the goods being worn 'on the person' - rendering the mark at least suggestive, not merely descriptive, of the goods and thus registrable on the Principal Register."

And so the Board reversed the Section 2(e)(1) refusal.

Read comments and post your comment here.

TTABlog comment: How did you do?

Text Copyright John L. Welch 2017.


At 1:49 PM, Blogger K. K. said...

good decision.

At 1:50 PM, Blogger K. K. said...

good decision.

At 3:06 PM, Anonymous Anonymous said...

The Reply Brief is an interesting read

At 4:58 PM, Blogger John L. Welch said...

When this application was published for opposition, it was opposed by the owner of the mark PERSOL. The Board ultimately sustained the opposition as a discovery sanction.


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