"COPPER 88" Merely Descriptive of Clothing Made of Fabric Containing Copper, Says TTAB

The Board affirmed a Section 2(e)(1) refusal to register the mark COPPER 88, in standard character form, finding it to be merely descriptive of "clothing made of fabric containing copper, namely, athletic sleeves, sweatshirts, pants, scarves, scrubs not for medical purposes, shorts, socks, T-shirts and underwear, shoes, gloves, hats." Applicant argued that there is no “variety of copper or copper composition referred to as COPPER 88,” that the term has no meaning in the industry, and that COPPER 88 "is suggestive of a feature of the product and requires 'mental steps' to determine 'the actual technical feature' that removes it from descriptiveness." Cu later, said the Board. In re GCool-Tech USA LLC, Serial No. 87433779 (July 30, 2018) [not precedential] (Opinion by Judge Cheryl S. Goodman).

Examining Attorney Patrick Shanahan pointed to applicant's own website, where applicant described its goods as "[c]onsisting of 88% embedded copper nylon and 12% spandex." Applicant's Canadian website said the same thing, only in Canadian English.

Applicant argued that no competitor uses the term "copper" combined with any numbers to describe any technical feature of its products, nor do they need to use "copper 88," but the Board pointed out the irrelevancy of that argument: the USPTO is not required to prove "use" or "need" by others, and even if applicant is the first and only user of COPPER 88, that does not justify registration of a merely descriptive term.

Applicant contended that "no reasonable consumer would expect that clothing would be 88% metal," but the Board observed that that the mark must be considered in the context in which it is used, not in the abstract.

Applicant insisted that COPPER 88 is "too remote from any specific technical feature of the product" to "provide meaning to the consumer," that there is no such thing as COPPER 88, and that the term has no meaning in the industry.

The Board noted that applicant had conceded the descriptiveness of the word "copper" by including it in its identification of goods. Moreover, applicant's websites and third-party websites refer to the goods as containing embedded copper content and embedded fiber. The term "88" merely describes the percentage of embedded copper-nylon fiber in the clothing, as stated in both applicant's and third-party websites.

COPPER 88 immediately informs the consumer about the "makeup" of the clothing offered by applicant. Therefore, the Board affirmed the Section 2(e)(1) refusal.

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Text Copyright John L. Welch 2018.