Wednesday, September 26, 2018

TTAB Test: Is "PURSE SIZED" Merely Descriptive of Tampons?

The USPTO refused to register the mark PURSE SIZED for tampons, finding the mark to be merely descriptive under Section 2(e)(1). On appeal, applicant argued that the mark does not provide any specific information regarding tampons, since tampons are small enough to fit inside a purse anyway. Moreover, no one else uses the mark. How do you think this one turned out? In re First Quality Hygienic, Inc., Serial No. 87197883 (September 24, 2018) [not precedential] (Opinion by Judge Alber Zervas).

Examining Attorney Christopher Buongiorno relied on several website pages using the term "purse-sized" for various products, one of them being tampons, and on applicant's answers to the following questions:

(1) Will the tampons fit inside a purse? Yes.
(2) Will the tampons be marketed or promoted as fitting inside of a purse? Yes.

The Examining Attorney therefore maintained that "[u]pon viewing the wording PURSE SIZED used with tampons, female consumers will not need to mentally process or gather further information in order for them to understand the descriptive significance of the wording - especially when applicant's tampons fit inside of a purse and are marketed and promoted as fitting inside of a purse ...."

Applicant argued the the mark is only suggestive because it does not describe tampons with any degree of particularity, that tampons fit inside a purse anyway so the mark doesn't provide any specific information, that no one else uses the mark, and that any doubt should be resolved in favor of applicant "since there is only a thin line of demarcation between a suggestive mark and one that is descriptive." Applicant also pointed to several registration for marks including the word SIZED (but none relating to tampons).

The Board concluded that applicant's answers to the Examining Attorney's questions "make clear that Applicant's goods will fit and will be marketed as fitting inside of a purse." Moreover, the webpages demonstrate that the general public refers to various products as "purse-sized," and one website uses the term to refer to tampons. This evidence established that consumers understand "purse sized" to refer to "the size or feature of a product."

Even if applicant were the first and only user of PURSE SIZED for tampons, the term would still be descriptive of the goods.

The Board had no doubt regarding its conclusion that PURSE SIZED is merely descriptive of the tampons, and so it affirmed the refusal.

Read comments and post your comment here.

TTABlog comment: Is this a WYHA?

Text Copyright John L. Welch 2018.


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