Tuesday, October 30, 2018

TTAB Finds Photo of Grumpy Cat Merely Descriptive of Grumpy Cat-Related Goods and Services

The Board affirmed two refusals to register the photograph of "Grumpy Cat" shown below, as a trademark for, inter alia, computer apps, paper goods, and stuffed toys, and as a service mark for entertainment services, all featuring "Grumpy Cat," finding the proposed mark to be merely descriptive under Section 2(e)(1). The Board also rejected applicant's claim of acquired distinctiveness under Section 2(f). In re Grumpy Cat Limited, Serial Nos. 85838010 and 85836812 (October 26, 2018) [not precedential] (Opinion by Judge Cheryl S. Goodman).

Mere Descriptiveness: As some may know, "Grumpy Cat" is the nickname given a house cat named "Tardar Sauce," whose frowning image became an Internet meme in 2012. The evidence submitted by Examining Attorney Deborah E. Lobo showed that the applied-for mark is a significant feature or characteristic of the class 9 goods: for example, applicant’s “photo bomb” app allows the user to insert images of Tardar Sauce into photographs. For the class 16 goods, the Tardar Sauce image is used as a significant feature of the stamps, greeting cards and calendars. As to the class 28 stuffed toys, the image on tags or labels attached to those goods “immediately conveys to the consumer information that the stuffed toy or toy animal is a portrayal of Tardar Sauce.” And the subject or content of the class 41 entertainment services focuses on the cat shown in the mark. Therefore, the Board concluded that mark is merely descriptive of the identified goods and services.

Acquired Distinctiveness: Applicant relied on ownership of a prior registration as well as other evidence in claiming acquired distinctiveness.

Applicant’s prior registration covered the identical mark for goods in classes 9, 21, 25, and 28. Applicant claimed, without explanation, that “Class 9 protective covers and cases, mouse pads and magnets are sufficiently similar to its Class 9 downloadable videos and application software; its Class 21 mugs, coffee cups, tea cups and coasters (not of paper) are sufficiently similar to the Class 16 paper goods; its Class 25 clothing is sufficiently similar to its Class 41 entertainment services; and its Class 28 playing cards are sufficiently similar to its Class 28 stuffed or plush toys, action figures, dolls and toy animals.” It pointed to third-party registrations, three for each class, as its only evidence that the goods listed in the prior registration are related to the goods and services in its applications and may emanate from the same source. The Board was unimpressed, concluding that applicant’s prior registration did not support the Section 2(f) claim.

Applicant also submitted three declarations attesting to the fame, media attention, and licensing arrangements related to Grumpy Cat, contending that:

[T]hrough the Internet (where the meme of Grumpy Cat originated), “…a new trademark may achieve wide usage and ‘secondary meaning’ within a matter of days or weeks, compared to the many years required in the days of more leisurely advertising.” (quoting 2 J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition at §§ 15:54 and 15:56 (4th ed.)). Indeed, “…the Internet has made it easier than ever to reach millions of people around the globe in a matter of seconds….” Id. Accordingly, the quick viral rise of the Mark on the Internet and its resulting use in advertising and on goods and services … should be enough length of use to lend towards a showing of acquired distinctiveness.

The Board pointed out that “evidence of acquired distinctiveness must relate to the specific mark and the goods and services for which registration is sought and not relate to recognition of Tardar Sauce herself, as an ‘Internet celebrity.’” Applicant’s evidence of commercial success did not make that connection.

And so the Board affirmed the refusal.

Read comments and post your comment here.

TTABlog comment: I suppose this decision will make that stupid cat even grumpier.

Text Copyright John L. Welch 2018.


At 1:27 PM, Anonymous Anonymous said...

How can an image of a "character" be merely descriptive of the goods. Does a picture of Superman on a comic, even in the publishing box), or any character on a product "merely describe" the product. Grumpy Cat is not a picture of an Apple for a box of apples. Grumpy Cat is a creative work, not an object.

This isn't a product design required acquired distinctiveness.

Luckily the BORED did not also hold that Grumpy doesn't function as a mark or Grumpy Cat was the Applicant. Remember, Animals DO NOT HAVE IP RIGHTS. So, Supplemental here we go.


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