Friday, October 05, 2018

WYHA? TTAB Affirmed 2(e)(1) Refusal of ICE BLIND as Merely Descriptive of Ice Fishing Houses

[This guest post was written by Stephanie Grace Stella, an associate in the Trademark Group at Wolf, Greenfield & Sacks, P.C.]. Delivering a lesson that not all things come to those who bait, the Board affirmed the PTO’s refusal to register the mark ICE BLIND for “ice fishing houses not primarily of metal,” finding it to be merely descriptive under Section 2(e)(1). Would you have appealed? In re IOIP Holdings, LLC, Serial No. 87250432 (September 17, 2018) [not precedential] (Opinion by Judge Albert Zervas).

Examining Attorney Sarah Hopkins concluded that the proposed mark “merely describes a key feature of the Applicant’s goods, namely, [that] Applicant’s ice fishing shelters are used on the ice to conceal outdoor enthusiasts that are fishing from the elements and fish below.” The PTO relied on the dictionary definitions of the two terms in the proposed mark—i.e., “ice” as “a surface, layer, or mass of frozen water,” and “blind” as “a shelter for concealing hunters, photographers, or observers of wildlife”—and the Board took judicial notice of the definition of “wildlife” as “living things and especially mammals, birds, and fishes that are neither human nor domesticated.” The Examining Attorney "further relied on third-party webpages using the term 'blind' to refer to 'shelters' in the context of ice fishing" and using an additional term before the term “blind” to describe the type of blind, e.g., a hunting or fishing blind. Finally, the Examining Attorney pointed to Applicant’s descriptive use of the term “blind” on its own website.

In response, Applicant coolly argued that (1) “some of the third-party webpages that use the term ‘blinds’ do not do so in the context of ice fishing”; (2) the webpages “offer ice fishing shelters on pages separate from the ones where hunting blinds are offered”; and (3) “only one product was referred to as an ‘ice blind’ . . . with ‘ice blind’ used in all capital letters (hence suggesting trademark use), on an inactive site.” (Emphasis added.)

The Board rejected Applicant's arguments, pointing to Applicant's statement in its response to the First Office Action, that “Applicant’s goods will be used in connection with ice fishing and placed on the ice.… The purpose is to provide shelter while ice fishing.” The Board further noted that “[t]he fact that there is limited evidence of the use of the combined term ‘ice blind’ does not defeat the Section 2(e)(1) refusal,” nor does it render the term “ice blind” incongruous or distinctive. The Board thus concluded “that purchasers would immediately understand ICE BLIND as a combination of two merely descriptive terms, the first term indicating to purchasers that the shelters are for use on ice and the second term indicating to purchasers that the goods are a shelter for concealing an individual.”

Finally, the Board rejected as “implausible and not supported by any evidence” Applicant’s argument that “the mark ICE BLIND could be interpreted as a play on the term ‘snow blind,’ which is a ‘temporary loss of vision and inflammation of the conjunctiva and cornea, caused by exposure of the eyes to bright sunlight and ultraviolet rays reflected form snow or ice.’” The Board found that, in the context of the involved goods, when the terms “ice” and “blind” are combined, “‘the mark as a whole, i.e., the combination of the individual parts,’ does not convey ‘any distinctive source-identifying impression contrary to the descriptiveness of the individual parts.’”

And so the Board affirmed the refusal.

Read comments and post your comment here.

TTABlog comment: I'm afraid Stephanie needs to work on her punsmanship. BTW: the only fishing I do these days is for compliments.

Text Copyright John L. Welch and Stephanie Grace Stella 2018.


At 6:24 AM, Anonymous Paul Rapp said...

I dunno John, "not all good things come to those who bait" made me laugh out loud at 6:15 AM. Bravo.
I have a profoundly weird copyright / TM matter developing in Boston. Don't think the other side has sought outside
IP counsel yet. Maybe you'll get it. Like I said, it's a little weird.

At 7:50 AM, Blogger Gene Bolmarcich, Esq. said...

This decision is a joke. I cracked up when I read it, even though it's dry in parts. Yes, trademark law is known for its slipperieness but you'd be a block head to NOT have appealed this. I hate to be pick(y) but this one froze me in my tracks. All I can say is "the TTAB man cometh" (and the TTAB man taketh away)

At 9:17 AM, Blogger John L. Welch said...

Gene: I cannot understand why you would appeal this. I think ICE BLIND is generic, let alone merely descriptive.

At 11:56 AM, Blogger Unknown said...

I think Stephanie did a fine job. Ice Blind is no Snow Rake. Maybe not generic, but teetering on the edge of falling through the ice.

At 4:50 PM, Anonymous Anonymous said...

I polled some sports fishermen in the Upper Peninsula where they know well from ice fishing - they all confirmed pure "G" generic.


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