Monday, January 28, 2019

In 2018, How Often Did the TTAB Affirm Section 2(e)(1) Mere Descriptiveness Refusals?

I have again reviewed the TTAB's FOIA page in order to estimate the percentage of Section 2(e)(1) mere descriptiveness refusals that were affirmed by the Board during the last calendar year (2018). I counted 70 refusals, of which 63 were affirmed and 7 reversed. That's an affirmance rate of 90%. [Matching last year's 90% rate].

One of the mere descriptiveness reversals was precedential. It involved the mark SERIAL, where evidence of acquired distinctiveness overcame the Section 2(e)(1) refusals of the logo forms of the mark.

In re Serial Podcast, LLC, 126 USPQ2d 1061 (TTAB 2018) [precedential] (Opinion by Judge David K. Heasley]. [TTABlogged here]. The Board affirmed a refusal to register the term SERIAL in standard character form, finding it to be generic for "entertainment in the nature of an ongoing audio program featuring investigative reporting, interviews, and documentary storytelling." However, the Board reversed refusals to register two design forms of the mark, shown below, finding that these two marks had acquired distinctiveness, but requiring a disclaimer of the word "SERIAL" in each mark. Applicant argued that use of the term “serial” as a noun is antiquated and archaic, and that the term in modern usage is an adjective describing a characteristic of audio programs. The Board, however, rejected the noun/adjective distinction, pointing out that both nouns and adjectives may be generic. Even though some articles refer to applicant’s podcast by its name Serial, "that amounts, at most, to 'de facto secondary meaning'’ in a generic term," and does not entitle applicant to registration. Because the applied-for mark is at best highly descriptive, "more substantial evidence" than media references was required to establish acquired distinctiveness. As to the word + design marks, the Board found, based on evidence of parodying and copying by third parties, that the composite logos have achieved public recognition as source indicators for applicant’s services.

The remaining reversals involved the marks: BRAND THERAPY; SCOREBOARD; GLOBAL FARMERS MARKET; CANINE CAVIAR (disclaimer of CAVIAR); THE HALAL SHACK; and JORDAN'S TORIDASU (disclaimer of TORIDASU).

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Text Copyright John L. Welch 2019.


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