Friday, February 08, 2019

TTAB Reverses Descriptiveness Refusal of “CANNABIS CANNIBALS” for Cartoons Featuring Cannabis-Smoking Cannibals

[This guest post was written by Stephanie Grace Stella, an associate in the Trademark Group at Wolf, Greenfield & Sacks, P.C.]. The Board reversed a Section 2(e)(1) mere descriptiveness refusal of CANNABIS CANNIBALS for “entertainment services, namely, an ongoing series featuring animated cannabis smoking cannibals provided through network or cable TV and the internet,” finding that the mark’s primary significance is to indicate to viewers “an ongoing entertainment series and the fanciful animated fictional, principal characters of the series.” In re Jeffrey Butscher, Serial No. 87572095 (January 29, 2019) [not precedential] (Opinion by Judge Peter W. Cataldo).

The Examining Attorney concluded that the proposed mark CANNABIS CANNIBALS “merely describes the subject matter of [Applicant’s] series.” In response, Applicant Jeffrey Butscher conceded that the series features animated cannabis-smoking cannibals, but argued (1) “the mark is suggestive because viewers will have to use their imagination to discern the thematic content and genre of the show,” and (2) the Board should apply the competitors' use and competitors' need tests, relying on the Board’s 1985 decision in No Nonsense Fashions. The Board noted, however, that it has rejected the tests set forth in No Nonsense Fashions, and it reiterated that the test for descriptiveness is “whether a mark immediately conveys knowledge of a quality, feature, function, or characteristic of the goods or services with which it is used.”

There is no requirement that the Office prove actual competitor use or need; it is well established that even if an applicant is the only user of a merely descriptive term, this does not justify registration of that term. . . . Descriptiveness must be evaluated in relation to the particular goods [or services] for which registration is sought, the context in which it is being used, and the possible significance that the term would have to the average purchaser of the goods [or services] because of the manner of its use or intended use. [Citations and quotation marks omitted.]

Applying the appropriate test, the Board concluded that the proposed mark is not merely descriptive because “the primary significance of CANNABIS CANNIBALS to a prospective viewer indicates an ongoing entertainment series and the fanciful animated fictional, principal characters of the series.” The Board reasoned that “[to] hold to the contrary would lead to the inequitable result that this Applicant, as well as countless other applicants in the creative industries, could not register their marks because the marks identify their characters or the subject matter of the televisions shows.” The Board relied on several precedential decisions involving similar marks, including MORK & MINDY for decals ornamented with the mark, and design marks comprising drawings of Superman, Batman and the Joker for toy dolls of those characters.

The Board distinguished this case, where Applicant owns intellectual property rights in the work from which the “cannabis-smoking cannibal” characters arose, from those where the character is in the public domain. For example, in In re Carlson Dolls Co., 31 USPQ2d 1319, 1320 (TTAB 1994), the Board held that LITTLE MERMAID for dolls is merely descriptive because "a fictional public domain character like the Little Mermaid of the Hans Christian Anderson fairy tale is not necessarily linked to a specific commercial entity and may be presented in various embodiments . . . and, thus. describes the purpose or function of the goods (i.e., to represent the Little Mermaid of the fairy tale)." (quoting In re United Trademark Holdings, Inc. 122 USPQ2d 1796, 1799 (TTAB 2017).

The Board further distinguished cases such as In re Weather Channel, Inc., 229 USPQ 854 (TTAB 1986), in which the Board found THE WEATHER CHANNEL to be generic for “a television transmission whose subject matter exclusively concerns the weather because viewers would understand that term as the apt descriptive name for television channel dedicated to the weather.” The Board reasoned that, in this case, the mark CANNABIS CANNIBALS connotes “the fanciful animated, fictional subjects of Applicant’s entertainment services created by Applicant rather than a factual subject matter.”

Finally, the Board noted that the alliterative use of the letter “C” as the first consonant in both terms of the CANNABIS CANNIBALS mark, “while not dispositive in and of itself, adds to the character of the mark.”

And so the Examining Attorney’s descriptiveness refusal went up in smoke.

Read comments and post your comment here.

TTABlog comment: Stephanie is still working on her punsmanship

Text Copyright Stephanie Grace Stella and John L. Welch 2019.


At 9:19 AM, Anonymous Anonymous said...

this is always an issue for descriptiveness refusals. if the mark describes a fanciful aspect of the applicant's goods/services, it shouldn't be held descriptive. like GOLDFISH for goldfish-shaped crackers,... sure, the crackers are shaped like goldfish, but GOLDFISH doesn't describe crackers generally.

At 9:50 AM, Blogger Unknown said...

I thought Stephanie's "punsmanship" was pretty darn good and would even say she has learned well from the Master.

At 12:51 PM, Anonymous Anonymous said...

Thanks for writing this up, Stephanie. I've grown increasingly frustrated with arbitrary applications of the descriptiveness test, typically due to the inherent subjectivity of any given examining attorney. Here, however, the Board made the applicant's argument for them, concerned with ramifications an adverse decision might create.

If the services were "entertainment services, namely an ongoing series featuring animated characters provided through network or cable TV" this decision would be more digestible. However, the applicant essentially recites the entirety of its mark in the recitation by including "cannabis smoking cannibals."

I am strained to think of another context where one could include their mark in the recitation of goods or services, receive a descriptiveness refusal, aver incorrect legal arguments in response, and receive a favorable outcome by the Board. The appeal brief does not even mention the alliteration, focusing on the incorrect imagination test instead, which even if still sounds theory is betrayed by the recitation of services eliminating the need to engage in any imagination at all.

If I were the examining attorney here, I would be distraught.


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