Thursday, March 21, 2019

TTABlog Test: Is BIKESTYLE Merely Descriptive of Cycling Apparel?

[This guest post was written by Amanda B. Slade, an associate in the Trademark Group at Wolf, Greenfield & Sacks, P.C.]. The USPTO refused registration of the mark BIKESTYLE, in standard character form, for cycling apparel including gloves, arm and leg warmers, pants, cycling shorts, cycling jerseys, shirts, rainwear, and hats, deeming the mark to be merely descriptive under Section 2(e)(1) On appeal, Applicant DashAmerica argued that because “consumers must engage in multiple steps of reasoning to understand how Applicant’s mark relates to Applicant’s goods,” its mark is suggestive rather than merely descriptive. How do you think this came out? In re DashAmerica, Inc., Serial No. 87564276 (Mar. 13, 2019) [not precedential] (Opinion by Judge Peter W. Cataldo).

Descriptiveness: During prosecution of the application, Examining Attorney Jonathan R. Falk concluded that the mark’s “wording merely describes a characteristic of applicant’s goods, specifically, a type of fashion made for riding a bicycle.” The Examining Attorney relied on dictionary definitions of “cycling” (“the act, sport, or technique of riding or racing on a bicycle, motorcycle, or similar vehicle”), “bike,” and “style” (“a particular fashion”). In response, DashAmerica contended that its BIKESTYLE mark “does not refer to ‘fashion made for riding a bicycle’ . . . but rather to all aspects that embody the interests of cyclists, and, in turn, the cyclists' way of life.” As a result, Applicant asserted, BIKESTYLE “does not make consumers immediately think ‘clothing,’ but instead invites them to pause for a moment to understand how the word relates to the company’s goods . . . .” The Examining Attorney was unpersuaded and maintained the refusal.

The Board agreed with the Examining Attorney and affirmed the refusal to register.. The opinion centered on three main conclusions. First, in its brief, Applicant asserted that “in evaluating descriptiveness, the Examining Attorney improperly split BIKESTYLE into the components BIKE and STYLE.” By dissecting “the mark into isolated elements,” the Examining Attorney allegedly failed to make a determination based on the mark’s overall impression. However, the Board underscored that “[i]n considering a mark as a whole, the Board may weigh the individual components of the mark to determine the overall impression or the descriptiveness of the mark and its various components.” In re Oppedahl & Larson LLP, 71 U.S.P.Q.2d 1370, 1372 (Fed. Cir. 2004). Because the combination of BIKE and STYLE did not evoke “a new and unique commercial impression,” the Board found that the “composite mark BIKESTYLE also has a merely descriptive significance.”

Second, Applicant DashAmerica argued that “‘style’ has numerous meanings, many of which could apply here.” Applicant noted that, in addition to “a particular fashion,” “‘style’ can also be defined as a ‘quality of imagination and individuality expressed in one’s actions and tastes’ or ‘a mode of living.’” The Board rejected this line of reasoning, stating, “That a term may have other meanings in different contexts is not controlling.” In re Bright-Crest, Ltd., 205 U.S.P.Q. 591, 593 (T.T.A.B. 1979). The fact that “‘style’ may possess additional meanings in other contexts [did] not diminish the descriptive significance of the term in connection with the goods at issue.”

Finally, Applicant claimed that “there is no evidence of record that any third party uses ‘bikestyle,’ ‘bike style,’ ‘bicycle style,’ ‘cycling style,’ to describe any apparel, footwear, or any other goods to be used for either the sport of cycling or riding a bicycle in general.” The Board emphasized that it is unnecessary for the USPTO to demonstrate that others have used the mark or term to describe cycling apparel. There is simply “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.” In re Carlson, 91 U.S.P.Q.2d 1198, 1203 (T.T.A.B. 2009).

For these reasons, the Board determined that “the mark BIKESTYLE immediately describes a characteristic [or] feature of Applicant’s various items of cycling apparel, namely, that it is apparel fashioned for bicycling or bike fashion, without the need for multistage reasoning” and issued a final decision refusing registration. 

Request for Judicial Notice or To Reopen Prosecution: The opinion raises interesting procedural issues as well. Applicant had attached copies of third-party registrations to its reply brief and asked that the Board take judicial notice of the registrations or, in the alternative, suspend the appeal and reopen prosecution to allow their introduction. However, the Board stated that “[t]he Board does not take judicial notice of applications or registrations; they must be proved by competent evidence.” See, e.g., In re Jonathan Drew Inc., 97 U.S.P.Q.2d 1640, 1644 n.11 (T.T.A.B. 2011). Additionally, the Board reiterated that “the proper procedure for an applicant . . . to introduce evidence after an appeal has been filed is to submit a timely written request with the Board to suspend the appeal and remand the application for further examination.” See 37 C.F.R. § 2.142(d). The request must also include a showing of good cause (i.e. “a satisfactory explanation as to why the evidence was not filed prior to appeal”). As Applicant failed to provide such an explanation, Applicant’s request for remand was denied.

Read comments and post your comment here.

TTABlog comment: The Chinese "Flying Pigeon" (depicted above) is the world's most popular vehicle; more than 500 million have been manufactured (according to Wikipedia).

Text Copyright John L. Welch and Amanda B. Slade 2019.


At 8:55 AM, Anonymous Anonymous said...

" In response, DashAmerica contended that its BIKESTYLE mark “does not refer to ‘fashion made for riding a bicycle’ . . . but rather to all aspects that embody the interests of cyclists, and, in turn, the cyclists' way of life.” "

Note to self: never use marketing-speak in an Office Action response.

At 11:01 AM, Anonymous Anonymous said...

Although introducing new evidence in a reply brief seems inappropriate regardless, it is still insane that the TTAB will not take judicial notice of the PTO's own publicly available records.


Post a Comment

<< Home