Tuesday, September 10, 2019

TTAB Sustains Section 2(e)(1) Opposition, Finding "IR DEFENSE" Merely Descriptive of Protective Beauty Serums

In this Section 2(e)(1) opposition, the Board agreed with Opposer Christie Brinkley Skincare that Applicant Alumier's alleged mark IR DEFENSE is merely descriptive of "beauty serums that provide protection against infrared radiation" [IR disclaimed]. Alumier pointed to Opposer Brinkley's own application for the same mark for cosmetics that provide IR protection, where Brinkley feebly argued that IR DEFENSE is not merely descriptive. The Board brushed aside that argument. Christie Brinkley Skincare, LLC v. Alumier Europe Ltd., Opposition No. 91229847 (September 6, 2019) [not precedential] (Opinion by Judge Michael B. Adlin).

Dictionary definitions, a thesaurus entry, an Internet article, and Alumier's own identification of goods left the Board with no doubt that IR DEFENSE is merely descriptive of Alumier's product.

Opposer Brinkley, in its own application to register IR DEFENSE, argued that the term is not merely descriptive for its sun-protective cosmetics because its goods "cannot immediately be identified simply by viewing the subject mark." [LOL - ed.]. The Board pointed out that that is not the correct test for mere descriptiveness.

Indeed, "[t]he question is not whether someone presented with only the mark could guess what the goods or services are. Rather, the question is whether someone who knows what the goods or services are will understand the mark to convey information about them." DuoProSS Meditech Corp. v. Inviro Med. Devices Ltd., 695 F.3d 1247, 103 USPQ2d 1753, 1757 (Fed. Cir. 2012) (quoting In re Tower Tech, 64 USPQ2d at 1316-17).

Here, consumers who know what Alumier's goods are will immediately understand that the proposed mark directly describes their stated purpose: to defend a user's skin against IR radiation. The Board observed that the term should remain available for others to describe their competing products and services.

And so the Board sustained the opposition.

Read comments and post your comment here.

TTABlog comment: Brinkley also owns applications for RECAPTURE DAY + IR DEFENSE and RECAPTURE 360 + IR DEFENSE, in both of which IR DEFENSE is disclaimed. Those applications were blocked by Alumier's application for IR DEFENSE.

Text Copyright John L. Welch 2019.


At 10:34 AM, Blogger RT said...

LOL indeed, but note that both the Second and the Ninth Circuits have formulated the inquiry that way, even though they should obviously know better.


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