TTABlog Test: How Did These Three Section 2(e)(1) Mere Descriptiveness Appeals Turn Out?
The TTAB recently ruled on the appeals from three Section 2(e)(1) mere descriptiveness refusals summarized below. Let's see how you do with them, keeping in mind that the Board affirms, by my calculation, some 90% of these refusals. Answer(s) will be found in the first comment.
In re Ossur hf, Application Serial No. 87876605 (March 6, 2020) [not precedential] (Opinion by Judge Marc A. Bergsman). [Mere descriptiveness refusal of CONNECT for "prosthetic and orthotic devices, namely, prosthetic sockets used to fasten prosthetic limbs to the body"].
In re David Lloyd Kremer, Application Serial No. 87805208 (March 5, 2020) [not precedential] (Opinion by Judge Marc A. Bergsman). [Mere descriptiveness refusal of CAMO CORN for "foodstuffs for animals, namely, corn feed for consumption by animals"].
In re Michele DeSimone, Serial No. 87808309 (February 27, 2020) [not precedential] (Opinion by Judge Christopher Larkin). [Mere descriptiveness refusal of THE SENSORY STUDIO for "Occupational therapy services; Speech therapy services; Behavioral health services; Listening therapy services; Play therapy services; Psychological services, namely, providing therapeutic services to children with special needs and their families; Psychological testing; Speech and language therapy services; Speech pathology therapy services; Stress reduction therapy" [STUDIO disclaimed]].
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TTABlog comment: See any WYHAs here?
Text Copyright John L. Welch 2020.
posted by John L. Welch @ 3/11/2020
4 comments
4 Comments:
2. THE SENSORY STUDIO
HOW I WOULD HAVE RULED IN THIS CASE: I would have affirmed the refusal.
My little sister is a special education teacher and she created a “sensory room” which was a corner of her class room dedicated to occupational therapy tasks, which is a common practice.
The question is whether adding the term “studio” makes the name distinctive enough for trademark protection.
My gut told me that this is not enough, and that the bar for trademark protection is higher. I asked myself, if one mother heard another mother say that spending time at or in the sensory studio has really helped their child with x skills, would they know they were talking about the proper noun - The Sensory Studio - on Forest Ave.
In other words, would these words alone identify the source of the occupational therapy services. Maybe, with local knowledge, but they also might just think the child spent time in that corner of the teacher’s classroom, or their school’s sensory studio, etc. When I got this point in my thought process, it began to seem more akin to the pottery studio or the dark room (for photography), or any other specialized space any number of organizations may have for a specific function, not its own distinct business.
There are other unfair competition grounds to stop someone from opening another Sensory Studio around the corner offering the same therapies.
This is the same decision the TTAB reached.
The applicant’s rationale in appealing the refusal may have been because there are not many The Sensory Studios, proper noun, in business, operating, at least according to Google.
Most of google hits are for the company, although, trademark decisions cannot be made based on a company’s SEO spend. The first few google hits for the wordmark that were not for this company were for three very different services: a scent exhibit in Santa Barbara Museum of Art, a simulated apartment designed to accommodate an individual who is blind or vision impaired at a school for the blind in San Antonio, and children’s summer program at a school in McLean, VA.
2. CAMO CORN
HOW I WOULD HAVE RULED IN THIS CASE: Before reading the opinion, I would have refused the refusal and granted the trademark to David Kremer. This name seems more than descriptive to me! Although it makes an observation about the colors of the corn feed, which could be considered a descriptive, it is a word not typically associated with corn or the colors of corn. CAMO CLOTHES would definitely be descriptive or CAMO CHAMELEONS, or COLOR CORN. That is unless this is a common term in the livestock industry for this type of corn, in which case, it would not be distinctive. A quick google search leads me to believe that this is not the case however.
The TTAB refused to reverse, disagreeing with my take.
After reading the opinion, I agree with the applicant’s decision to appeal because I still feel as though camouflage corn, even paired with “foodstuffs for animals, namely,
corn feed for consumption by animals,” is not a straightforward description of the product. Before reading the whole opinion, I still wondered if it is something disguised as corn, is it corn disguised as something else, or is it “camo” colored as associated with hunting/army apparel. As I began to understand how the product is used, and in the context of hunting, where camo has a distinct meaning, I understand how the court might find it to be descriptive.
3. CONNECT:
HOW I WOULD HAVE RULED IN THIS CASE:
I would have affirmed the refusal. Simply put, “connect” immediately tells you what the product does, not where the product is from. In theory, if you look at this product in a package that said CONNECT across it, it could as easily be labeling which piece of the prosthetic device it is as labeling the company, especially given the device has to be assembled to be used.
This is the same decision the TTAB reached. I am unsure why the applicant appealed in this case. It seems very cut and dry to me.
CONNECT
I would have affirmed the refusal. The phrase "Connect" is describing the product and how it functions. The product is used to used to fasten (connect) prosthetic limbs to the body. It requires very little imagination for a consumer to understand the function of the product based on the mark. Not enough imagination to make a plausible argument that "Connect" rises to a level of a suggestive mark. As the TTAB noted, the definition of the term "Connect" is "to join, or fasten, two things together, or one thing to another". Therefore, the mark "Connect" immediately conveys information to the consumer how the product functions.
CAMO CORN
I believe this trademark should have been granted. The word "Camouflage", which is commonly abbreviated to "Camo", often is used to describe the concealment of a product or design. It is true that Camouflage is often used in the context of describing colors of green and brown, but there is sufficient evidence of other types of commonly used Camouflage using various other colors such as red, blue, and tan. So while the term Camouflage doesn't automatically describe a color that is being used, if the term is being used to describe a color, often that color is different than the color of the product at issue here (green and brown). I felt the applicant provided sufficient evidence of other marks that were granted protection that used the phrase "Camo" as to show that this phrase doesn't commonly describe a significant attribute or function of a product. I think this mark rises from merely descriptive to suggestive, thus being able to obtain trademark protection.
THE SENSORY STUDIO
I would have accepted the word mark for The Sensory Studio. A consumer would have to go through a deep analysis to connect the word mark The Sensory Studio with the purpose and function of this particular business. The purpose of the business is occupational therapy services; speech therapy services; behavioral health services; listening therapy services; play therapy services; psychological services, namely, providing therapeutic services to children with special needs and their families. There is nothing in the phrase The Sensory Studio that even remotely hints that it's purpose is for assisting children. The term "sensory" is very broad and encompassing, and I don't feel that it describes in detail the type of services that this particular studio provides. I feel as if this is a suggestive mark, that is entitled to protection.
CONNECT:
I believe this refusal would likely be affirmed, so would not choose to appeal the refusal on the basis of mere descriptiveness. “Connect” is merely describing the function of the good: to connect prosthetic limbs to the body. It immediately conveys what the product does without having to use any imagination or creative thinking to jump from the name to the function of the product. Consumers would likely see “Connect” and immediately be able to understand the purpose of the good, so it is not distinctive enough to truly distinguish the source of the good. It is not surprising to me that the TTAB affirmed the refusal for some of the same reasons.
CAMO CORN
Solely based off of the information given in the original blogpost (that CAMO CORN was considered descriptive for corn feed for animals), I would have appealed this decision. Although the word “corn” is clearly descriptive of corn feed because it literally describes the food type, I think that “camo” could potentially turn this into a more suggestive mark so long as the word corn was disclaimed. Camo doesn’t immediately bring to mind any aspects of corn feed or foodstuffs for animals in my opinion, so it doesn’t necessarily convey a function or aspect of the good. After reading the decision, I agree that the mark may be descriptive. As the opinion points out, camo is an abbreviation for camouflage, which means “the concealment by means of disguise.” Furthermore, the opinion seemed to suggest that the use of this corn was to draw in deer for hunting while escaping from the eyes of crows or other animals that might eat it before the deer were attracted to the feed. In this case, the corn itself is camouflaged on purpose, so it is more apparent that “camo” is descriptive of an aspect of the good. Both components of the mark (“camo” and “corn”) are each descriptive of product aspects, and together appear merely descriptive of the entirety of the product itself – especially to the relevant consumers who would likely be hunters and understand the purpose of the camo coloring.
SENSORY STUDIO
I would have appealed this decision on the basis that a mark is suggestive (and not merely descriptive) if it requires imagination, thought, and perception on the part of the consumer to connect to the nature of the goods/service, and I think there is some imagination required to go from “sensory studio” to occupational therapy services for children. Although “studio” certainly seems descriptive in that it describes the nature of the location of the services, I believe “sensory” transforms the mark enough as to make it suggestive rather than descriptive because a consumer would need to use some imagination to connect “sensory studio” to a place specifically for sensory-related therapy for children. There is nothing in the mark that leads me to immediately understand that the services provided are related to therapy or treatment. After reading the decision, it was clear that the relevant question is whether someone who knows what the goods and services are will understand the mark to convey information about them, and I do think this is a different question than I had initially considered. If the consumer knows that the service is therapy, it is much more apparent that “the sensory studio” offers sensory therapy, which arguably is descriptive of a quality or characteristic of the services.
1. Connect
I would have affirmed the refusal if this case was appealed. The wordmark of "Connect" is a merely descriptive mark in which the dictionary definition of the word is synonymous with the function of the product itself. Connect is generally understood to be the point at which two things meet or are joined together. In the case of this product, it serves the function of being the joint between the body part and the prosthetic. In the eyes of the consumer, they would not have to take any imaginative steps to connect the function of the device to the wordmark itself. Therefore it is a merely descriptive wordmark that I would not have appealed.
2. Camo Corn
I would have affirmed the refusal if the case was appealed. Going along the same lines as the previous analysis, I would first look to see whether the dictionary definition of the wordmark is synonymous with the look or function of the product itself. Camo is generally known to be the short form of the word Camouflage, which is a mixture of colors (usually greens and browns) used to make someone or something blend into its surroundings. While camouflage does come in a variety of color combinations, the most known is the green and brown pattern. Looking at the product itself, the corn are colored in different shades of brown and green, giving it that camouflage look. An ordinary consumer would not have to take an imaginative leap to determine why the product is called camo corn, and for this reason, the wordmark is merely descriptive. I would not have appealed this refusal.
3. The Sensory Studio
On appeal, I would have reversed the refusal of this trademark. Sensory is defined as "of or relating to the senses or sensation." The services this company offers are different types of therapies for children, including ones that deal with the different senses. However, the TTAB determined that this mark was merely descriptive. I would argue that the mark is more suggestive than descriptive, as an ordinary consumer would need to use some imagination to tie "The Sensory Studio" with the therapy services for children. The mark doesn't immediately convey its function as being a center for occupational therapy. Studio is not a commonly used term to refer to these spaces either. If the test to determine whether the mark was descriptive was whether someone who knows the goods or services would understand the mark to be describing them, then it may be descriptive, but I do not think that this is an appropriate test. I would have appealed this decision on the grounds that the mark is suggestive rather than descriptive.
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