Tuesday, April 21, 2020

TTAB Finds AMERICAN OUTDOOR BRANDS CORPORATION Geographically Descriptive, Affirms Refusals in 30 Applications

In two decisions issued on the same day, the Board found the proposed mark AMERICAN OUTDOOR BRANDS CORPORATION to be primarily geographically descriptive of various goods and services mostly related to firearms [BRANDS CORPORATION disclaimed]. It therefore affirmed Section 2(e)(2) refusals of the standard character form of the mark in one application and likewise affirmed refusals of the word-plus-design mark shown below in 29 applications absent a disclaimer of the entire phrase. The Board also affirmed the rejection of Applicant's claim of acquired distinctiveness under Section 2(f). In re American Outdoor Brands Corporation, Serial Nos. 87228558 et al. and Serial Nos. 87305138 et al. (April 14, 2020) [not precedential] (Opinion by Judge Michael B. Adlin).

Geographical Descriptiveness: Examining Attorney Bianca Allen maintained that AMERICAN OUTDOOR BRANDS CORPORATION is a combination of a geographically descriptive word (AMERICAN) and a term that merely describes the provider of the involved goods and services, or those goods and services themselves (OUTDOOR BRANDS CORPORATION). Applicant argued that the phrase is "amorphous, conveying nothing specific, but conjuring up a sense of freedom – a calling to unexplored places." According to applicant, its meaning differs for every consumer: "It could be the Colorado Rockies, the California Redwoods, the Shenandoah Valley, or Central Park in New York City. It means nowhere in particular."

The Board, however, found that AMERICAN OUTDOOR BRANDS CORPORATION is geographically descriptive because AMERICAN is a geographically descriptive term combined with terms that are "at best" merely descriptive of Applicant’s goods and services. "[N]ot only has Applicant failed to introduce any evidence that AMERICAN has a non-geographic meaning in the context of its goods or services, but Applicant’s own use of the term reveals that AMERICAN is used in its geographic sense."

The involved applications and the USPTO's evidence of record showed that applicant is based in the United States (Springfield, Massachusetts) and manufactures goods and provides services there. Consumers would believe that Applicant’s goods and services originate in America. Thus the three elements of the Section 2(e)(2) test were satisfied.

In short, because Applicant is an outdoor brands company from the United States offering outdoor products and services through and under its various outdoor brands, AMERICAN OUTDOOR BRANDS CORPORATION is primarily geographically descriptive and must be disclaimed.

Acquired Distinctiveness: The Board first determined that AMERICAN OUTDOOR BRANDS CORPORATION is "highly geographically descriptive, as it identifies the geographic origin of the goods and services offered by Applicant’s outdoor brands." Accordingly, applicant's burden of proof to show acquired distinctiveness is "concomitantly high." In re Steelbuilding, 75 USPQ2d at 1424.

Applicant's evidence on this issue was "substantively sparse." It included a declaration from an officer of the company stating that the proposed mark "has acquired distinctiveness for financial information services and for shareholder and investor relations services." However, the evidence regarding same failed to establish public recognition of the mark as a source indicator for those services. Applicant's remaining applications, which concerned its "outdoor-focused products and services," were based on intent-to-use. Applicant argued that the supposed acquired distinctiveness for its financial services transferred to its outdoor goods and services, but the Board shot that down.

[Even] assuming arguendo that Applicant had established acquired distinctiveness for its financial information and shareholder and investor relations services, which it did not, it would also have to make a "rigorous" showing that the financial information and shareholder and investor relations services are “sufficiently similar or related” to the goods and services in the remaining intent to use applications. In re Olin, 124 USPQ2d at 1334

There was no evidence that applicant's financial services were related "in any way" to its outdoor-focused products and services, and so this argument also misfired.

Conclusion: The Board affirmed all of the refusals to register, but allowed applicant thirty days to submit the appropriate disclaimer of AMERICAN OUTDOOR BRANDS CORPORATION in the word-plus-design applications.

Read comments and post your comment here.

TTABlog comment: "Applicant, known until November 2016 as Smith & Wesson Holding Corporation, is the parent of Smith & Wesson Corp."

Text Copyright John L. Welch 2020.


At 5:50 PM, Anonymous TP said...

I'm curious how this compares to registered trademarks that passed 2(e)(2) such as "American Eagle Outfitters" describing retailers and  "American Creations" describing toys, namely dolls. Records of both registered marks indicate that the applicants are based in the US, in Nevada  and Michigan respectively and manufacture goods/services there. Consumers would believe that the goods originate in America.


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