Thursday, April 16, 2020

TTABlog Test: Is SPIKE Merely Descriptive of Clothing and Leather Goods?

The USPTO refused to register the mark ROCKSTUD SPIKE for various clothing items and leather goods, absent a disclaimer of the word SPIKE. Applicant Valentino contended that the ornamentation on its products did not meet the definition of "spike," it pointed to 19 issued registrations for marks containing the word SPIKE without disclaimer, and it also argued that its mark is unitary and therefore no disclaimer is required. How do you think this appeal came out? In re Valentino S.P.A., Serial No. 79228160 (April 15, 2020) [not precedential] (Opinion by Judge Jyll Taylor).

Examining Attorney Karen S. Derby maintained that "spike" merely describes a feature of applicant's goods, relying on a dictionary definition ("Any long pointed object can be referred to as a spike"), third-party websites that use the word to describe embellishments or ornamentation of some of the identified goods, and articles describing applicant's goods as featuring spikes.

Applicant Valentino argued, of course, that "spike" is merely suggestive of the goods, that the USPTO did not meet its burden of proof, and that doubts as to descriptiveness must be resolved in its favor.

Valentino asserted that its goods do not include "long" pieces of metal that are sharply pointed, but that argument fell flat. The Board noted that the ornamentation on applicant's goods have metal pieces that "taper to a point or edge and have an elongated shape in relation to the flat surface on which they are attached," which satisfies the definition of long ("having a greater length than breadth: ELONGATED") and sharp ("[t]apering to a point or edge").

As to the third-party registrations, the Board found that, with one exception, those marks have unique meanings (SPIKE ISLAND) or are unitary (e.g., SPIKESMIND, JUSTSPIKES). The registration for the single word SPIKE did not convince the Board "that the USPTO has found the word “spike” to be distinctive when used in connection with any of the clothing items identified in Applicant’s application."

Furthermore, the Board rejected Valentino's "unitary mark" argument, finding no evidence that "the combination of the terms ROCKSTUD (a compound term made up the words “rock” and “stud”) and SPIKE creates a phrase with a singular impression in the minds of purchasers." It noted that the term SPIKE is used descriptively in the cited articles discussing applicant's goods, without accompaniment by the term ROCKSTUD.

Finally, Valentino's ownership of a registration for the mark # I ♥ SPIKE for virtually identical goods was not relevant because that prior mark is a unitary phrase or slogan.

The Board had no doubt that the word SPIKE in the proposed mark ROCKSTUD SPIKE is merely descriptive of the goods and must be disclaimed. Therefore it affirmed the refusal to register, but it allowed the applicant thirty days to submit a disclaimer of SPIKE.

Read comments and post your comment here.

TTABlog comment: How did you do? Is this a WYHA?

Text Copyright John L. Welch 2020.


At 7:01 AM, Blogger Gene Bolmarcich, Esq. said...

Why is it that extrinsic evidence is allowed for purposes of refusing a mark but not by an applicant for purposes of trying to rescue it? In a case like this, what if the mark (let's assume it was just SPIKE) is assigned to a company that just likes the word SPIKE but has no desire to sell "spiked" apparel? What about the reverse scenario? Would a "spiky shoe" assignee of the registration be able to claim the benefits of the registration or is the assignment perhaps void?


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