Monday, December 28, 2020

TTABlog Test: Is SPIDER WOOD Merely Descriptive of Natural Wood Sculptures for Aquariums and Terrariums?

The USPTO refused to register the proposed mark SPIDER WOOD (not to be confused with Tiger Woods or Natalie Wood) for "Decorative ornaments in the nature of natural sculptures of wood for use in terrariums, animal habitats, bird cages, floral arrangements, and interiorscape installations," finding it merely descriptive of the goods under Section 2(e)(1). Applicant Petglobe argued that the mark is suggestive, not descriptive, because "the product is a tangled mass of wood roots used in animal habitats” that “does not have any other clear connection to spiders.” Petglobe's owner claimed that he “developed” the mark and was the first to use it, and so "any other industry usage of the SPIDER WOOD trademark for the same goods is an infringement of [Applicant’s] established unregistered trademark rights in this trademark". How do you think this appeal came out? In re Petglobe USA Inc., Serial No. 88640998 (December 15, 2020) [not precedential] (Opinion by Judge Marc A. Bergsman).

Examining Attorney Allison Holtz maintained that SPIDER WOOD is a type of tangled, decorative wood. She submitted numerous website excerpts referring to and offering for sale "spider wood" for terrariums and aquariums: for example: "Perfect for Aquariums and Terrariums - Spider-like limbs, great for climbing lizards and snake[s]." The Board concluded that "[t]he evidence shows that SPIDER WOOD is a type of driftwood used in aquariums to create a natural setting."

Petglobe's argument that “the addition of the word SPIDER’ before ‘WOOD’ makes the composite term ‘SPIDER WOOD’ a suggestive mark” was belied by the evidence. "Owners of terrariums, animal habitats, and birdcages in the market for 'decorative ornaments in the nature of natural sculptures of wood' who encounter the term SPIDER WOOD will immediately know that it is a type of driftwood without having to resort to a multi-step reasoning process, thought, or cogitation."

Likewise, Petglobe's assertion that it was first to use the mark was off target. "The fact that an applicant may be the first user of a merely descriptive designation does not justify registration if the only significance conveyed by the term is merely descriptive."

The Board therefore affirmed the refusal to register.

Read comments and post your comment here.

TTABlogger comment: How did you do? Is this a WYHA? BTW, should "aquariums" be "aquaria"?

Text Copyright John L. Welch 2020.


At 1:49 PM, Blogger Miriam Richter, Esq. said...

I think we need to coin a new term "descripticide"! I think if no one else had adopted it, it would have been registrable. It doesn't necessarily look like a spider or have anything to do with spiders (unless they are in the terrariums!) and if he were the only source, and had enforced or registered it at the outset, he would have gotten the registration. You snooze you lose!

At 12:30 AM, Anonymous tonac63 said...

Maybe a more delinated goods ID would have given the Board pause to consider (or reconsider). As it stood, the goods ID was in itself the giveaway. The arguments by the applicant were not only subjective, but weak (saw there he was going, but never assume ...) JLW - loved the NTBC blurb! Classic!


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