Friday, July 23, 2021

TTABlog Test: Is "BEAUTY SG" Primarily Geographically Descriptive of Cosmetics and Supplements?

The USPTO refused to register the proposed mark BEAUTY SG for cosmetics and dietary and nutritional supplements [BEAUTY disclaimed as to cosmetics], on the ground that the mark is primarily geographically descriptive of the goods under Section 2(e)(2). Examining Attorney Chioma (Bata) Oputa contended that BEAUTY is descriptive of the goods and SG is "substantially synonymous" with Singapore. Applicant Shim Phyau Min argued that BEAUTY merely suggests a desired outcome from use of the supplements, and SG is an abbreviation for many terms besides Singapore. How do you think this came out? In re Shim Phyau Min, Serial Nos. 88255234 and 88258789 (July 21, 2021) [not precedential] (Opinion by Judge Michael B. Adlin].

A mark is primarily geographically descriptive under Section 2(e)(2) if  "(1) the primary significance of the term is the name of a place known generally to the public; (2) the public would make a goods/place association, i.e. believe that the goods for which Applicant seeks registration originate in that place; and (3) the source of the goods is the geographic region named in the proposed mark."

The examining attorney relied on various reference works that state that SG is an abbreviation for Singapore, dictionary definitions of "cosmetics," third-party website pages using the word "beauty" to describe their cosmetics and supplements, and evidence that a number of Singapore companies offer cosmetics and other beauty products, with some of them using names, marks, or descriptors that include BEAUTY or SG, or both.

Applicant pointed out that SG may also refer to the chemical element Seaborgium, Specific Gravity, Solicitor General and surgeon. She claimed that she uses SG in her mark not to refer to Singapore, but instead as an acronym for "serums and gels." Finally, she maintained that Singapore is a tiny country, not generally known to relevant American consumers. 

The Board found that the primary significance of SG in Applicant’s proposed mark is Singapore. Although SG may have other meanings, none of the meanings in the record related to cosmetics or supplements. "Thus, we find that relevant consumers will perceive the SG element of Applicant’s mark as referring to Singapore, Applicant’s domicile and the term’s first meaning according to reference works." In fact, Applicant's Facebook page makes clear that SG refers to Singapore. And the abbreviation SG for Singapore is "widely used by many Singapore websites, the domain name system generally, the United Nations and ISO, news organizations, and, significantly, Applicant’s competitors in, and media reporting on, the Singapore beauty industry."

The evidence showed that a substantial number of relevant United States consumers are familiar with Singapore, "as they likely would be with any of the 'world’s greatest commercial centers.'"

The Board had not doubt that "beauty" is descriptive of supplements The record evidence showed that "'beauty supplement' is essentially a term of art in the industry to refer to dietary and nutritional supplements intended to improve skin, hair or nails or otherwise enhance one’s beauty."

As to the second element of the Section 2(e)(2) test, because the applicant resides in Singapore, the Board presumed that relevant consumers would believe that the involved goods originate in Singapore. The evidence "bolstered this presumption" because it revealed "not only that Singapore’s beauty industry is 'thriving' and 'lucrative,' but that 'SG beauty brands' also use the terms SG and BEAUTY for their hair, nail and skincare goods."

Finally, Singapore is the actual source of the applicant's goods, satisfying the third element of the test.

The record leaves no doubt that Singapore, often referred to by the recognized abbreviation SG, is known generally to Americans; and Applicant’s beauty focused supplements, and cosmetics and hair, nail and skincare products originate there. Other providers of beauty products that compete with Applicant have a "legitimate interest … in truthfully being able to use [the geographic abbreviation SG] to inform the public of the origin of their similar products."

And so the Board affirmed the refusal to register.

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TTABlogger comment: Is this a WYHA?

Text Copyright John L. Welch 2021.


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