Wednesday, July 14, 2021

TTABlog Test: Must AQUACHAR be Disclaimed in AQUACHAR & Design for Water Filtration Products?

The USPTO refused to register the mark shown below for "water filtration products, namely, carbon-based filtration media for use in water treatment, aquariums, and other devices, and systems," absent a disclaimer of the term "AQUACHAR." The Examining Attorney relied on, inter alia, definitions of "aqua" (water") and "char" (a charred substance: "CHARCOAL") in maintaining that AQUACHAR describes a characteristic of the products. Applicant submitted negative dictionary evidence showing no definition for AQUACHAR. How do you think this came out? In re Acquachar, LLC, Serial No. 88539430 (July 9, 2021) [not precedential[ (Opinion by Judge Albert Zervas).
The Board first observed that consumers are likely to perceive "AquaChar" as two individual components, "aqua" and "char." The first term will connote "water," given the unequivocal definition, the reference to water in the tag line, and the fact that the goods are used for water filtration. As to the word "char," the Board found that three definitions were relevant.

The first defined "char" as "charcoal," and two websites discussed "activated charcoal" for water filtration. However, there is a difference between activated charcoal and charcoal. Special manufacturing techniques must be applied to turn charcoal into activated charcoal. The Board therefore found that "charcoal" is not "a term that would immediately come to mind when considering Applicant's goods which make use of activated charcoal."

Applicant does not refer to "char" in its advertising, but to "activated charcoal." "A vague suggestion of a feature or characteristic of Applicant's goods is insufficient to establish mere descriptiveness." 

A second definition of "char" is "a charred substance." Some webpages use "char" in the context of filtration, but they make clear that the char is further treated to create activated charcoal. "Because the char itself is not used in filtration, . . . any association of CHAR meaning 'a charred substance' in the context of Applicant's goods requires thought or conjecture."

The third definition refers to "char" as a verb meaning "to convert to charcoal or carbon usually by heat: BURN." There was no evidence of use of "char" as a verb in the context of water filtration.

In sum, while the term “char” has three meanings relevant to Applicant’s goods, none of them immediately describe, without thought or conjecture, a feature or characteristic of Applicant’s identified goods.

And so the Board reversed the refusal to register.

Read comments and post your comment here.

TTABlogger comment: Do you agree with the Board's decision? BTW, there's a fish called the Arctic Char. So what, you might ask.

Text Copyright John L. Welch 2021.


At 10:35 AM, Blogger TMAttorneyHeller said...

Just seeing the trademark did not tell me what the product was. Once that was revealed then I thought the mark was merely descriptive of the product.

At 10:59 AM, Anonymous Anonymous said...

I agree wholeheartedly with the result here. And if the Board's jurisprudence on mere descriptiveness wasn't such a mess, then it wouldn't have to go to such contortions as this decision.


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