TTABlog Test: How Did These Three Section 2(e)(1) Mere Descriptiveness Appeals Turn Out?
Last week, the TTAB ruled on the appeals from the three Section 2(e)(1) mere descriptiveness refusals, summarized below. Let's see how you do with them. Results will be found in the first comment.
Gulf Breeze Treatment Center, LLC, Serial No. 88934988 (April 15, 2022) [not precedential] (Opinion by Judge David K. Heasley). [Mere descriptiveness refusal of TELERECOVERY (in standard characters) for addiction treatment services, namely, drug and alcohol addiction counseling." Applicant argued that the Examining Attorney improperly assumed that it offers its addiction counseling services by telephone, when “[i]n fact, the services are provided via online communication."]
In re Gulf Breeze Treatment Center, LLC, Serial No. 88900074 (April 13, 2022) [not precedential] (Opinion by Judge David K. Heasley). [Mere descriptiveness refusal of TRAUMACARE (in standard characters) for "addiction treatment services; addiction treatment services, namely, alcohol addiction and chemical dependency treatment services; addiction treatment services, namely, substance abuse treatment services."Applicant asserted that "[t]he services to be provided under the mark will be limited to addiction treatment services, not to physical or psychological injuries. Therefore, the use of the term ‘trauma’ in the mark will only be suggestive."]
In re Love And Pieces LLC, Serial No. 90163005 (April 11, 2022) [not precedential] (Opinion by Cynthia C. Lynch). [Mere descriptiveness refusal of BOAT ERASERS in standard characters for a “Cleaning Sponge to remove scuffs and marks.” Applicant argued that "[l]ongstanding Board policy" provides that the term ERASER cannot be deemed descriptive.]
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TTABlog comment: How did you do? See any WYHAs here?
Text Copyright John L. Welch 2022.
posted by John L. Welch @ 4/18/2022
8 comments
8 Comments:
All three refusals were affirmed
yikes all three of those are dreadful. where’s the marketing department when you need them?
Boat Eraser is interesting to me. Syntactically it has some incongruity to it, as one would not normally expect to erase an entire boat with it… so, that’s the only one that stands out for me but I’d expect that to lose on appeal most of the time even with that position taken.
I should amend my prior comment; the appeal brief in BOAT ERASER did actually include incongruity arguments, though none of the cases that relied on incongruity to find the marks nondescriptive were cited for their determination on that basis.
I think BOAT ERASERS is not merely descriptive. The multi-stage thought to go from "erases boats" to "erases scuffs from boats" though short, is more than immediate in thought process. I think that position could have been better argued, but all of the substance was there.
I think this is a miss by the board.
I would appeal the BOAT ERASERS refusal. BOAT ERASERS functions as a unitary incongruous mark.
This made me laugh: "Applicant argues that its proposed mark is suggestive, not
descriptive, because its products “Do Not Literally Erase Boats.”17 Applicant
maintains that it requires imagination and thought for consumers to understand that
its products are cleaning sponges that remove dirt and marks from boats."
I agree. That is a laughable argument because it is so obvious that such could not be the meaning. Therefore the only plausible meaning could be something to clean boats.
I agree with Alex Johnson that there is clearly some incongruity with BOAT ERASERS, which is why Unknown and Anonymous find it funny. It shouldn't matter if the incongruity makes it obvious there is a different meaning. What they are describing is the trigger for the mental leap rendering the mark more than merely descriptive.
The incongruity is the strongest argument against "mere descriptiveness." As Alex says, the mental leap, however, short, is there and renders the mark more than MERELY descriptive. That's not to say it is not still descriptive, but the incongruity ought to be enough for it to at least acquire distinctiveness. MERE descriptiveness means it is incapable of acquiring distinctiveness, does it not? The humorous incongruity means it is more memorable than a merely descriptive mark, such as "SCUFF ERASER" or "MARK ERASER."
I would have made that argument along with an amendment to Supplemental, perhaps. That said, I agree all three of these are marks that I would have urged my clients to avoid in favor of less descriptive marks.
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