TTABlog Test: Is "EZ INSTALL SLEEVE" Merely Descriptive of Pipe Fittings?
The USPTO refused to register the proposed mark EZ INSTALL SLEEVE for "metal venting parts, namely, metal connector pipes for venting; metal pipes and fittings of metal for pipes; alignment pipes, namely alignment pipes of metal for venting" on the ground of mere descriptiveness under Section 2(e)(1). Applicant Duravent pointed to the lack of a dictionary definition of "EZ," asserted that its goods are alignment pipes, not "sleeves," and argued that the term "EZ" is ambiguous in meaning. How do you think this came out? In re DuraVent, Inc., Serial No. 90192019 (June 2, 2022) [not precedential] (Opinion by Judge Michael B. Adlin).
Examining Attorney April Roach submitted dictionary definitions of "easy," "install," and "sleeve," as well as a number of third-party uses of "EASY-INSTALL," or close variations thereof, for venting parts, pipes, and related products. She also provided evidence that "sleeve" is commonly used to describe goods that fall with applicant's identification of goods. And finally, she proffered six third-party registrations for marks including the term EASY INSTALL, in which registrations the term was disclaimed or the marks were registered on the Supplemental Register or on the Principal Register under Section 2(f).
Applicant contended that the proposed mark is merely suggestive because it has an ambiguous meaning open to various interpretations: "Does it mean 'as install'? Does it mean 'install an e and z'? Does it mean a type of 'install' such as an 'e and z' shape?'" [LOL - ed.].
The Board wisely found that EZ INSTALL SLEEVE immediately conveys information regarding a quality, feature, characteristic, or function of applicant's goods. The evidence showed that some metal pipe fittings and venting parts are known as "sleeves." Since EZ is merely the phonetic equivalent of "easy," and thus is essentially a synonym of "easy," the proposed mark informs consumers that the goods are not difficult to install. Several of applicant's competitors tout their pipe fittings as easy to install, and they should not be denied the opportunity to continue to do so. The proposed meanings of the mark offered by applicant "make no sense in the context of applicant's identified goods."
And so, the Board affirmed the refusal.
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TTABlogger comment: WYHA?
Text Copyright John L. Welch 2022.
posted by John L. Welch @ 6/07/2022
3 comments
3 Comments:
I thought the whole point of refusing marks because they are descriptive is so others can use the commonly used words without infringing a registered trademark. In this case, I do not think it is appropriate to say that EZ is equivalent to easy. If the proposed mark was EASY INSTALL SLEEZE, I would agree with this opinion. However the mark is EZ INSTALL SLEEZE. There are 136 active applications/registrations that use EZ in their mark in IC 6. Why wasn't EZ OIL DRAIN VALVE, EZ CAST, EZ LOCK, EZ HOOK, etc., similarly rejected? This seems unfair to this applicant. No one is prevented from using EASY INSTALL SLEEZE, just EZ INSTALL SLEEZE just like all the registered EZ marks in class 6.
Yes, I would have appealed.
The TTAB did not specifically address the applicant's argument that “if the Examining Attorney’s rationale is universally applied, it would prevent the usage of any mark similar to a clothing brand on a completely unrelated product under the theory that for just about any product category that exists, a mark holder can and does use [and register] apparel for promotion purposes (e.g. cars, candy, food products, sporting goods, musical instruments, firearms, law firms etc.)."
The bracketed addition is mine, although the language of the decision does not necessarily limit its applicability to cases where there are multiple registrations for a mark for apparel [or other merchandise used for promotion] and unrelated goods or services.
More generally, I am extremely troubled by the TTAB practice of finding goods and/or services to be related because a few companies have a registration for both. For example, in In re Duenas Mobile Applications, LLC, Serial No. 86/520,121 (June 13, 2018) (non-precedential), the Board found certain services related based on just five examples from the Internet showing that one company offered both. See also In re Axel Ltd. Co., Serial Nos. 85/473,757, 85/473,765 (TTAB Jan. 24, 2014) (non-precedential) (five third-party registrations)
I hope this applicant appeals to the Federal Circuit.
Mitch: I think you posted your comment on the wrong case.
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