Thursday, March 07, 2024

TTABlog Test: Is MOTO CLUB INTERNATIONAL Merely Descriptive of Bumper Stickers and T-Shirts?

The USPTO refused to register the proposed mark MOTO CLUB INTERNATIONAL, deeming it merely descriptive of "decals; sticker; bumper stickers" and of "beanies; headwear; pants; shirts; sweaters; sweatshirts; t-shirts; hooded sweatshirts; jackets; long-sleeved shirts; tank tops" under Section 2(e)(1) [MOTO or INTERNATIONAL disclaimed]. The examining attorney maintained that the mark "merely describes a feature and the intended user or provider of applicant’s goods," because the products are motorcycle-themed and are available on the Internet. How do you think this appeal came out? In re Moto Club International, LLC, Serial No. 90715523 (March 5, 2024) [not precedential] (Opinion by Judge Mark A. Thurmon).

The Board began by "noting the obvious:" the mark does not directly describe the goods since they are not sold by or to members of an international motorcycle club. Moreover, applicant is not a club. However, the Board agreed that if the mark describes "a feature of the goods, the intended or expected users/purchasers of the goods, or something significant about the source of the goods, the mark may be merely descriptive."

The examining attorney offered two rationales: applicant's products are motorcycle-themed, and the goods are "international" because they are sold on the Internet without a geographical restriction to the United States. The Board, however, noted the lack of evidence of international promotion of the mark, and there was nothing about the motorcycle theme that suggested an international nature for the goods.

[W]e find the word “international” technically describes something about the goods, but there is no evidence relevant consumers are aware of this fact. Without that connection, we cannot find the word “international,” as used in this mark, is understood as descriptive by consumers.

The Board further observed that the word “international" modifies “moto club,” so relevant consumers are likely to understand the mark as a reference to an international motorcycle club. In that light, the examining attorney’s position that "international" refers to the fact that some purchasers of the goods reside outside the United States "makes little sense."

The other basis for the refusal - that the mark describes "the intended user” of the goods - was unsupported by any evidence that consumers interested in clothing, decals and stickers with a motorcycle theme, think of themselves are being part of a MOTO CLUB. "That is a step too far."

The meanings of “moto” and “club” and “international” do not come together to form a descriptive meaning of the mark as a whole. Instead, these words support different meanings in this case. When a multi-step analysis is used, that analysis must come together, it cannot continue to point in different directions. That is what happened here. It takes too much effort to tie together the disparate threads of analysis relied upon by the Examining Attorney in this case.

The Board found this to be a close case, but any doubt must be resolved in favor of the applicant. And so, the Board reversed the refusal to register.

Read comments and post your comment here.

TTABlogger comment: After 16 affirmances of mere descriptiveness refusal, this is 2024's first reversal.

Text Copyright John L. Welch 2024.


At 9:42 AM, Blogger Lawrence H. Binderow said...

John, a search of the USPTO database for the following:

WM:moto AND LD:true AND RD:* AND DS:moto AND IC:025 - yields 40 hits

WM:moto AND LD:true AND RD:* AND DS:moto AND IC:016 - yields 6 hits

WM:"club international" AND LD:true AND RD:* AND DS:club AND DS:international - yields 4 hits

If the mark MOTO CLUB INTERNATIONAL is not descriptive, then is it misdescriptive?

At 5:04 PM, Anonymous Catherine Cavella said...

I'm wondering if the rejection the Examiner was searching for was not descriptiveness but, rather, decorative use (not functioning as a trademark). If there's no MOTO CLUB INTERNATIONAL, then people presumably buy these because they like what's displayed, making the so-called mark more of an aesthetically functional design than a functioning trademark. Hence, the proper refusal would failure to function as a trademark. My two cents, fwiw.


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