Thursday, June 13, 2024

TTABlog Test: How Did These Three Section 2(e)(1) Mere Descriptiveness Appeals Turn Out?

So far this year, the Board has affirmed about 90% of the Section 2(e)(1) mere descriptiveness refusals reviewed on appeal. Here are three more. How do you think they came out? [Results in first comment].

In re Skechers U.S.A., Inc. II, Serial No. 90701471 (June 10, 2024) [not precedential] (Opinion by Judge Peter W. Cataldo). [Mere descriptiveness refusal of WORKOUT WALKER for footwear and a host of apparel items. Applicant argued that the mark is incongruous because walking is not perceived as exercise.]

In re The Vita Coco Company, Inc., Serial No. 97081204 (June 7, 2024) [not precedential] (Opinion by Judge Christen M. English) [Refusal to register THE HANGOVER SHOP for “On-line retail store services featuring drinks, beverages, snack foods, prepared meals, and headache treatment preparations" (SHOP disclaimed). Applicant argued  that the Examining Attorney conducted a “multistep reasoning process to conclude that the term ‘hangover’ in Applicant’s mark actually means ‘hangover relief,” pointing to the evidence showing that “the vast majority of the actual terms being used are ‘hangover relief,’ ‘hangover cure,’ and ‘hangover remedy’ – and not ‘hangover’ alone.]

In re Ralph Birchard Lloyd, Serial No. 97464017 (May 31, 2024) [not precedential] (Opinion by Judge Thomas W. Wellington) [Mere descriptiveness refusal of the proposed mark DISINFECTION AS A SERVICE for "Providing automated disinfection and sanitization services for medical devices, rooms, plumbing fixtures, and laundry, such services using chemical disinfectants, UV radiation, air filtration, and combinations." Applicant argued that "the mark cannot describe the function or purpose of Applicant’s services with any degree of precision, because the terms DISINFECTION and SERVICE are capable of several different possible meanings, such that the meaning of the mark cannot immediately be ascertained."]

Read comments and post your comment here.

TTABlog comment: How did you do? See any WYHA?s

Text Copyright John L. Welch 2024.


At 6:08 AM, Blogger John L. Welch said...

All three were affirmed.

At 8:10 AM, Blogger Gene Bolmarcich, Esq. said...

Still waiting for an "All three were reversed". I won't hold my breath

At 8:18 AM, Blogger Gene Bolmarcich, Esq. said...

I just don't see how a mark like WORKOUT WALKER is merely descriptive. It is absolutely incongruous. Walking is not a workout, unless you are 95 years young (and if it technically IS a workout, then it takes some imagination to assume it's at least a brisk walk) . The line has definitely moved and I don't know why. Yes, it has SOME meaning but is is MERELY descriptive. It seems o be to almost be a classic example of a suggestive mark. Is not the alliteration and the "clumsy" grammatical structure not enough to make it suggestive. I find myself losing credibility with clients when I have to tell them that marks like these are going to be refused. Very few clients want a mark like ABCXYZ for their consumer product.

At 10:18 AM, Anonymous Anonymous said...

no surprises

At 11:59 AM, Blogger Scott Brown said...

Everything is descriptive now.

At 2:02 PM, Anonymous Valerie N said...

Kind of no brainers, right?

At 2:47 PM, Blogger Pamela Chestek said...



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