No. 85365401 (T.T.A.B. Aug. 19, 2013)

Elliott Goldberg

Trademark Trial and Appeal BoardAug 19, 2013

No. 85365401 (T.T.A.B. Aug. 19, 2013)

THIS OPINION IS NOT A PRECEDENT OF THE TTAB Mailed: August 19, 2013 UNITED STATES PATENT AND TRADEMARK OFFICE _____ Trademark Trial and Appeal Board _____ In re Goldberg _____ Serial No. 85365401 _____ Roger J. Bernstein of the Roger J. Bernstein Law Firm, for Elliott Goldberg. Robert Clark, Trademark Examining Attorney, Law Office 101, Ronald R. Sussman, Managing Attorney. _____ Before Bucher, Lykos and Greenbaum, Administrative Trademark Judges. Opinion by Bucher, Administrative Trademark Judge: Elliott Goldberg (“applicant”), a U.S. citizen and resident of Scarsdale, NY, seeks registration on the Principal Register of the mark THE DONUT (in standard character format) for “therapeutic hot and cold therapy packs,” in International Class 10.1 1 Application Serial No. 85365401 was filed on July 7, 2011, based upon an allegation of applicant’s bona fide intention to use the mark in commerce. Serial No. 85365401 2 The examining attorney has refused registration on the ground that the term is merely descriptive under Section 2(e)(1) of the Trademark Act, 15 U.S.C. § 1052(e)(1). When the refusal was made final, applicant appealed and requested reconsideration. After the examining attorney denied the request for reconsideration, the appeal was resumed. We reverse the refusal to register. I. The Applicable Law A term is merely descriptive if it immediately conveys knowledge of a significant quality, characteristic, function, feature or purpose of the products it identifies. See, e.g., In re Chamber of Commerce of the U.S., 675 F.3d 1297, 102 USPQ2d 1217, 1219 (Fed. Cir. 2012); In re Gyulay, 820 F.2d 1216, 3 USPQ2d 1009, 1009 (Fed. Cir. 1987). Whether a particular term is merely descriptive is determined in relation to the goods or services for which registration is sought and the context in which the term is used. In re Abcor Development Corp., 588 F.2d 811, 200 USPQ 215, 218 (CCPA 1978); In re Remacle, 66 USPQ2d 1222, 1224 (TTAB 2002). In other words, the question is whether someone who knows what the services or products are will understand the mark immediately to convey information about them. In re MBNA America Bank N.A., 340 F.3d 1328, 67 USPQ2d 1778, 1780 (Fed. Cir. 2003). Serial No. 85365401 3 II. Arguments The examining attorney contends that when the term “Donut” is used in conjunction with applicant’s goods, it immediately conveys information about a significant characteristic of these “donut-shaped packs”; that each case must be decided on its own facts despite applicant’s repeated claims of inconsistent standards applied to analogous marks within the same industry; and that past treatment of the word “Donut” in marks in several third-party registrations supports his refusal herein. By contrast, applicant argues that this term as used in connection with the identified goods is suggestive, not descriptive; that the examining attorney has based this refusal on a “mistaken factual premise” that the involved product is shaped like a ring or a torus, when in fact applicant’s product is a sleeve that is closer to the shape of a cylinder; that the examining attorney has failed to meet his burden properly to show that “The Donut” is merely descriptive when applied to the identified goods; that by refusing this mark, the examining attorney is applying clearly inconsistent standards to competitors in the physical therapy products field; and that the Office should resolve substantial doubts in this case in applicant’s favor and publish the mark for opposition. III. The Evidence of Record Applicant identified his goods as “therapeutic hot and cold therapy packs,” and this application continues to be an intent-to-use application. 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Any d into its hen rolled n the case , arm or ns of an uccessive eve looks eve. register g dictiona ney quite . § 2.61(b) lly mentio sements.” produced a plastic ice uses a eating or y pack is ight). duct sizes , the exa ry entry f appropr to subm ning “fact ranging fr mining a or “donut” iately ask it addition sheets, om the one ttorney h : ed al as Serial No. 85365401 5 donut Definition of DONUT Variant of DOUGHNUT dough·nut noun Definition of DOUGHNUT 1 : a small usually ring-shaped cake fried in fat 2 : something (as a mathematical torus) that resembles a doughnut especially in shape 2 In the field of solid geometry, the most often pictured torus is a surface possessing a single “hole.” Indeed, as suggested with the second definition of “doughnut” above, the usual single-holed “ring” torus embedded in three- dimensional space is shaped like a donut, displaying in the very center a donut hole. Consistent with applicant’s detailed definitions of “torus” and his related arguments, a donut-shaped, single-holed “ring” torus is a surface of revolution generated by revolving a circle in three- dimensional space about an axis coplanar with the circle. The examining attorney provided examples of third-party trademark registrations where the word “Donut” is disclaimed within composite marks registered in connection with, for example, a set of silicone bake ware molds designed to make cakes in the shape of a giant doughnut, and in connection with cushions in International Class 20. Applicant, in turn, provided examples of third-party registrations where he argued competitors have registered similarly suggestive terms for related goods. 2 MERRIAM-WEBSTER’S COLLEGIATE DICTIONARY, drawn from http://www.merriam- webster.com/dictionary/donut Serial No. IV. A exam every bagel manu “doug goods “ring” shape revol to (2) or ev cylin irreg surfa equid like d torus involv A imme 85365401 Analysi s seen in t ining attor day items s, O-ring factured hnut” (or having t torus. H s involve ving surfa elliptical en to (3 der), or ularly-sha ces are n istant fro onut-shap ” seem to ed goods t ccordingly diately con s he exampl ney, toroi like doug s and a products. “donut”) m he shape owever, w cross-sec ces move (creating ) rectang finally, ped item ot round, m a cent ed, bagel us to mov o being no , we agre vey inform es gathere dal objects hnuts, spa variety o Hence, th ight well of a sing ith ware tions wh from (1) an ellipti ular (cre (4) wi – whe smooth ral axis – -shaped or e from be thing mor e with ap ation abo 6 d by the include re tires, f other e word describe le-holed s whose ere the circular c torus) ating a th an re the or even terms “ring ing merely e than sug plicant t ut these th descripti gestive of hat the w erapy pac ve of the them. ord “donu ks, and is shape of t t” does n deemed to he ot be Serial No. 85365401 7 suggestive. Based on this record, we disagree with the position of the examining attorney, and see no reason why competitors would need to use the word “donut” to describe a competing compression sleeve. In conclusion, we find that the examining attorney has failed to meet his burden of making out a prima facie case that applicant’s mark, THE DONUT, is merely descriptive of the goods for which registration is sought. Decision: The refusal to register applicant’s mark, THE DONUT, under Section 2(e)(1) of the Lanham Act is hereby reversed.