New York Trademark Attorney Blog
One week ago in a precedential opinion, the TTAB affirmed the Examining Attorney’s refusal of the mark TOURBILLON & Design filed by The Swatch Group Management Services AG (hereinafter either “Applicant” or “Swatch”). The proposed trademark TOURBILLON & Design was seeking registration for “jewellery, horological and chronometric instruments” in International Class 14. See In re The Swatch Group Management Services AG, Serial No. 85485359, April 18, 2014 [precedential]. The basis for the refusal was Section 2(e)(1) of the Trademark Act on the ground that the trademark was merely descriptive of its goods. A term is merely descriptive of goods or services if it communicates to consumers an immediate idea of a quality, ingredient, characteristic, feature, purpose, function, or use of the goods or services. See In re Chamber of Commerce of the U.S., Serial No. 675 F.3d 1297, 102 USPQ2d 1217, 1219 (Fed. Cir. 2012). See also our blog post entitled King.com Limited Abandons Its Federal Trademark Application For Candy, where we discuss how merely descriptive marks may be registered on the Supplemental Register.
Whether a mark is merely descriptive is determined in relation to the goods and services as identified in the trademark application. A finding that a trademark is merely descriptive is a factual finding. This determination must be based on substantial evidence. See In re Bayer Aktiengesellschaft, 488 F.3d 960, 82 USPQ2d 1828, 1831 (Fed. Cir. 2007). It is important to keep in mind that the question to ask when evaluating a term for descriptiveness is whether someone who knows what the goods and services are will understand the mark to convey information about the goods and services. See DuoProSS Meditech Corp. v. Inviro Medical Devices, Ltd., 695 F.3d 1247, 103 USPQ2d 1753, 1757 (Fed. Cir. 2012). Often, applicants believe that the central inquiry is whether someone presented with the mark could guess what the goods and services are; however this is incorrect.
Swatch’s trademark consisted of the word “Tourbillon” and a design of a tourbillon. The Examining Attorney submitted into evidence an excerpt from wikipedia.org that essentially stated that a “Tourbillon” was an addition to the mechanics of a watch escapement. The Applicant admitted that the term Tourbillon described a mechanism that is part of the escapement found in highly specialized watches. There were also several other descriptions admitted into the record by the Examining Attorney, all consistent with the definition cited in wikipedia.org. Moreover, Applicant voluntarily entered a disclaimer of the exclusive right to use Tourbillon apart from the mark as shown (then later tried to restrict it to only certain goods). This evidence is incredibly persuasive because the applicant by admission acknowledged that the term lacked distinctive value for the goods identified in the trademark application.
Regarding the design element of the mark, the central inquiry is whether the design is merely an illustration of one’s product or service. The question that the Board wanted answered was whether the design element conveyed an immediate idea of a feature or characteristic of the goods. The Board found that it did communicate an idea in connection with a significant feature of the goods. The Applicant admitted that the design represented a tourbillon and the Board had already determined that the term Tourbillon describes goods within the scope of the Applicant’s trademark application. Swatch also admitted that the design in its trademark depicted several mechanisms included in some of its watches. The Applicant’s argument was that it was not an exact representation of the mechanism. A design does not need to be a realistic and accurate depiction to be found to convey a feature of the goods.
The Board concluded that the design consisted of a representation of a tourbillon and did not contain additional elements that were distinctive or suggestive. The TTAB disagreed with the Applicant’s argument that the design element created a separate commercial impression from the words. To the contrary, the Board found that the design strengthened the impact of the word element of the mark and did not create a different connotation or impression. Therefore, the Board affirmed the refusal of TOURBILLON and Design based on the grounds it was merely descriptive of the goods.
I am curious why the Applicant did not argue that the average consumer would not have necessarily known what a tourbillon was and would not have recognized a depiction of the mechanism. By the Applicant’s admission, this mechanism was found in highly specialized watches. The descriptiveness test requires one to make the determination based on the significance the term would have to the average purchaser of the goods. I believe the Examining Attorney would have been at a disadvantage to rebut that argument. In other words, the Examiner would have had to prove that Swatch’s typical purchasers were highly sophisticated consumers. At our firm, we counsel our clients to select distinctive and inventive trademarks and to avoid using descriptive terms as trademarks. Please feel free to contact one of our NY trademark attorneys should you have questions regarding trademark law or visit our firm site at www.trademarklawesq.com to learn more about our practice.