New York Trademark Attorney Blog
The Trademark Trial and Appeal Board (hereinafter the “Board”) rendered an interesting decision involving Section 2(a) of the Trademark Act and a famous pop singer’s clothing line. Gwen Stefani, one of the judges on the popular T.V. show The Voice has been battling a refusal issued by the United States Patent & Trademark Office (USPTO). Gwen Stefani’s company (the Applicant) appealed the refusal and twice sought reconsideration. After the Examining Attorney denied both requests for reconsideration, the appeal followed. The Applicant applied for the mark L.A.M.B. in International Class 25 for different apparel items, footwear and headwear. The refusal was based on the ground that the mark is deceptive for the identified goods. The Examiner’s argument is that consumers would be deceived into thinking that the clothes are made out of lambskin. See In re LAMB-GRS LLC, Serial No. 77756492 (September 30, 2014).
Pursuant to Section 2(a) of the Trademark Act, an application must be refused if a mark is deceptive of a characteristic or feature of the identified goods or services. The test for determining if a mark is deceptive has been delineated in In re Budge, 857 F.2d 773, 8 U.S.P.Q.2d 1259, 1260 (Fed. Cir. 1988), aff’d 8 U.S.P.Q.2d 1790 (TTAB 1987). The areas of inquiry are as follows:
- Is the term misdescriptive of the character, quality, function, composition, or use of the goods?
- If so are relevant consumers likely to believe that the misdescription actually describes the goods?
- If so is the misdescription likely to affect a significant portion of the prospective purchasers’ decision to purchase the goods?
Section 2(a) bars registration on the Principal Register and the Supplemental Register. Therefore, continuous and long use of the mark in commerce cannot overcome the refusal on that basis alone. However, evidence of duration of use and recognition by consumers can be considered when evaluating the first two prongs of the test. This type of evidence was considered in the case of In re Woolrich Woolen Mills, Inc., 13 USPQ2d 1235 (1989). The applicant sought registration for the mark WOOLRICH for clothes not made of wool. In this case, the mark was found not to be deceptive since there was strong consumer and trade recognition of the term WOOLRICH as a trademark due to the duration of the applicant’s use.
In Gwen Stefani’s appeal, the Board used the Budge test in its analysis and in doing so considered the fact that the Applicant had released her first solo album under the name “LOVE ANGEL MUSIC BABY” and soon thereafter launched a clothing line under the brand L.A.M.B. There was evidence submitted to demonstrate that the Applicant had been selling the goods identified in the application for approximately seven years. By May of 2011, the goods had generated $175 million in gross retail sales. Applicant also invested $3 million in advertising and promoting her apparel line. The Applicant’s argument is that consumers perceive the L.A.M.B. mark as an acronym for LOVE ANGEL MUSIC BABY.
Several other marks for the term L.A.M.B. have been registered with the USPTO by the Applicant for such goods as watches, handbags, shirts, and buttons for clothing. Evidence was submitted to show that the L.A.M.B mark was perceived by purchasers as an acronym and a brand and not as the word lamb. Examples of this evidence included an excerpt from Wikipedia, declarations from the Applicant’s manager, an image of Applicant’s website, and articles from various unsolicited media sources.
The Board noted that the Examining Attorney failed to meet its burden, but found the Applicant’s evidence to be persuasive. The evidence demonstrated that the consumers of Applicant’s goods perceived its L.A.M.B. mark as an acronym with an arbitrary meaning. In the end, the Board reversed the refusal to register Applicant’s mark on deceptive grounds. It can be difficult to persuade the Board to reverse an Examiner’s refusal, but in this case there was ample documentation submitted into the record to demonstrate that the Examining Attorney was incorrect in its findings. The Applicant was wise to appeal. If you receive a refusal and need assistance in evaluating whether to submit substantive argument in a response to Office Action, request reconsideration or to appeal to the Board, please contact our offices for a courtesy consultation.