Articles Tagged with TMEP 1210.05(b)

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A recent decision from the TTAB (Trademark Trial and Appeal Board or the Board) provides us with further guidance in an area that can be fraught with subtleties in trademark law. See In re Nature’s Youth, Inc., Serial No. 85747419 (March 13,  2014) [not precedential]. Here, the Examining Attorney did not submit enough evidence into the record to support its decision of refusal of the trademark application. The Board found that there was insufficient proof on the prong of “materiality”.  The TTAB could not uphold a refusal to register the mark based on the mark  being primarily geographically and deceptively misdescriptive.

The Applicant in this case is Nature’s Youth Inc. and it filed a trademark application with the United States Patent & Trademark Office (USPTO) to register the mark NY for cosmetics, face creams, and lotions for cosmetic purposes. The Examining Attorney refused the application on three grounds: (1) the mark was geographically deceptive; (2) the mark was primarily geographically deceptively misdescriptive; and (3) failing to comply with a request for information concerning the goods. The Applicant appealed this decision.

women-make-up-1378868-mThe test for determining whether a mark is either geographically deceptive or primarily geographically deceptively misdescriptive is the same.  See TMEP 1210.05(b) for the elements of a §2(e)(3) refusal. The Examining Attorney must submit proof into the record to demonstrate four criteria. The first is that the primary significance or meaning of the mark is generally a known geographic place. The TTAB agreed with the Examining Attorney on this prong. The Board held that “consumers viewing applicant’s proposed mark NY on or in connection with the identified goods will understand this as an abbreviation for New York.” See In re Nature’s Youth, Inc., Serial No. 85747419 (March 13, 2014) [not precedential].  Although the Applicant submitted evidence to show that the term “NY” had different meaning other than New York, the meanings were obscure and had no relationship to the goods identified in the trademark application.

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