Put a Sock in Informational Refusals?

Now that we’re back in the blogging business, I’m anxious to be able to harvest some visual trademark stories captured on my iPhone over the past 7 months:

Are you surprised to see the federal registration symbol marking World’s Softest?

After all, the phrase seems to communicate important information about the socks in question, as does the federally-registered slogan: Like Walking on Clouds!

Turns out, not only has the sock maker registered World’s Softest Sock for socks, it has registered different versions of “World’s Softest” 5 different times in 13 years!

In fact, the 2005 registration reveals a claim of partial acquired distinctiveness in the wording “World’s Softest” — avoiding the descriptive disclaimer requirement.

The 2004 registration shows acquired distinctiveness as to the combination of all three words (at another time we’ll tackle that “Sock” doesn’t appear in the photo).

Given that those registrations issued about fifteen years ago, one might wonder how they’d fare today with the heightened focus on informational matter.

This is a common basis for registration refusal nowadays: “Merely informational matter fails to function as a mark to indicate source and thus is not registrable.”

In August, Eddie Bauer lost an appeal to the TTAB, affirming a refusal of “World’s Best Down” as “incapable” of being a trademark for bedding containing down.

Eddie Bauer already had a Supplemental Registration for the same mark for clothing with down, so in 2008 it was treated as merely descriptive, but capable.

To be clear, the federal trademark statute doesn’t include the terms “laudatory”  or “informational,” it does, however, provide direction for descriptive and generic.

Of course, many valid trademarks communicate “information” beyond source, for example, suggestive marks or descriptive ones that have become distinctive.

In fact, the assigned Examining Attorney was clearly persuaded in 2004: “World’s Softest” is not incapable of serving the important purpose of a sock trademark.

Both registrations (2004 and 2005) issued despite the Examining Attorney’s initial reliance on the Federal Circuit’s 1999 decision that “The Best Beer in America” is so highly laudatory that it is incapable of serving as a valid trademark.

At the risk of adding more fuzz on this sock discussion, during prosecution of a pair of World’s Softest & Design registrations (here 2012, and here 2013), World’s Softest was considered merely descriptive and disclaimed, but not incapable.

Moreover, as to the very phrase “World’s Softest,” third parties beyond the above purveyor of socks also enjoy registered rights in marks containing the phrase for bedding (2019 Supplemental Registration), plush toys (acquired distinctiveness in 2019), and towels and sheets ( 2018 Supplemental Registrations) — not incapable.

Back to the Eddie Bauer example, the TTAB was not moved from its conclusion of incapability even though the record showed more than 50 issued registrations for “World’s Best” formative marks, seemingly indicating some level of capability.

So, I’m left wondering, is “World’s Softest” materially different from “World’s Best,” as to the risk of informational/incapability, or are we witnessing subjectivity and different treatment by different Examining Attorneys, or something else?

And, when responding to an informational incapability refusal by pointing to other comparable marks that have been allowed registration, is this canned USPTO response a polite and perhaps more formal way of saying, put a sock in it?

However, prior decisions and actions of other trademark examining attorneys in registering other marks have little evidentiary value and are not binding upon the USPTO or the Trademark Trial and Appeal Board.  TMEP §1207.01(d)(vi); see In re USA Warriors Ice Hockey Program, Inc., 122 USPQ2d 1790, 1793 n.10 (TTAB 2017). Each case is decided on its own facts, and each mark stands on its own merits. In re USA Warriors Ice Hockey Program, Inc., 122 USPQ2d at 1793 n.10 (quoting In re Boulevard Entm’t, 334 F.3d 1336, 1343, 67 USPQ2d 1475, 1480 (Fed. Cir. 2003)).

Here’s a question for trademark types: Is the TTAB’s Eddie Bauer decision more or less likely to encourage Examining Attorneys to raise informational incapability?

And for our engaging marketing types, is this mess of unmatched socks, yet one more reason to favor inherently distinctive and suggestive marks?

Last but not least, can we agree that we’re on a path frustrating to both groups? It’s no walk in the park, but even more importantly, it’s no walk on clouds either.

The post Put a Sock in Informational Refusals? appeared first on DuetsBlog ®.