Wednesday, January 4, 2017

Is HANDSOCKS Merely Descriptive or Suggestive of Mittens?

Here's a fun one. On December 30th, an entity named Handsocks, LLC filed a federal trademark application for the design seen below, the literal element of which is HANDSOCKS. The applicant filed the application in Class 25 for "mittens", listing a first use date of December 3, 2016.
A very clever mark, but is it merely descriptive?  Section 2(e)(1) of the Trademark Act prohibits the registration on the Principal Register of any mark that is merely descriptive of the goods or services to which it relates (without a showing of secondary meaning, that is). "A mark is considered merely descriptive if it describes an ingredient, quality, characteristic, function, feature, purpose, or use of the specified goods or services."  TMEP 1209.01(b). For example, BED & BREAKFAST REGISTRY has been held to be merely descriptive of lodging reservation services. In re Bed & Breakfast Registry, 229 USPQ 818 (Fed. Cir. 1986). In addition, APPLE PIE has been held to be merely descriptive of potpourri (which I'm assuming smelled like apple pie). In re Gyulay, 3 USPQ2d 1009 (Fed. Cir. 1987).

On the other hand, suggestive marks are legally strong and can be registered on the Principal Register without any proof of secondary meaning. Where merely descriptive marks immediately convey something about the underlying goods or services, suggestive marks require "imagination, thought, or perception to reach a conclusion as to the nature of the underlying goods or services." TMEP 1209.01(a). Additionally, the Trademark Trial and Appeal Board has noted that "somewhat incongruous word combinations whose import would not be grasped without some measure of imagination and 'mental pause'" is indicative of a suggestive mark. In re Shutts, 217 USPQ 363, 364-5 (TTAB 1983).

So what do you think?  Does HANDSOCKS immediately convey something about mittens? Or is it an incongruous word combination that requires some imagination and mental pause to determine the underlying goods? We'll find out what the Examining Attorney thinks when this is assigned to one in approximately three months.

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