Thursday, August 10, 2017

Is NUTTY NECKLACE Merely Descriptive of Necklaces Made of Stainless Steel Nuts? Not So Fast...

On August 5th, an individual in Pennsylvania filed an application to register NUTTY NECKLACE as a trademark with the U.S. Patent and Trademark Office. The application covers "necklaces" in Class 14 and indicates the mark has been in use since January 5, 2000.
The specimen submitted with the application (which is suppose to show how the mark is actually used in commerce and is seen above) indicates that this mark is used in conjunction with the sale of "hand-crafted jewelry using stainless steel nuts." Makes sense. But is it merely descriptive, and therefore not registerable on the Principal Register without a showing of acquired distinctiveness? See TMEP 1212; 15 USC 1052(f).

Typically, 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). However, if the mark is a "double entendre" in that it is a "word or expression capable of more than one interpretation" it will "not be refused registration as merely descriptive if one of its meanings is not merely descriptive in relation to the goods or services." TMEP 1213.05(c). For example, the mark NO BONES ABOUT IT was held not to be merely descriptive of boneless, pre-cooked ham given its double connotation. In re National Tea Co., 144 USPQ 286 (TTAB 1965).

Does NUTTY NECKLACE only describe a characteristic or quality of the necklaces? Or does it have another interpretation that is not merely descriptive, such as suggesting a quirky, non-traditional necklace? We'll find out what the Examining Attorney assigned to this application thinks in approximately three months.

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