The Board affirmed a bifusal (TM) of the proposed mark 100% REAL CALLINECTES CRAB FROM NORTH AMERICA & Design (shown below) for crabmeat, on the grounds that (1) Applicant Ocean Technology failed to comply with the examining attorney’s Rule 2.61 demand for information, and (2) the phrase fails to function as a trademark for applicant’s goods. In re Ocean Technology, Inc., Serial No. 87405151 (July 18, 2019) [not precedential] (Opinion by Judge Cindy B. Greenbaum).

Rule 2.61 Request for Information: Under Rule 2.61(b), an examining attorney “may require the applicant to furnish such information, exhibits, affidavits or declarations . . . as may be reasonably necessary to the proper examination of the application.” Examining Attorney Cameron McBride required that Ocean Technology explain whether its goods “do or will consist of 100% real Callinectes crab from North America,” pointing out that registration may be refused as deceptive or deceptively misdescriptive if the answer were no.

Ocean Technology maintained that when it amended its identification of goods to “crabmeat,” the examining attorney’s demand for further information was moot. Not so, said the Board. It found the requirement for information to be reasonably necessary to proper examination of the application since it directly related to the possibility of additional grounds for refusal. The Board therefore affirmed this refusal.

Failure-to-Function: The Board nevertheless went on to consider the failure-to-function refusal under 1, 2, and 45 of the Lanham Act. The question, of course, was how the proposed mark would be perceived by the relevant public. To make that determination, the Board looks at the specimens of use and evidence showing how the terms are actually used in the marketplace. Terms and expressions that merely convey information are not registrable.

The examining attorney submitted printouts from numerous third-party websites that he characterized as “showing use of the same or effectively synonymous terms to inform purchasers of the quality, ingredients and geographic origin of the products.” Moreover, the Board observed, the proposed mark as displayed on Ocean Technology’s specimen of use (below) “simply informs purchasers that the package contains 100% pure Callinectes crabmeat from North America.” The Board found this evidence sufficient to support a failure-to-function finding.

Ocean Technology argued that the phrase is suggestive and capable or identifying source, but the Board found that argument “inapposite.”

The standard for a failure-to-function refusal is not whether the proposed mark is suggestive rather than descriptive, but whether the relevant public will recognize it as a trademark identifying only one source.

Ocean Technology had attempted to overcome this refusal by amending to the Supplemental Register, by claiming acquired distinctiveness, and by asserting inherent distinctiveness. However, the Board pointed out, matter that does not indicate source cannot be registered because it does not meet the statutory definition of a mark. See Sections 1, 2, and 45 of the Lanham Act.

In sum, the Board found that the proposed mark would not be perceived as identifying a particular source. The stylization and minimal background design does not alter the perception of the mark as a whole. “Applicant’s evidence is insufficient to demonstrate that consumers recognize the applied-for mark as indicating the source of the identified goods rather than as merely informational.”

And so the Board affirmed this second refusal.

Read comments and post your comment here.

TTABlog comment: Shouldn’t the Board consider applicant’s evidence of acquired distinctiveness in deciding whether the mark fails-to-function as a mark in the first place? Wouldn’t that evidence be relevant as to how the consumers perceive the term?

Text Copyright John L. Welch 2019.