A divided TTAB panel affirmed a Section 2(e)(1) refusal of the mark 19 CRIMES, finding it merely descriptive of video and audio works and production, distribution, and rental of recorded entertainment. The panel majority agreed with Examining Attorney Tracy Fletcher that the mark “immediately tells consumers about a feature of [the] goods and services, namely, that the information and entertainment provided relates to the 19 crimes of 18th and 19th Century Britain that led to involuntary colonization in Australia.” In re Southcorp Brands Pty Limited, Serial No. 88310184 (December 17, 2019) [not precedential] (Opinion by Judge Peter W. Cataldo; dissenting opinion by Judge Jonathan Hudis).

Applicant argued that the term 19 CRIMES falls on the suggestive side of the descriptiveness/suggestiveness divide because it does not immediately convey any information about applicant’s goods and services. The term 19 CRIMES refers to the crimes that resulted in exile to Australia. Although the subject matter of one or more of applicant’s films may be related to this time in history, the subject matter of applicant’s intended products and services is the unique stories of several “incorrigible rogues” who were exiled or transported upon being convicted of one of those crimes.

The Board pointed out that the mark at issue must be considered not in a vacuum, but in the context of the identified goods and services. Applicant’s identification of goods and services is broadly worded, and encompasses works on the subject of the nineteen crimes that resulted in a sentence of transportation to Australia. Therefore the mark 19 CRIMES is merely descriptive of the goods and services.

Applicant argued that, since its goods and services will relate to the individuals transported to Australia, the mark is suggestive because it does not immediately or directly describe any feature, characteristic, or quality of those goods and services. Imagination, thought, or perception is required to make any connection. The Board disagreed, but in any case observed that applicant’s mark “merely describe[s] the nineteen crimes themselves under the broadly stated subject matter of Applicant’s goods and services.”

Therefore the panel affirmed the refusal.

Judge Hudis, in dissent, opined that the majority misapplied the law, considered inadmissible evidence, and relied on a theory not advanced by the examining attorney during briefing.

In his view, the majority’s opinion was “grounded upon subjective abstractions and guesswork (that is, what applicant’s goods and services could ‘encompass'”). Moreover “only a small sliver of the relevant purchasing public ‘might’ have some idea (if any) of the content of Applicant’s Class 9 and 41 Goods and Services based on the 19 CRIMES mark – university educated individuals with a major or concentration in 19th Century British history.” In short, the mark does not immediately inform the consumer about the content of applicant’s goods and services.

Finally, Judge Hudis found it unfair that the majority relied, in his view, on a theory (namely, that the mark is merely descriptive, generally, as to the recited goods and services) to which applicant did not have an opportunity to respond.

Judge Hudis found this to be, at best, a close case, and therefore the mark should have been found to be suggestive and should have been published for potential opposition, since any doubt as to registrability as to descriptiveness should be resolved in favor of the applicant.

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TTABlog comment: Which side are you on? Do you expect an appeal of this one?

Text Copyright John L. Welch 2019.