R. Griffith Thomas, Editor-in-Chief of Allen’s Trademark Digest, has filed the following report regarding the recent TTAB oral hearing in In re QVC, Inc.

During the 7th Annual ABA-IPL Trademark Day on Wednesday, September 18, 2019, the Board conducted a live oral hearing. The event was held at the United States Patent and Trademark Office in the Clara Barton Auditorium (formerly Madison Auditorium).

The TTAB heard arguments in In re QVC, Inc., S.N. 86670074, involving QVC, Inc’s application to register the mark DENIM & CO. for “women’s clothing, namely, shirts, dresses, skirts, tops, bottoms, sweaters, shorts, pants, jackets, leggings, t-shirts made of materials other than denim all sold through interactive television and interactive online media wherein the clothing products offered for sale are modeled and whereby detailed information regarding such clothing products is provided including information as to the fabrics and materials from which such clothing products are made” in International Class 25. Trademark Examining Attorney David I had refused registration based on deceptiveness under Trademark Act Section 2(a), or alternatively under Section 2(e)(1) absent a disclaimer of the deceptively misdescriptive term DENIM. The parties’ briefs, testimony, evidence, and other papers may be found here .

The issues on appeal were whether the proposed mark DENIM & CO is deceptive when used in connection with the goods and should therefore be refused registration under Trademark Act Section 2(a) and, in the alternative, whether the term DENIM should be disclaimed as deceptively midescriptive of the goods. A new addition for this hearing during Trademark Day was an introduction to the case by Judge Frances Wolfson.

The TTAB Panel consisted of Judges Marc A. Bergsman, Cynthia C. Lynch, and David Mermelstein.

Counsel for the Parties were: Kieran Doyle of Cowan, Liebowitz & Latman, P.C. for Applicant QVC, Inc. and David I for the Trademark Examining Office.

The Board allowed each side 20 minutes to present its case. Applicant reserved five for rebuttal. The Judges did not allow either party get far into its arguments before starting in with questions.

During Applicant’s opening argument, the Board asked if there could be confusion prior to sale. Applicant argued there would be no pre-sale confusion because the goods are sold through television and interactive online media. The Board was curious if this was true for downstream sales where the goods are purchased and resold. In addition, Applicant argued that DENIM & CO. is a unitary mark and that the term “& CO.” would not be perceived as a corporate designation since it was not used with a surname, as is usually the case with “& Co.” Applicant also argued that consumers know that DENIM refers to a casual lifestyle and not to cotton fabric.

During the Trademark Examining Attorney’s argument, the Board asked if the mark could be seen as a unitary mark and would therefore create a different commercial impression from the word “denim” alone. If so, the Board implied, the mark seen in its entirety would not be deceptive. The Trademark Examining Attorney disagreed and asserted that consumers would see the mark as referring to a material composition and not a casual lifestyle. He also argued that deceptiveness attaches prior to sale and that the totality of the evidence supported the finding that people would believe DENIM refers to the material.

The Board asked tough questions of both parties, but the judges did not give any indication as to which way they were leaning.

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Text Copyright R. Griffith Thomas and John L. Welch 2019.