Dictionary definitions, a thesaurus entry, an Internet article, and Alumier’s own identification of goods left the Board with no doubt that IR DEFENSE is merely descriptive of Alumier’s product.
Opposer Brinkley, in its own application to register IR DEFENSE, argued that the term is not merely descriptive for its sun-protective cosmetics because its goods “cannot immediately be identified simply by viewing the subject mark.” [LOL – ed.]. The Board pointed out that that is not the correct test for mere descriptiveness.
Indeed, “[t]he question is not whether someone presented with only the mark could guess what the goods or services are. Rather, the question is whether someone who knows what the goods or services are will understand the mark to convey information about them.” DuoProSS Meditech Corp. v. Inviro Med. Devices Ltd., 695 F.3d 1247, 103 USPQ2d 1753, 1757 (Fed. Cir. 2012) (quoting In re Tower Tech, 64 USPQ2d at 1316-17).
Here, consumers who know what Alumier’s goods are will immediately understand that the proposed mark directly describes their stated purpose: to defend a user’s skin against IR radiation. The Board observed that the term should remain available for others to describe their competing products and services.
And so the Board sustained the opposition.
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TTABlog comment: Brinkley also owns applications for RECAPTURE DAY + IR DEFENSE and RECAPTURE 360 + IR DEFENSE, in both of which IR DEFENSE is disclaimed. Those applications were blocked by Alumier’s application for IR DEFENSE.
Text Copyright John L. Welch 2019.