Applicant contended that “its mark is more than the sum of its parts because it ‘is comprised of terms that, when taken together, present an incongruous and circular meaning that is nearly self-negating.’” Conversely, Examining Attorney Douglas M. Lee argued that because “the sum of the parts of Applicant’s mark are merely descriptive,” the mark as a whole was merely descriptive as applied to Applicant’s primarily handbag and clothing line. He stated:
Here, both the individual components and the composite result are descriptive of Applicant’s goods and do not create a unique, incongruous, or nondescriptive meaning in relation to the goods. . . . Applicant has taken the established term of art “fur free” and merely added the highly descriptive if not generic term “fur” which is defined as both animal fur and material made in imitation of animal fur.
The Board majority rejected this rationale, writing that the Examining Attorney incorrectly analyzed the mark as though the Applicant had sought registration for ANIMAL FUR FREE FAUX FUR. Judge Shaw continued, “The problem with the Examining Attorney’s argument is that it ignores the fact that, in Applicant’s mark, the two instances of the term FUR have different meanings, which is likely to give consumers pause.” He concluded that the first use of FUR is in conjunction with FREE, creating a combined phrase which implies that the designer’s products are “animal fur free.” “In the second instance, FUR alone, the term ‘fur’ refers to imitation fur . . . . The two different meanings of the term ‘fur’ within Applicant’s single mark creates a logical paradox. By way of analogy, Applicant’s mark is the ‘Schrödinger’s cat’ of trademarks: it suggests that the goods are both fur-free and made of fur at the same time.”
[Judge Shaw explained that “Schrödinger’s cat is a well-known quantum mechanics thought experiment devised by Austrian physicist Erwin Schrödinger in 1935 in which a hypothetical cat in a box may be simultaneously both alive and dead. Inasmuch as it was only a thought experiment, no actual cats were harmed.” Seehttps://www.encyclopedia.com/science-and-technology/physics/science-general/schrodingers-cat.]
Accordingly, the Board majority found that the mark was suggestive, for when a consumer encounters the mark, the incongruous phrase “requires some imagination, thought, or perception to reach a conclusion as to the nature of the goods.” StonCor Grp., Inc. v. Specialty Coatings, Inc., 759 F.3d 1327, 111 USPQ2d 1649, 1652 (Fed. Cir. 2014). The Board agreed with the Applicant that FUR FREE FUR’s “internal inconsistency forces consumers to exercise a higher level of thinking to perceive its meaning, which is not immediately clear or obvious, let alone merely descriptive.” As a result, the majority sided with McCartney, finding that the mark was suggestive rather than descriptive and reversing the refusal to register.
Judge Linda A. Kuczma wrote a convincing dissent. Because the “mark uses ‘fur free’ in place of ‘faux’ to let consumers know that” the Applicant’s goods do not contain animal fur, she found that “[b]oth the individual components of Applicant’s mark, as well as the composite mark, describe Applicant’s goods.” Therefore, she concluded that the mark was merely descriptive, for “no imagination, thought or perception is needed to arrive at the characteristics of Applicant’s goods.”
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Text Copyright John L. Welch and Amanda B. Slade 2019.