The Trademark Trial and Appeal Board (TTAB) recently affirmed the rejection of the mark GRUNGE for clothing and related accessories. In re Grapevine Intellectual Properties, LLC, Serial No. 77141442 (December 18, 2008) [not precedential]. The examining attorney issued a final refusal on the ground that, when used in connection with the identified goods, the mark was merely descriptive. An image of the mark appears below.
The Board determined that the applicant acknowledged the descriptive nature of the mark when it disclaimed the word GRUNGE in its application. In its appeal, Grapevine Intellectual Properties, LLC (Grapevine) claimed that the unique stylization of the lettering gave the mark a striking commercial impression separate and apart from the word portion of the mark. The examining attorney responded that the font used in the mark was not sufficiently substantial or distinctive to create a separate commercial impression apart from the disclaimed portion of the mark.
The TTAB ruled that in order for an otherwise unregistrable term to be capable of distinguishing an applicant's goods, the presentation of the term must be sufficiently distinctive so as to create a commercial impression separate and apart from the unregistrable components. After the applicant disclaims the unregistrable components, a mark which is registrable as a whole would remain. The Board used a subjective test to determine whether the stylization of an otherwise unregistrable mark is sufficiently distinctive to “rescue” the mark as a whole.
The TTAB found that the stylization of Grapevine’s mark was not distinctive enough to warrant protection without a claim of distinctiveness. The Board referred to other marks with stylized lettering and concluded that the styling in Grapevine’s GRUNGE mark was not sufficiently fanciful, eye-catching, or imaginative. Each of the marks the Board referenced contained a unique font applied to each letter as opposed to the random and jagged letter styling used in Grapevine’s mark. One mark required a showing of acquired distinctiveness.
The Board also found that other stylized marks which passed the distinctiveness test were presented for placement on the Supplemental Register rather than the Principal Register. Grapevine applied for placement on the Principal Register. The requirements for allowance on the Supplemental Register are less stringent than those for the Principal Register. Additionally, the Supplemental Register offers fewer benefits than the Principal Register.
The TTAB’s ruling illustrates the importance of conducting careful and thorough research regarding trademark law before filing your trademark application.
View the TTAB’s decision here.