The Distinctiveness Threshold for Stylization of Descriptive Marks

In a recent TTAB case, the Board considered whether a stylization of a descriptive term supports registration on the Principal Register. The short answer? It depends.

In the case of In One Nation Enterprises, the Applicant applied to register the below design mark, which reads JIUJITEIRO, for a variety of apparel, including martial arts uniforms. The Examining Attorney initially refused the mark as being merely descriptive of the goods, and the Applicant attempted to enter a statement saying that the word has no meaning in a foreign language. The Examining Attorney maintained the 2(e)(1) refusal, arguing that the term is a relatively recent slang term in Portuguese, and the Applicant then entered a statement on the record that the English translation of jiujiteiro is a practitioner of Brazilian jiu-jitsu, and attempted to disclaim the word apart from the mark as a whole. The Examining Attorney refused to enter the disclaimer, arguing that the degree of stylization is not distinctive enough to create a separate commercial impression apart from the descriptive word.

The TTAB disagreed with the Examining Attorney, and held that the stylization of the mark is distinctive, and “sufficient to justify registration notwithstanding the descriptiveness of the disclaimed term.” The board contrasted the mark’s handwriting-type stylization with the below marks, which were held by the Board to be not distinctive:

In contrast with these marks, which are stylized in a recognizable type, Applicant’s mark meets the minimum threshold of creating a distinctive impression, and therefore is registrable on the Principal Register with a disclaimer of the literal element of the mark. The test for distinctiveness in the case of descriptive terms is subjective, and must be analyzed on a case-by-case basis. However, it is safe to assume that a descriptive term in your favorite Microsoft Word font will not pass the test.

This article appeared in the July 2016 issue of MarkIt to Market. To view our past issues, as well as other firm newsletters, please click here.