• TTAB Cuts Up Arguments for Sharpin Registration
  • May 24, 2017 | Author: Timothy J. Lockhart
  • Law Firm: Willcox & Savage, P.C. - Norfolk Office
  • The U.S. Trademark Trial and Appeal Board (TTAB) has affirmed the refusal to register SHARPIN as a trademark for “cutlery knife blocks which incorporate built-in sharpeners that automatically sharpen knives,” in International Class 21. In re Calphalon Corp., Serial No. 86356713 (March 20, 2017) [precedential]. Despite the applicant’s amendment of the drawing, or image, of the mark from SHARPIN to SharpIN, the TTAB said that because the applicant had not claimed stylization as a feature of the mark, the amendment had not made the mark distinctive for the applicant’s goods.

    The U.S. Patent and Trademark Office (USPTO) Examining Attorney assigned to review the application refused registration for the SHARPIN mark under Section 2(e)(1) of the Trademark Act, 15 U.S.C. §1052(e)(1), on the ground that the applicant’s mark was merely descriptive of the goods. In response the applicant amended the application to show the mark in the form SharpIN, submitted a photograph of its packaging on which SHARP appears in light letters and IN appears next to it in dark letters, and requested the Examining Attorney to reconsider his refusal of registration.

    The Examining Attorney accepted the amended depiction of the mark but denied the request for reconsideration, and the applicant appealed. The applicant claimed that when the Examining Attorney accepted the amended drawing of the mark, he should have amended the application to indicate that the mark was shown in a special form. The applicant further claimed that it had discussed its proposed amendment with the Examining Attorney and that if he had any doubt about whether the applicant wanted to claim stylization as a feature of the mark, the Examining Attorney should have sought clarification from the applicant.

    The TTAB disagreed. Under the USPTO’s rules a standard-character mark may be shown in all uppercase letters, all lowercase letters, or in any combination of upper- and lowercase letters. So although amending the drawing from SHARPIN to SharpIN was acceptable, that amendment did not make the drawing a special-form drawing. Moreover, when making the amendment the applicant could have selected the “special form” option but did not do so. Thus, the TTAB said, the Examining Attorney had no reason to inquire whether the amended drawing was intended to be a standard-character or a special-form drawing. The TTAB said that the applicant’s characterization of its amendment as a non-material change to the mark supported the TTAB’s conclusion.

    The TTAB then turned to the issue of whether SHARPIN is merely descriptive and therefore unregisterable on the USPTO’s Principal Register. The TTAB noted that, contrary to the applicant’s argument, “[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 and services are will understand the mark to convey information about them’” (citing DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd., 103 USPQ2d 1753, 1757 (Fed. Cir. 2012) (quoting In re Tower Tech Inc., 64 USPQ2d 1314, 1316-17 (TTAB 2002)) (other citation omitted).

    Applying that test, the TTAB readily concluded that SHARPIN is descriptive of the applicant’s goods. According to the TTAB, the mark “SHARPIN evokes an immediate association with the phonetically identical and otherwise virtually-identical word ‘sharpen,’ and there is nothing incongruous about the use of the word sharpen (or its phonetic equivalent SHARPIN) to describe the function of [the applicant’s] goods.” The TTAB rejected the applicant’s argument that its mark is a double entendre, saying that the applicant’s briefs make clear that the possible meaning of SHARPIN as “a sharpener . . . built within the knife block” requires the mark to be shown in the special form SharpIN, and “that is not the form of the mark for which Applicant seeks registration.”

    Thus, the TTAB concluded that it had “no doubt that a consumer who understands the relevant goods to be ‘cutlery knife blocks which incorporate built-in sharpeners that automatically sharpen knives’ will understand the SHARPIN mark to convey information about them” (citing DuoProSS, 103 USPQ2d at 1757). For that reason the TTAB affirmed the refusal to register the applicant’s mark.