It is common for the trademark of a business or product to at least partially describe the product or service the business sells. But can you register that trademark with the U.S. Patent and Trademark Office? This is an issue I often deal with as a Florida Trademark Attorney. In short, the answer is that the non-descriptive and non-generic portion of the trademark, if any, is registrable. This is an issue illustrated by last week's decision of the Trademark Trial and Appeal Board (TTAB) in Washington, DC.
Last week, the TTAB issued its decision in the Jonathan Drew, Inc./Drew Estate case, which involved an appeal from a refusal to register the INFUSED CIGARS mark used in connection with the sale of cigars. The Trademark Office refused to register the INFUSED CIGARS mark on the basis that the mark is generic and descriptive. The Trademark Office cited vast amounts of literature, ranging from magazine and newspaper articles to third party web sites, supporting its position. Apparently, an infused cigar is a cigar that has been imbued with a flavor. For example, some cigars are infused with a liquor or a wine. The Applicant did not rebut this evidence.
The Applicant's main argument was that Drew Estate was a pioneer cigar company - the first to infuse cigars commercially and the company that coined the term "infused cigars." The TTAB responded:
"We do not question that applicant may be a "leading maker" or perhaps a "pioneer" of "infused cigars" or even that applicant coined the term. The problem is that none of these facts overcomes the generic meaning of "infused cigars" or makes this generic term registrable. See, e.g., In re Active Ankle Systems Inc., 83 USPQ2d 1532, 1538 (TTAB 2007) ("Even if applicant was the first... user of a generic term or phrase,...that does not entitle applicant to register such a term or phrase as a mark."). While sellers may recognize applicant as a well known maker or blender of cigars and that applicant is a significant source for "infused cigars," they nevertheless use the term "infused cigars" to refer to a type of cigar, rather than to brand of cigar. The record is clear that they do not recognize "infused cigars" to indicate the source of those cigars only in applicant.
Thus, the TTAB was very clear that a generic or descriptive term cannot be registered, even by the first user of the term or the party that coined the term. Drew Estate is out of luck.
If Drew Estate had sought my services as a Patent and Trademark Attorney, I would have advised him to seek other forms of protection for the "infused cigar" concept, including patent protection for the final infused cigar product and/or for the infusing process. This type of protection, if attainable, would have allowed Drew Estate to stop other cigar makers from making or selling infused cigars.
