A non-trademark can prevent the registration of someone else’s trademark.

The Applicant filed for the marks CURVEE and CURVEY and CURVEEY for a variety of clothing items. The TTAB refused registration based on CURVY, also for clothes, but existing on the Supplemental Register, not the Principal Register.

At the outset, the TTAB determined that CURVEE and CURVEY and CURVEEY were for all practical purposes equivalent to the cited mark CURVY. Not too surprising.

Also, and as background, a mark placed on the Supplement Register, while not being as advantageous as a mark on the Principal Register, can nevertheless be an important defensive tool for a trademark owner.

Placing a mark on the Supplemental Register is essentially an admission that the mark, at least at the time of registration, is merely descriptive and not eligible for registration.

Despite this fact, a merely descriptive mark, not capable of registration on the Principal Register, can nevertheless be cited by the USPTO as a basis for refusing to register a similar mark on the Principal Register.

In other words, a term that does not function as a trademark can prevent an actual trademark from being registered, if the effort has been put forth to place that non-trademark on the Supplemental Register.

There is a second interesting concept incorporated in this decision. The TTAB also held that the CURVEE and CURVEY and CURVEEY marks were descriptive of clothing designed to be sold to consumers with curvy attributes (i.e., non-skinny people).

Specifically, a mark is deemed descriptive, and not registrable, if it conveys an immediate idea of an ingredient, quality, characteristic, feature, function, purpose or use of the identified goods.

In this case, the TTAB held that the marks were merely descriptive of a characteristic or feature of clothing. Specifically, the clothes were designed for consumers with curvy attributes.

Image Courtesy of: John Jones Used under Creative Commons license.

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