TTAB upholds mere descriptiveness refusal to register Swatch's TOURBILLON mark
In In re The Swatch Group Management Services AG (Serial No 85485359, April 18 2014), in a precedential opinion, the Trademark Trial and Appeal Board (TTAB) has affirmed, on the ground of mere descriptiveness, a refusal to register the mark TOURBILLON (and design) by The Swatch Group Managements Services AG for “jewellery, horological and chronometric instruments” in Class 14 of the Nice Classification.
The mark, depicted below, features the term 'tourbillon' below a design of a tourbillon, which the applicant admitted is a mechanism found in the escapement of some watches.
According to the record, tourbillons were developed around 1795 and were originally designed to improve watch accuracy. They are still included in some expensive modern watches as a novelty and demonstration of watchmaking virtuosity. Therefore, the TTAB held there was no doubt that TOURBILLON is descriptive of watches and their parts.
Before the TTAB proceeding, Swatch had entered a disclaimer of exclusive rights to use the term 'tourbillon' for “horological and chronometric instruments”, but did not enter a disclaimer in relation to jewellery. Noting that “a descriptiveness refusal is proper with respect to all of the identified goods in an International Class if the mark is descriptive of any of the goods or services in that class” (citing In re Chamber of Commerce (102 USPQ2d 1217, 1219 (Fed Cir 2012)), the TTAB discussed why the descriptiveness refusal applied to jewellery.
The examining attorney’s evidence included advertisements that referred to watches as a category of jewellery. The TTAB also relied on the wording 'jewellery watches' as an acceptable identification of goods listed in the "Identification of Goods and Services Manual (2014 version)". Swatch countered that “the watch industry does not consider watches as ‘jewellery’ and that, accordingly, TOURBILLON is arbitrary as applied to jewellery and therefore registrable for such goods”. The TTAB held that the term 'jewellery' includes watches. Therefore, "TOURBILLON is merely descriptive of jewellery, inasmuch as the category of jewellery includes watches and watches may include, as a significant component, a tourbillon”.
Swatch also argued that the design element of the mark created a separate commercial impression from the word element and should not be considered descriptive because it is “not an exact representation of the applicant’s extremely intricate escapement, but is an abstract, highly stylised version of the applicant’s unique mechanism”.
The TTAB examined this argument at length but rejected it, concluding that the design contained sufficient detail to convey that it represents a tourbillon even though it might not be an exact representation of a tourbillon or Swatch’s tourbillon. The TTAB explained that, unlike determining whether a minimum level of creativity was satisfied to merit copyright protection, “the ultimate guideline in this case is whether the design forthwith conveys an immediate idea of a feature of the goods and lacks any additional fanciful, arbitrary or suggestive matter.”
Finally, Swatch argued that the combination of the word and design was sufficient to render the mark registrable as a whole. The TTAB found that, “to the contrary, the combination of the word 'tourbillon' with the applicant’s tourbillon design increases, rather than decreases, the clarity with which the design will be perceived as a tourbillon, inasmuch as the wording immediately conveys that information to the customer”.
Therefore, the TTAB held that the mark as a whole and its component parts were merely descriptive.
Curiously, Swatch previously owned US Registration No 2884033 for the TOURBILLON word mark by itself covering “jewellery; precious stones; precious metals”, but apparently could not establish use of the mark so it was cancelled for failure to file an affidavit of use the same year this new application was filed. In that application, the examiner never raised a descriptiveness refusal and no disclaimer was entered.
Dennis S Prahl, with the assistance of Cassidy Merriam, Ladas & Parry LLP, New York
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