In a precedential decision, the United States Patent and Trademark Office, Trademark Trial and Appeal Board (“TTAB” or the “Board”) affirmed a refusal to register the logo:
absent a disclaimer of the term “AMERICAN FURNITURE WAREHOUSE.” However, the Board also held that the phrase can acquire distinctiveness as a part of the overall trademark. In re American Furniture Warehouse CO, Serial No. 86407531 (April 23, 2018) (Opinion by Judge Cynthia C. Lynch).
Applicant American Furniture Warehouse, Co. (“Applicant”) applied to register the above mark for “retail furniture stores.” Applicant had already successfully registered similar trademarks for similar goods and services:
- Reg. No. 4,326,532 for AMERICAN FURNITURE WAREHOUSE in standard characters format, with a claim of acquired distinctiveness as to the entire mark;
- Reg. No. for 4,390,854 , with a claim of acquired distinctiveness –in-part as to the words “American Furniture Warehouse”;
- Reg. No. 5,101,213 , with a claim of acquired distinctiveness as to the words “American” and “Furniture.”
None of Applicant’s prior registrations contained disclaimers.
During prosecution of the applied-for mark, the Examining Attorney issued a number of different requirements, but ultimately issued a final refusal unless Applicant disclaimed the wording AMERICAN FURNITURE WAREHOUSE as primarily geographically descriptive, and of the word FURNITURE from the bottom line of the mark as generic. (A disclaimer is a statement in the record that an applicant claims no trademark rights in the disclaimed term.) The disclaimer required by the Examining Attorney in this case would allow Applicant’s competitors to use the phrase AMERICAN FURNITURE WAREHOUSE.
Applicant appealed to the TTAB. In its brief, Applicant argued against the substantive grounds for the required disclaimers, but also requested on appeal that the Board should allow the applied-for mark to be treated like Applicant’s prior registrations – that is, that they should be registered with a claim of acquired distinctiveness–in-part as to the words “American Furniture Warehouse,” with at most a disclaimer of the word “Furniture.”
The Board’s Decision
The Board concluded that (i) AMERICAN is geographically descriptive, (ii) FURNITURE WAREHOUSE is generic; (iii) the applied-for mark is not unitary; and acquired distinctiveness had been shown for the mark as a whole.
AMERICAN Is Geographically Descriptive
The USPTO may refuse registration of a mark on the ground that it is geographically descriptive. If a mark is found to be geographically descriptive, it can only be registered if the applicant can show that the mark has acquired distinctiveness in connection with the claimed goods or services. A term is geographically descriptive if: (1) the primary significance of the term is the name of a place generally known to the public; and (2) the public would make an association between the services and the place named in the mark by believing that the services originate in that place. The second prong, the services-place association, may be presumed when the services do, in fact, emanate from the place named.
Applicant’s first argument was that the mark AMERICAN FURNITURE WAREHOUSE is not primarily geographically descriptive, but rather suggestive and registrable. The crux of Applicant’s argument was that the term “American” is too broad and nebulous to refer to a geographic location, and that the “bare possibility” that its services could emanate from an American company does not establish the requisite services-place association for a geographic descriptiveness refusal. The Board disagreed and found that AMERICAN is a geographic term for a place generally known to American consumers, namely, the United States. Applicant’s stores are located in the United States, and consumers would believe that Applicant’s services originate in America.
FURNITURE WAREHOUSE Is Generic, As Is Furniture
As to Applicant’s claim that the “Furniture Warehouse” portion of the mark is distinctive, the Board noted the dictionary definitions, third-party registrations and website pages using the term “Furniture Warehouse,” along with Applicant’s website’s description of its services as “a shop with a large stock of furniture at wholesale prices” and its website showing furniture displayed in a warehouse setting. The Board held that “Furniture Warehouse” was generic; “the common descriptive name of a class of goods or services.” The Board also held that the word FURNITURE from the bottom line of the mark was generic, and noted that the Applicant conceded that that word was generic in that portion of the applied-for mark.
The Requested Mark Is Not Unitary
Applicant argued that its trademark as a whole was “unitary” and required no disclaimer. A mark or portion of a mark is considered “unitary” when it creates a commercial impression separate and apart from any unregistrable component. The test for unitariness inquires whether the elements of a mark are so integrated or merged together that they cannot be regarded as separable. The Board quickly disposed of this argument, explaining that the Applicant provided no explanation for its position, other than its prior registrations for two highly similar marks. But those marks both included claims of acquired distinctiveness-in-part, which “signal that these marks are not unitary in nature.” In other words, if a mark is unitary, a partial Section 2(f) claim is not needed to avoid a disclaimer.
The Examining Attorney did not maintain that AMERICAN FURNITURE WAREHOUSE is incapable of indicating source, but only that the phrase is primarily geographically descriptive. However, in the Board’s view, the Examining Attorney erroneously maintained that the genericness of “Furniture Warehouse” means that those words cannot be a part of the claim of acquired distinctiveness. The Board disagreed, holding that “the generic term may be included in the claim of acquired distinctiveness as long as an accompanying disclaimer of the generic term is provided.”
Thus, the Board accepted Applicant’s claim of acquired distinctiveness-in-part for AMERICAN FURNITURE WAREHOUSE as a whole, but required a disclaimer of the generic phrases Furniture Warehouse” and “Furniture” Although Applicant was not required to disclaim these terms in its prior registrations, the Board reiterated the long-standing policy of assessing each mark on its own facts and record. Although consistency in trademark prosecution may be appealing, the Board maintained that there is no such rule or requirement.
As a result, the Board affirmed the rejection of the mark, but allowed Applicant to submit the required disclaimer of FURNITURE WAREHOUSE and FURNITURE to the Board within 30 days, in which event the application then shall proceed to publication.
American Furniture is important guidance to practitioners on the interrelationship among geographic marks, generic terms, disclaimers and acquired distinctiveness.