The vast majority of inter partes proceedings before the Board involve Section 2(d) claims, but here's an opposition based on Section 2(e)(1) mere descriptiveness. The Board sustained an opposition to registration of the mark WEEPING ANGEL, finding it merely descriptive of "funerary urns." Perfect Memorials LLC v. United Priority Distributors, Opposition No. 91209028 (February 29, 2016) [not precedential].
First the Board tackled an evidentiary issue, ruling that TTAB pleadings downloaded from TTABVue do not fall within the Safer, Inc. v. OMS Investments ruling, and may not be introduced into evidence merely by notice of reliance. Nor do such documents qualify as "printed publications" that are self authenticating, nor are they "official records," under Rule 2.122(e).
As to the issue of descriptiveness, applicant stated that its "Weeping Angel" urns are "depictions of or inspired by the Angel of Grief Monument," a sculpture created by William Wetmore Story. The sculpture, located in Rome, has been referred to as the "Weeping Angel," as have replicas located in the United States.
Manufacturers of monuments featuring replication of the sculpture use the term "Weeping Angel" to describe their products. A vast number of other products, including statures, stickers, books, signs, and coffee mugs replicate the Angel of Grief or other images of a weeping angel, are referred to by the wording "Weeping Angel."
Applicant itself described its urns as "an incredible depiction of the weeping angel monument made in 1894 by William Wetmore Story." Applicant did not use the TM symbol when identifying its urns.
The Board pointed out that the test for mere descriptiveness is "whether a term immediately conveys information concerning a significant quality, characteristic, function, ingredient, attribute or feature" of the product at hand. The determination is made not in the abstract, but in the context of the identified goods.
In addition to the evidence described above, Opposer submitted a survey of the "Teflon" variety purporting to show that 60% of respondents considered "Weeping Angel Urn" to be descriptive, and 10% found it generic. However, the survey was entitled to little, if any, probative value because opposer should have used the term WEEPING ANGEL, not WEEPING ANGEL URN. The Board found it highly likely that participants would perceive WEEPING ANGEL as modifying the generic term "urn" and merely "imparting a fuller description of a significant characteristic of the pictured product."
The Board nonetheless found that "Weeping Angel" identifies a primary characteristic or feature of applicant's funerary urns that depict or present an angel who is manifesting grief. Although the third-party uses of "Weeping Angel" did not concern funerary urns specifically, the use of that term with goods that depict "weeping angels" is highly probative.
Although applicant has used the applied-for mark since 2010, that use has not been substantially exclusive in connection with funerary and garden memorials, and so the mark is not eligible for a claim of acquired distinctiveness under Section 2(f).
TTABlog comment: Was the examining attorney asleep at the switch?