The USPTO refused registration of the mark shown below [CERTIFIED disclaimed] as a certification mark for "honey; tea; field crops, namely, coffee, corn, potatoes; handicrafts, namely, baskets, home and fashion accessories, wooden carvings; mushrooms," in Class A; and "hotel services, hospitality services, tour operator services, travel agency services, tourism services, transportation services, park operations, hotels, lodges, recreational parks," in Class B., on the ground that applicant failed to disclaim the entire merely descriptive phrase "CERTIFIED GORILLA FRIENDLY." Applicant argued that "GORILLA FRIENDLY" is ambiguous and incongruous, and that other FRIENDLY marks have been registered without disclaimer. How do you think this came out?In re Wildlife Friendly Enterprise Network, Serial No. 86694394 (March 23, 2017) [not precedential].
The application contained the following certification statement:
The certification mark, as used or intended to be used by persons authorized by the certifier, certifies or is intended to certify that the goods and services will be grown, rendered, handled, delivered and processed in accordance with ecological and conservation farming and sustainable tourism guidelines and standards.
Examining Attorney Elizabeth N. Kajubi relied on dictionary definitions of "gorilla" ["a very large typically black-colored anthropoid ape (Gorilla gorilla) of equatorial Africa that has a stocky body with broad shoulders and long arms and is less erect and has smaller ears than the chimpanzee"] and "friendly ["COMPATIBLE, ACCOMMODATING"]. Applicant's website described its project as aiming "to recognize and reward tourism facilities and operators that do the right thing for gorillas and people through voluntary eco-labelling." Several third-party Internet webpages referred to "gorilla-friendly" products or projects.
These dictionary definitions and uses demonstrate that consumers understand the phrase “gorilla friendly” to convey information about a feature of the goods and services certified by Applicant: that they are beneficial to, helpful to, compatible with, or accommodating of gorillas.
At to applicant's arguments regarding the meaning of GORILLA FRIENDLY, the Board found that consumers "would immediately understand GORILLA FRIENDLY to convey that the goods and services subject to Applicant’s certification mark are deemed to be beneficial to, compatible with, or accommodating of gorillas." In the context of applicant's goods and services, there is no incongruity. The fact that gorillas are aggressive animals, and not "warm and lovable" is irrelevant.
The examining attorney submitted 42 third-party registrations in which the word FRIENDLY was disclaimed, or acquired distinctiveness was claimed, or the registration existed on the Supplemental Register - 11 involving certification marks [e.g., BIRD FRIENDLY, CAT FRIENDLY PRACTICE]. Applicant countered with 8 registrations on the Principal Register, in which FRIENDLY was not disclaimed and Section 2(f) was not claimed. The Board, however, pointed out once again that it must assess each case on its own record. In re Nett Designs Inc., 236 F.3d 1339, 57 USPQ2d 1564, 1566 (Fed. Cir. 2001) (“Even if some prior registrations had some characteristics similar to [Applicant’s] application, the PTO’s allowance of such prior registrations does not bind the Board or this court.”)
The Board concluded that GORILLA FRIENDLY is merely descriptive of Applicant’s certification activities for the identified goods and services, and therefore the phase must be disclaimed.