The Board affirmed a Section 2(e)(1) refusal to register the mark NAG CHAMPA, finding the mark to be merely descriptive of "incense sticks." The Board concluded that the mark "describes without thought or imagination the name of a well-known scent or fragrance found in Applicant’s incense." In re Shrinivas Sugandhalaya, Serial No. 78691247 (Feb. 9, 2016) [not precedential].
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The evidence submitted by Examining Attorney Jeffrey S. DeFord established a prima facie case that MAG CHAMPA is widely used to identify and describe a scent found not only in incense, but also in soap, perfume oil, essential oils, candles, and other personal toiletries. The exact composition of the NAG CHAMPA scent varies, but it is generally considered to contain Champa flower extracts, resins, and sandalwood.
Applicant argued that third party products offered on ebay and amazon.com are infringing uses of NAG CHAMPA, and further that applicant has vigorously policed the NAG CHAMPA mark. The Board was not impressed:
If Applicant has sought to stop third-party use of the term NAG CHAMPA for incense, we see little or no evidence of any success in this endeavor. The record is replete with the use of NAG CHAMPA for a vast array of scented products. Accordingly, we cannot discount the third-party uses of NAG CHAMPA for incense, as Applicant suggests. Contrary to Applicant’s argument that these third parties are seeking to use NAG CHAMPA as a source identifier, nearly all of these products have other names or indicia to distinguish the sources of the incense.
Applicant claimed that the term NAG CHAMPA was coined by its founder in 1964, based in part on the names and nicknames of his children. Even if that is true, however, the Board must consider the present meaning of NAG CHAMPA, since registrability must be determined at the time registration is sought.
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Applicant also contended that its mark has acquired distinctiveness, based on long use, sales of product nearing 40 million dollars in the period 1994-2013, and the availability of its product on ebay, amazon.com, and google.com. The Board was unimpressed. Use of the mark since 1990 might indicate commercial success of the product, but third party use and the nature of the mark undermine the Section 2(f) claim. Moreover, applicant's uses the mark NAG CHAMPA along with other prominent indicia on its packaging, and consumers may look to that other indicia as source identifiers.
Furthermore, given the widespread third-party use of the term, applicant's use "can hardly be called exclusive."
And so the Board denied the Section 2(f) claim and affirmed the Section 2(e)(1) refusal.
Even if Applicant was the initial user of NAG CHAMPA in the United States, the marketplace no longer reflects substantially exclusive use by Applicant. Nor has Applicant provided any explanation as to why it waited nearly fifteen years, from 1990 to 2005, before filing its application.