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Archived updates for Wednesday, January 30, 2008

SUGAR NO. 11 Not Merely Descriptive of Financial Services

In In re ICE Futures U.S., Inc., Serial Nos. 78199832, 78199843, and 78199848 (January 16, 2008), the U.S. Trademark Trial and Appeal Board reversed refusals to register the marks SUGAR NO. 1 1 , SUGAR NO. 14, and COTTON NO. 2, finding the marks not merely descriptive of "financial services, namely, futures exchange and related commodity trading services."

According to the TTAB:

While the full marks identify contracts with detailed, uniform terms, the record establishes that applicant created those terms for its exclusive use in the rendering of its services, that is, in the operation of a futures exchange.

In fact, the evidence of third-party references to SUGAR NO. 11, SUGAR NO. 14 or COTTON NO. 2 in varying forms shows a consistent, explicit association of the marks with applicant, usually referred to as “NYBOT,” a reference to the New York Board of Trade, the predecessor owner. These references are drawn from reports of quotations and discussions regarding applicant and its activities. . . .

Accordingly, based on the evidence of record we conclude that SUGAR NO. 11,
SUGAR NO. 14 and COTTON NO. 2, when viewed in their entireties and in the full
context of their use, are not merely descriptive of applicant’s services. The marks, when viewed in their entireties, are arbitrary. They do not identify a commodity applicant sells, as the Examining Attorney argues. Furthermore, there is no evidence that others have a need to use these terms in rendering the identified services, as the Examining Attorney argues. We find applicant’s long, and apparently exclusive, use of the marks persuasive evidence of the absence of such a need -- for over sixty-five years in the case of the SUGAR NO. 11 and SUGAR NO. 14 marks and one hundred and thirty-five years in the case of the COTTON NO. 2 mark. The record does show that others can and do use the terms/marks to refer to applicant’s specific services. This use in no way indicates that the marks are merely descriptive of the identified
"Wow, was the Board determined to rule in favor of Applicant, or what? Apparently if one uses a term long enough, and exclusively, the requirements for proper specimens of use go out the window," writes John Welch.

As noted in his TTABlog, the Board also reversed the PTO's refusal of registration based on the ground that Applicant's specimens fail to show use of each mark in connection with the identified services. "How in the heck are Applicant's specimens of use proper for its services? The specimens refer to the contracts and the terms. Is a contract a service? I just don't see it. "
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