IP Law Daily TOON KICKER is not descriptive of pontoon boat motor mounts
Thursday, August 11, 2016

TOON KICKER is not descriptive of pontoon boat motor mounts

By Cheryl Beise, J.D.

A trademark examining attorney failed to show that the mark TOON KICKER was merely descriptive of outboard motor mounts used on pontoon boats, the Trademark Trial and Appeal Board has decided. While the record evidence showed that the term "kicker" is used to indicate a small outboard motor, it did not show that the term "toon" was used as an abbreviation for "pontoon." The refusal to register was reversed (In re Lermayer Outdoors, Inc., August 3, 2016, Seeherman, E.).

Applicant Lermayer Outdoors, Inc. applied to register TOON KICKER in standard characters on the Principal Register for "outboard motor mounts, namely, brackets specifically designed for connection to pontoon boats for mounting of secondary outboard motors." The trademark examining attorney refused registration pursuant to Section 2(e)(1) of the Trademark Act, on the ground that the mark was merely descriptive of the identified goods.

Section 2(e)(1) of the Trademark Act prohibits the registration of a mark which, when used on or in connection with the goods of the applicant, is merely descriptive of them. A term is merely descriptive if it immediately conveys knowledge of a significant quality, characteristic, function, feature, or purpose of the goods or services it identifies. The key question is whether someone who knows what the goods or services are will understand the mark to convey information about them.

On appeal, the applicant argued that its mark was registrable because it was inherently suggestive rather than descriptive. A mark is suggestive if imagination, thought, or perception is required to reach a conclusion on the nature of the goods.

To support her position that the applicant’s mark as a whole was merely descriptive, the trademark examining attorney submitted evidence regarding the individual elements TOON and KICKER. The record contained Oxford Dictionary (US English) entries defining the term "kicker" as "informal, A small outboard motor" and several online articles showing use of the word "kicker" to indicate a small outboard or trolling motor for boats.

Concerning the term "toon," the examining attorney submitted website evidence showing the word TOON used in a number of trademarks, including: "V-Toon® pontoon" sold by Manitoo, the "Mitey-Toon Pontoon" sold by Mitey-Toon, and TRI TOON, SportToon TT, SunToon TT and NepToon TT, NepToon Sport TT: sold by JC Pontoon. The evidence also included one user blog post on the Bowfishing Forum website, under the topic "Pontoon kicker bracket," stating "I built this mostly out of 3 ½ inch aluminum channel to mount this kicker bracket on. … after spending hours in my flatbottom I can,t wait to get out on my toon I been working on."

The record evidence fell short of showing that TOON was descriptive of pontoon boats, according to the Board. First, there was no dictionary evidence showing that "toon" was an abbreviation of "pontoon," as might be expected if the term were recognized in the industry. Second, except for a single blogpost, all the other references were to use of TOON as part of various trademarks. "The fact that a term may be used in a trademark does not prove that the term is merely descriptive. Although such use may show that a term has a significance within an industry, that significance may be a suggestive one," the Board said. Finally, the applicant submitted third-party registrations for marks containing the word TOON that were registered without a disclaimer or pursuant to Section 2(f).

The Board concluded that the Office failed to meet its burden of showing that the applicant’s mark TOON KICKER was merely descriptive. Although the evidence established that the term KICKER has a recognized meaning as an auxiliary motor, that meaning was subsumed in the mark TOON KICKER. "The mental steps a consumer would have to go through to transpose TOON KICKER brackets into ‘brackets for kickers used on pontoons’ is enough to put TOON KICKER on the suggestive side of the ‘fine line’ between descriptive and suggestive marks," the Board said. The registration refusal was reversed.

The case is Serial No. 86128066.

Attorneys: William E. Anderson (Christensen Fonder PA) for Lermayer Outdoors, Inc. Mary E. Crawford, Trademark Examining Attorney, USPTO.

Companies: Lermayer Outdoors, Inc.

MainStory: TopStory Trademark USPTO

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