Test Your TTAB Judge-Ability: Is BLAZING SILKS Deceptive for Non-Silk Clothing?
Spina Technology applied to register the mark BLAZING SILKS for a "full line of clothing," including t-shirts, dresses, neckties, etc., but Examining Attorney Dominic R. Fathy refused registration, maintaining that the mark is deceptive under Section 2(a). Spina argued that the word "silks" (plural) refers to the brightly colored garments of a horse jockey or harness driver, and therefore is not deceptive. Who won this two-horse race? In re Spina Technology Corp., Serial No. 85456039 (November 15, 2013) [not precedential].
Although Applicant Spina did not explicitly state that its goods are not made of silk, it did state that "the public, in viewing the applicant’s mark, will not be deceived into believing that the goods contain silk." That statement, coupled with Spina's s failure to contest the examining attorney’s position on this point, were sufficient for the Board to conclude that applicant’s goods are not made of silk.
Spina asserted that it uses the term SILKS in the mark BLAZING SILKS "to evoke the image of a horse race (and a play on the famous movie BLAZING SADDLES)." The public, it asserted, will not be deceived into believing that the goods contain silk. Instead, consumers will understand the equine-related meaning of SILKS and will associate the applied-for mark with jockeys and horse racing, not with the fabric "silk."
The Board noted that silk has been in use for clothing since 3500 BC, and it concluded that "silk" immediately describes a significant feature of clothing. Consumers will understand that the term "silk," when used in a mark for clothing, indicates that the clothing is made of silk or at least includes silk.
The Board considered Spina's argument that "silks" has a different meaning from "silk," i.e., that it refers to "silks" used in horse racing. However, that different meaning "does not detract from the deception conveyed by the term when used for clothing." Website evidence showed that the term "silks" originated "from the fact that horse jockeys' jerseys actually were made of silk." The Board agreed with the Examining Attorney that "even if the term SILKS can refer to jerseys worn by jockeys, it further reinforces the importance of silk because of the fact that the jerseys were famously composed in significant part of silk fiber material."
In any case, there was no evidence as to how many consumers would even be aware of the meaning of "silks" as used in horse racing, nor was there any evidence that the movie "Blazing Saddles" is famous or that consumers would think of that movie when encountering applicant's mark.
In short, the meaning of "silk" in the horse racing context is simply "overwhelmed by the commonly used and understood meaning" when used in connection with such common clothing items as neckties and dresses.The word "blazing" connotes silk made in bright colors. Therefore, BLAZING SILKS, as a whole, misdescribes clothing that is not made of silk.
Given the attractiveness and desirability of silk in clothing, it is very likely that consumers would believe that applicant's clothing is made of silk, and furthermore that misdescription would be material to the purchasing decision of a significant portion of relevant customers.
Accordingly, the Board found the applied-for mark to be deceptive when used in connection with clothing not made of silk, and it affirmed the Section 2(a) refusal.
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Text Copyright John L. Welch 2013.