IP Law Daily, TRADEMARK—TTAB: Proposed CERTIFIED GORILLA FRIENDLY mark could not be registered absent a disclaimer, (Mar 28, 2017)

By Cheryl Beise, J.D.

An application to register a certification mark featuring the words CERTIFIED GORILLA FRIENDLY above an image of two gorillas could not be registered absent a disclaimer of the literal elements, Trademark Trial and Appeal Board has decided. Because CERTIFIED GORILLA FRIENDLY was merely descriptive of the identified goods and services in relation to the applicant’s certification activities, the entire phrase had had to be disclaimed (In re Wildlife Friendly Enterprise Network, March 13, 2017, Hightower, S.).

Applicant Wildlife Friendly Enterprise Network sought registration of a certification mark, comprised of the words CERTIFIED and GORILLA FRIENDLY stacked above an image of an adult and a baby gorilla inside a shaded box. The mark was to be used in connection with various food products, field crops, and handicrafts in Class A and certain hotel, hospitality, transportation, and tourism services in Class B. The application stated that the mark would be used by persons authorized by the certifier, "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."

The applicant disclaimed the word CERTIFIED, but the examining attorney refused registration pursuant to Section 6(a) of the Trademark Act, based on the applicant’s failure to comply with a requirement to disclaim CERTIFIED GORILLA FRIENDLY, on the ground that the phrase was merely descriptive of the identified goods and services in relation to the applicant’s certification activities. The applicant appealed.

Pursuant to Sections 4 and 45 of the Act, certification marks are used to certify various characteristics of goods and services of others and are subject to the provisions relating to the registration of trademarks. Failure to comply with a disclaimer requirement of a descriptive term is a ground refusing to register a certification mark, the Board noted.

The examining attorney provided dictionary definitions of the words "gorilla" and "friendly," excerpts from the applicant’s website, a few third-party references to "gorilla-friendly development projects." The Board found that the definitions and uses demonstrated that consumers would immediately understand the phrase "gorilla friendly" to convey information about a feature of the goods and services certified by the applicant, namely, "that they are beneficial to, helpful to, compatible with, or accommodating of gorillas." The Board agreed with the examining attorney that the phrase "gorilla friendly" was merely descriptive in this context and had to be disclaimed.

The applicant argued that the phrase "gorilla friendly" was not merely descriptive because: (1) it did not have a recognized or well-understood meaning, (2) it was ambiguous when applied to the applicant’s goods and services; (3) the terms GORILLA and FRIENDLY were incongruous; and (4) other FRIENDLY marks have been registered without disclaimer.

The applicant’s arguments were unavailing, according to the Board. First, a phrase need not be "widely understood" in order to be merely descriptive. A term may be merely descriptive even if an applicant is the first or only user of it. Second, the terms at issue were not ambiguous. Consumers would immediately understand GORILLA FRIENDLY to convey that the certified goods and services were deemed to be beneficial to, compatible with, or accommodating of gorillas, the Board said. For the same reason, the wording GORILLA FRIENDLY presented no incongruity. In the context of the applicant’s mark, the friendliness or social habits of gorillas were not relevant.

Finally, regarding third-party registrations, the applicant submitted copies of eight registrations for which the term FRIENDLY was not disclaimed, including a certification mark for BABY-FRIENDLY. The examining attorney, for her part, submitted printouts of 42 third-party registrations incorporating the word FRIENDLY (including BIRD FRIENDLY and CAT FIRENDLY) that disclaimed FREINDLY, were registered on the Supplemental Register, or were issued with a claim of acquired distinctiveness pursuant to Trademark Act Section 2(f). While it appeared that the Office often treated "-friendly" formative marks as merely descriptive, each mark had to be assessed on its own facts and record.

The Board concluded that the evidence in this case established that the phrase "gorilla friendly" was merely descriptive in association with the applicant’s certification activities for the identified goods and services, and therefore had to be disclaimed pursuant to Trademark Act Section 6(a). The applicant was given 30 days to submit the required disclaimer.

The case is Serial No. 86694394.

Attorneys: Betsy P. Bengtson and Larry H. Tronco, Holland & Hart LLP, for Wildlife Friendly Enterprise Network. Elizabeth N. Kajubi, Trademark Examining Attorney, USPTO.

Companies: Wildlife Friendly Enterprise Network

Cases: Trademark USPTO