[E-trademarks] descriptiveness objection based on packaging?

[Jessica R. Friedman]

Client sells lingerie, each item of which is cleverly packaged to resemble a rose on a stem, under the mark PANTYROSE BOUQUET. There is no such thing as a PANTYROSE and the word BOUQUET does not describe lingerie. But the examiner has rejected the application, saying, “These words merely describe applicant’s lingerie in that they are underpants for women packaged decoratively to resemble a medley of roses, but is [sic] instead a medley of lingerie.[?] Moreover, applicant’s specimen clearly shows that its  lingerie is packaged to resemble a bouquet of roses.”

A mark is merely descriptive if it describes an ingredient, quality, characteristic, function, feature, purpose or use of an applicant’s goods or services (and the examiner actually cites this rule). Is there some rule that I have just never heard of that says that a mark is descriptive if it describes a product’s creative packaging?

Jessica R. Friedman
Attorney at Law
300 East 59 Street, Ste. 2406
New York, NY 10022
Phone: 212-220-0900
Cell: 917-647-1884
E-mail: jrfriedman at litproplaw.com<mailto:jrfriedman at litproplaw.com>
URL: www.literarypropertylaw.com<http://www.literarypropertylaw.com>

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