[E-trademarks] descriptiveness objection based on packaging?

[Edward Timberlake]

Personally, I'd be inclined to say that one might be on solid ground
arguing that PANTYROSE BOUQUET does not merely describe either the goods or
the packaging in that a non-zero amount of imagination, thought, or
perception may be required to deduce what PANTYROSE means in this context
(not to mention a BOUQUET of them).


Sincerely,

Ed Timberlake
*Board Certified Specialist in Trademark Law
<https://www.nclawspecialists.gov/for-lawyers/certification-standard-summaries/trademark-law/>*

*Timberlake Law* <http://timberlakelaw.com/>
Chapel Hill, NC

Schedule a call on Clarity <https://clarity.fm/edtimberlake>
ed at timberlakelaw.com
919.960.1950








On Tue, Jun 17, 2025 at 7:22 PM Scott Landsbaum via E-trademarks <
e-trademarks at oppedahl-lists.com> wrote:

> Have you googled the examiner to see how in/experienced s/he may be?
>
> Regards,
> Scott
>
> Scott Landsbaum, Inc.
> 323-314-7881 / f 323-714-2454
> 8306 Wilshire Blvd., Suite 420, Beverly Hills, CA  90211
> www.scottlandsbaum.com / www.linkedin.com/in/scottlandsbaum/
>
> NOTICE: This e-mail is intended solely for the individual or individuals
> to whom it is addressed and may contain confidential attorney-client
> privileged information and attorney work product. If you are not the
> intended recipient, please do not read, forward, print, copy or distribute
> it or any of the information it contains.  Please delete it immediately and
> notify us by return email or by telephone at (323) 314-7881.
>
> IRS CIRCULAR 230 DISCLOSURE: Any discussion of tax matters contained in
> this or any email (including any attachments) or in any oral or other written
> communication is not intended to be used and cannot be used for the purpose
> of avoiding U.S. tax related penalties or in connection with the promotion,
> marketing or recommendation of any of the matters addressed in the
> communication.
>
>
> On Tue, Jun 17, 2025 at 3:34 PM Jessica R. Friedman via E-trademarks <
> e-trademarks at oppedahl-lists.com> wrote:
>
>> 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 <jrfriedman at litproplaw.com>*
>>
>> URL: *www.literarypropertylaw.com <http://www.literarypropertylaw.com>*
>>
>>
>>
>> [image: 1479430908386_PastedImage]
>>
>>
>>
>>
>> --
>> E-trademarks mailing list
>> E-trademarks at oppedahl-lists.com
>> http://oppedahl-lists.com/mailman/listinfo/e-trademarks_oppedahl-lists.com
>>
> --
> E-trademarks mailing list
> E-trademarks at oppedahl-lists.com
> http://oppedahl-lists.com/mailman/listinfo/e-trademarks_oppedahl-lists.com
>
-------------- next part --------------
An HTML attachment was scrubbed...
URL: <http://oppedahl-lists.com/pipermail/e-trademarks_oppedahl-lists.com/attachments/20250617/8a0a00d6/attachment.html>
-------------- next part --------------
A non-text attachment was scrubbed...
Name: image001.png
Type: image/png
Size: 8892 bytes
Desc: not available
URL: <http://oppedahl-lists.com/pipermail/e-trademarks_oppedahl-lists.com/attachments/20250617/8a0a00d6/attachment.png>