[E-trademarks] descriptiveness objection based on packaging?

Wed Jun 18 16:43:34 UTC 2025

I often disagree with Ed, but it usually goes the other way around - he 
supports the decision of the Office and I do not.

In this case I think this is a perfectly reasonable descriptiveness 
refusal. I don't suppose your objection is that the refusal is only 
ascertainable by looking at the specimen - I expect that is why an SOU 
goes back to the examining attorney, for a second look. It would be very 
easy to game the system on descriptiveness if you could file an 
application and never disclose how the mark is used in context.

I also think that the fact that the item is packaged to appear as a rose 
on a stem is a characteristic or feature of the product and therefore 
the refusal is appropriate. The panties are packaged that way that 
represents roses and the intention is that one use them in ways that one 
would traditionally use roses. I would consider this a feature of the 
product.

Pam

Pamela S. Chestek
Chestek Legal
PLEASE NOTE OUR NEW MAILING ADDRESS
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El Dorado Hills, CA 95762
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pamela at chesteklegal.com
www.chesteklegal.com

On 6/17/2025 4:54 PM, Edward Timberlake via E-trademarks wrote:
> 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 <tel:323-314-7881> / f 323-714-2454
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>
>     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
>         <mailto:jrfriedman at litproplaw.com>_
>
>         URL: _www.literarypropertylaw.com
>         <http://www.literarypropertylaw.com>_
>
>         1479430908386_PastedImage
>
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