[E-trademarks] descriptiveness objection based on packaging?

Wed Jun 18 16:50:51 UTC 2025

Pam, even though each package is a single “rose” and the client does not sell packages of multiple items of lingerie?  I do not think a single rose constitutes a bouquet.

Jessica R. Friedman
Attorney at Law
(917) 647-1884
jrfriedman at litproplaw.com
www.literarypropertylaw.com
________________________________
From: E-trademarks <e-trademarks-bounces at oppedahl-lists.com> on behalf of Pamela Chestek via E-trademarks <e-trademarks at oppedahl-lists.com>
Sent: Wednesday, June 18, 2025 5:43:34 PM
To: e-trademarks at oppedahl-lists.com <e-trademarks at oppedahl-lists.com>
Cc: Pamela Chestek <pamela at chesteklegal.com>
Subject: Re: [E-trademarks] descriptiveness objection based on packaging?

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
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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<mailto:ed at timberlakelaw.com>
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On Tue, Jun 17, 2025 at 7:22 PM Scott Landsbaum via E-trademarks <e-trademarks at oppedahl-lists.com<mailto:e-trademarks at oppedahl-lists.com>> wrote:
Have you googled the examiner to see how in/experienced s/he may be?

Regards,
Scott

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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<mailto: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>

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