[E-trademarks] descriptiveness objection based on packaging?
Pamela Chestek
pamela at chesteklegal.com
Wed Jun 18 17:12:17 UTC 2025
That doesn't trouble me too much. You are likely to buy multiples to
create a bouquet (that's the suggestion in the trademark itself). It is
a bit hard to pin to a doctrine, but if the trademark is registered,
won't it prevent anyone else from being able to use the same idea for
packaging? What else would you call a single item packaged that way, or
a collection of the items? I see a slew of cease and desist letters sent
for the descriptive use by competitors.
Pam
Pamela S. Chestek
Chestek Legal
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pamela at chesteklegal.com
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On 6/18/2025 9:50 AM, Jessica R. Friedman wrote:
> 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
> PLEASE NOTE OUR NEW MAILING ADDRESS
> 4641 Post St.
> Unit 4316
> El Dorado Hills, CA 95762
> +1 919-800-8033
> pamela at chesteklegal.com <mailto:pamela at chesteklegal.com>
> www.chesteklegal.com <http://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 <mailto: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
>> <mailto: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
>> 8306 Wilshire Blvd., Suite 420, Beverly Hills, CA 90211
>> www.scottlandsbaum.com <http://www.scottlandsbaum.com/> /
>> www.linkedin.com/in/scottlandsbaum/
>> <https://www.linkedin.com/in/scottlandsbaum/>
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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>_
>>
>> 1479430908386_PastedImage
>>
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>
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