[E-trademarks] descriptiveness objection based on packaging?

Fri Jun 20 01:13:54 UTC 2025

It seems to me that, at least for the purposes of registration, there's an
important distinction between descriptive (which is capable of
registration on the Principal Register) and merely descriptive (which
isn't).

Perhaps influenced by the fact that I do not wear and therefore do not
typically shop for panties, I'd personally still be inclined to consider
PANTYROSE as descriptive for panties packaged to appear as roses, but
(perhaps influenced by the play on words with pantyhose) not merely so.

Use of the mark as PANTY ROSE, on the other hand, would strike me as less
distinctive, and, of course, any instances of disclaimers on record (for
either PANTYROSE or PANTYROSE) would argue strongly in the direction of
mere descriptiveness.

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 Wed, Jun 18, 2025 at 1:12 PM Pamela Chestek via E-trademarks <
e-trademarks at oppedahl-lists.com> wrote:

> 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
> PLEASE NOTE OUR NEW MAILING ADDRESS
> 4641 Post St.
> Unit 4316
> El Dorado Hills, CA 95762
> +1 919-800-8033
> pamela at chesteklegal.com
> www.chesteklegal.com
>
> 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>
> <e-trademarks-bounces at oppedahl-lists.com> on behalf of Pamela Chestek via
> E-trademarks <e-trademarks at oppedahl-lists.com>
> <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>
> <e-trademarks at oppedahl-lists.com>
> *Cc:* Pamela Chestek <pamela at chesteklegal.com> <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
> 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 / f 323-714-2454
> 8306 Wilshire Blvd., Suite 420, Beverly Hills, CA  90211
> www.scottlandsbaum.com / 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> 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]
>
>
>
>
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