the best trademarks are often highly suggestive of the advantageous characteristics of the goods
How later courts described this case
- the best trademarks are often highly suggestive of the advantageous characteristics of the goods
Written by the judges who cited it.
The opinion
Almond, Judge,
dissenting.
With deference, I am unable to agree with Judge Rich’s opinion in its reasoning, nor can I agree with the majority in its result. I would affirm the decision of the Trademark Trial and Appeal Board holding that SKINVISIBLE is merely descriptive of appellant’s transparent medical and surgical tape.
Judge Rich’s opinion, in reversing, sets forth two lines of reasoning, both of which I think unsound. First, Judge Rich distinguishes between an opposition predicated on likelihood of confusion under § 2(d) and one predicated on descriptiveness of the mark under § 2(e) .'Obviously there is some difference (i.e., in types of proofs, etc.)'; however, Judge Rich seemingly carries the distinction to the point of saying in effect that, if the trademark examiner has not objected to the descriptiveness of the mark, then this court will not look favorably upon a competitor’s opposition unless the mark is so descriptive as to be a common descripr tive term. I completely disagree. The statute fully recognizes a distinction between the “public” right protected by § 2(e) and the “private” right protected by § 2(d) since it provides that descriptive marks may be registered if they have been shown to be distinctive within the meaning of § 2 (f), at which point the public right to use the descriptive term gives way to the acquired private right in the mark. When there is no § 2(f) distinctiveness shown, the only issue is whether the mark *976 is prohibited from being registered by § 2(e) and opposer has every right to protect his, and the public’s, interest in using the allegedly descriptive term. This right is not weaker than that under § 2(d), and I cannot agree with any implication that it is since that would constitute a dangerous and totally misleading precedent unsupported in law.
Secondly, Judge Rich’s opinion implies that a coined word can never be descriptive because it “is not going to deprive * * * [anyone] of any right to use the language in the normal way.” I not only think that such coined words can be descriptive, but also I think the one in this case is descriptive. The record clearly supports appellee’s contention and the board’s holding that SKINVISIBLE is merely a combination of two commonplace words, “skin” and “visible,” and that the coined word SKINVISIBLE connotes the same thing as the words from which it was formed, i.e., that the adhesive tape is invisible on the skin (transparent) and the “skin.” is “visible” through the tape. Even if we accept appellant’s contention that SKINVISIBLE is a combination of “skin” and “invisible,” I think the connotation of such a coined word is the same as that previously mentioned. Therefore, I agree with the board that in either sense the mark SKINVISIBLE is merely descriptive of appellant’s goods. In addition, I would like to again emphasize that there are many other possible coined words which would also be descriptive of various goods, and hence are unregisterable under § 2(e).
I would affirm the decision of the board.