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THE BREASTAURANT TRADEMARK – NOT SUCH, A BIG DEAL AFTER ALL

Posted in Trademark Law

By Scott Hervey

What do Hooters, Twin Peaks, Canz, Tilted Kilt, and Mugs N Jugs have in common.  These are all “Breastaurants.” According to Wikipedia, a breastaurant is a “restaurant that has sexual undertones, most commonly in the form of large-breasted, skimpily dressed waitresses and barmaids.”    However, on October 23, 2012  the United States Patent and Trademark Office issued a trademark registration for the mark BREASTAURANT to Bikini Bar and Restaurant, LLC for bar and restaurant services on the Principal Register..  Even more interesting then someone having filed an application to register the mark BREASTAURANT, is that the USPTO allowed the mark to register on the Principal Register without challenging the mark as being merely descriptive.  

15 USC 1052 provides as follows:

No trademark by which the goods of the applicant may be distinguished from the goods of others shall be refused registration on the principal register on account of its nature unless it…. (e) Consists of a mark which, (1) when used on or in connection with the goods of the applicant is merely descriptive or deceptively misdescriptive of them….

Matter that “merely describes” the goods or services on or in connection with which it is used is not registrable on the Principal Register. As noted by the United States Court of Customs and Patent Appeal (the precursor to the Federal Circuit) in In re Abcor Dev. Corp):

The major reasons for not protecting such marks are: (1) to prevent the owner of a mark from inhibiting competition in the sale of particular goods; and (2) to maintain freedom of the public to use the language involved, thus avoiding the possibility of harassing infringement suits by the registrant against others who use the mark when advertising or describing their own products.

The strength of a trademark may be categorized along a continuum, ranging from marks that are highly distinctive to matter that is a generic name for the goods or services. At one extreme are marks that, when used in relation to the goods or services, are completely arbitrary or fanciful. Next on the continuum are suggestive marks, followed by merely descriptive matter. Finally, generic terms for the goods or services are at the opposite end of the continuum from arbitrary or fanciful marks. 

Marks that describe the intended purpose, function or use of the goods, desirable characteristics of the goods, the nature of the goods or the end effect upon the user are considered merely descriptive and are not registrable absent establishing secondary meaning.   The determination of whether a mark is merely descriptive must be made in relation to the manner in which the mark is encountered by consumers.  The examiner must consider the goods or services for which registration is sought, the context in which the mark is used or intended to be used in connection with those goods/services, and the possible significance that the mark would have to the average consumer in the respective marketplace.

For example, NICE ‘N SOFT® for bathroom tissue or PARK ‘N FLY® for off-airport auto parking services are descriptive marks.  The same is true with respect to marks that identify the place in which the goods or services originate and therefore are geographically descriptive.   The major reasons for not protecting marks that are merely descriptive is to prevent the owner of a mark from inhibiting competition in the sale of particular goods and to maintain freedom of the public to use language which naturally describes the goods or services, thus avoiding the possibility of harassing infringement suits by the registrant against others who use the mark when advertising or describing their own product. 

When a mark is a compound word, in order for the mark to be merely descriptive the examining attorney must producing evidence that each of the words that make up the mark is descriptive, and that the separate words retain their descriptiveness when joined to form a compound word that has no additional meaning.    An example of a combined terms found to be merely descriptive are THE BREATHABLE MATTRESS for “beds, mattresses, box springs and pillows” and EXPRESSERVICE banking and trust services.

One step up from descriptive marks, but miles away as far as protectability goes, are suggestive marks.  Suggestive marks are registrable on the Principal Register without proof of secondary meaning.  Suggestive marks are those which, while not really descriptive of the product’s qualities, nevertheless, suggest some benefit or property of the product.  An example involves ROACH MOTEL® for insect traps, in which this mark was enforced against an infringer using "Roach Inn."  The Court explained,

We do not find the mark ROACH MOTEL® to be a merely descriptive mark.  While roaches may live in some motels against the will of the owners, motels are surely not built for roaches to live in.  Hence, the mark is fanciful on conception.  Indeed its very incongruity is what catches one’s attention.

The determination of whether a mark is merely descriptive (and therefore not registrable absent evidence of secondary meaning) or merely suggestive has always been a challenging task.  The Trademark Trial and Appeal Board has frequently stated that there is “a thin line of demarcation involved in making a determination as to whether a term or slogan is suggestive or merely descriptive and, apropos, thereto, when a term stops suggesting and begins to describe the goods in connection with which it is used, it is, at times, a difficult question to resolve.”  The Board has suggested that in determining whether a mark has crossed the threshold from suggestiveness to descriptiveness, the following factors should be analyzed:  (1) is the mark used in a trademark sense and not in a descriptive manner to describe the goods; (2) is the mark an expression that would be or is commonly used to describe the goods; (3) does the mark possess some degree of ingenuity in its phraseology; (4) does the mark say something at least a little different from what might be expected from a product, or say expected things in an unexpected way; and (5) does the mark possess more than a single meaning, namely, a double-entendre, which imparts to it a degree of ingenuity and successfully masks or somewhat obscures the intended commercial message.

So is “Breastaurant” merely descriptive?   While it is always a fine line between merely descriptive and highly suggestive, there are significant indicators that Breastaurant is a merely descriptive term.  First, the applicant’s own specimen shows the use of the mark within a website page which states as follows: “How America’s Only Sports Breastaurant got started.”  The proper use of a trademark means using the mark as an adjective, not as a noun or a verb.  .  Here it appears that the applicant has used the mark as a term for a specific type of restaurant and not in reference to the applicant’s own restaurant.  Next, the fact that Wikipedia and other online sources use the term to identify a certain type of restaurant whose female servers have certain attributes shows that the mark is an expression that is commonly used to describe a particular type of restaurant.  Although the mark possesses a degree of ingenuity in its phraseology, it does not obscure in any way the intended commercial message.

It will be interesting to see what steps, if any Bikini Bar and Restaurant will take to enforce its trademark rights.  Other operators of these types of restaurants do not seem to be using this term at all, but are more focused on growing their core brands.  One never knows though.  Bikini Bar and Restaurant garnered significant free publicity and press coverage with the announcement of the registration of its mark.  Imagine what press coverage a cancellation proceeding would garner.