In a soporific but precedential decision, the Board affirmed two of three refusals of the proposed mark THERMAL MATRIX for a "Heat responsive and malleable liner that is an integral component of an oral dental appliance used in the mouth and worn over the teeth of an individual while sleeping to reduce the effects of snoring and sleep apnea" [THERMAL disclaimed]. The Board found the mark to be merely descriptive of the goods, and further found that the specimen of use (immediately below) does not show the mark in use in connection with applicant's liners. However, the Board overturned the third refusal, concluding that the mark as depicted in the application drawing (i.e., THERMAL MATRIX) is a substantially exact representation of the mark as actually used. In re James S. Fallon, Serial No. 86882668 (October 21, 2020) [precedential] (Opinion by Judge Christopher Larkin).
Faulty Specimen: Examining Attorney Christopher
Buongiorno asserted that "[t]he picture of the dental
appliance on the package does not show or highlight the lining of
the dental appliance in a way where consumers are likely to
associate the wording in the mark as the source indicator for a
liner." The Board agreed.
And so the Board affirmed this refusal.
Mere Descriptiveness: Applicant Fallon argued that the Examining attorney "focused entirely on the meanings of the individual words 'thermal' and 'matrix' while overlooking the significance of the mark THERMAL MATRIX taken as a whole."
The Board found that each word in the mark is "highly descriptive" of the goods. "As shown in the webpages above, Applicant's 'heat responsive and malleable liner' embodies 'a pattern of lines and spaces' through which the user can personalize the fit of the oral appliance through the application of heat."
The Board then considered whether the combination of the two
words yields "something more than merely the sum of its
descriptive parts." It pointed out that Fallon website
"touts the product's 'Thermal Matrix Design,'
which 'features a thermal matrix material that enables each
user to personalize their device with a custom impression'
through 'a simple step by step process that can be done in the
comfort of your home.'"
Concluding that Fallon failed to rebut the USPTO's prima facie showing, the Board affirmed the Section 2(e)(1) refusal.
Mutilation? The Examining Attorney contended that the specimen of use displays the mark as NEW THERMAL MATRIX, whereas the application drawing displays the mark as THERMAL MATRIX, since "NEW" is not a generic word but merely descriptive. Applicant Fallon asserted that consumers would not see "NEW" as part of the mark because "the letter size and style of the word 'NEW' are visually distinguishable from those of the words 'Thermal Matrix' which are located separately on the package."
The Board agreed with Fallon on this one. It found that THERMAL
MATRIX, as it appears on the specimen, "comprises a separate
and distinct 'trademark' in and of itself." (quoting
Institut Nat'l Des Appellations d'Origine v. Vintners
Int'l Co., 958 F.2d 1574, 22 USPQ2d 1190, 1197 (Fed.
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