In re Brook & Whittle Limited — BLOCKOUT Design Is Distinctive Despite Descriptive Wording

Background

Brook & Whittle Limited applied to register a composite BLOCKOUT mark for light-blocking plastic films, packaging, stickers, and labels. The mark placed the word “BLOCK” inside a contrasting rectangle while “OUT” appeared outside it. The company disclaimed the words “BLOCK OUT,” effectively conceding that the wording itself was not inherently distinctive for goods designed to block light.

The examining attorney nevertheless refused registration under Section 2(e)(1) of the Trademark Act. That provision bars registration on the Principal Register of matter that is merely descriptive of the applicant’s goods. In the examiner’s view, the rectangle was only a basic background design and did not add a source-identifying impression separate from the descriptive wording.

Brook & Whittle appealed. It argued that the mark was not simply text placed on a common carrier shape: the visual contrast, the positive and negative space, and the placement of “BLOCK” inside a block created a unified visual metaphor. Those features, the company said, made the composite mark distinctive as a whole even though the wording remained disclaimed.

The Court’s Holding

The Trademark Trial and Appeal Board reversed the refusal. It agreed that BLOCKOUT, standing alone, was not inherently distinctive. But the proper question was whether the complete design created an additional commercial impression that consumers could perceive as a mark.

The Board found that the design could be viewed as more than ordinary text superimposed on a geometric background. The contrasting rectangle and lettering created an evident positive-and-negative-space effect. Placing “BLOCK” within a block could also evoke the act of blocking light. In that setting, the rectangle did more than serve as a passive carrier for the wording.

The examiner’s evidence showed that “BLOCKOUT” and the light-blocking function of the goods were used descriptively in the trade. But that evidence addressed the words, not whether the design and stylization themselves immediately described the goods. Connecting the visual treatment to the films’ and labels’ light-blocking function required at least some imagination, thought, or perception. That supported treating the design as suggestive rather than merely descriptive.

The Board acknowledged that reasonable minds could differ. Because it retained doubt about whether the composite mark as a whole was merely descriptive, it resolved that doubt in the applicant’s favor. The application may proceed toward publication with the BLOCK OUT disclaimer still in place. The decision is nonprecedential.

Key Takeaways

• A disclaimer of descriptive wording does not prevent registration when the complete word-and-design mark creates its own inherently distinctive commercial impression.
• A familiar geometric shape may contribute to distinctiveness when its placement, contrast, and interaction with the wording communicate more than a routine background.
• Evidence that words are descriptive does not automatically establish that the composite design is descriptive; the USPTO must evaluate the mark as consumers would encounter it as a whole.
• When the evidence leaves genuine doubt about mere descriptiveness, the TTAB generally resolves that doubt in favor of publication, where third parties may still oppose registration.

Why It Matters

The decision offers a practical path for brands whose preferred wording describes an important product feature. Thoughtful visual treatment may allow the composite mark to reach the Principal Register even when the words must be disclaimed. The design cannot be ornamental window dressing: it needs to produce a separate source-identifying impression when the mark is viewed as a whole.

For applicants, the ruling also underscores the value of explaining how design elements interact with language. Here, the relationship among the rectangle, contrasting text, and the concept of “blocking out” light mattered more than the rectangle considered in isolation. Because the opinion is nonprecedential and expressly describes the inquiry as subjective, it is best understood as a fact-specific illustration, not a broad rule that stylization will rescue descriptive wording.

Surfaced via The TTABlog.