TTAB upholds mere descriptiveness refusal to register Swatch’s TOURBILLON mark

by Ladas & Parry LLP

In In re The Swatch Group Management Services AG (Serial No 85485359, April 18 2014), in a precedential
opinion, the Trademark Trial and Appeal Board (TTAB) has affirmed, on the ground of mere descriptiveness,
a refusal to register the mark TOURBILLON (and design) by The Swatch Group Managements Services AG
for “jewellery, horological and chronometric instruments” in Class 14 of the Nice Classification.
The mark, depicted below, features the term ‘tourbillon’ below a design of a tourbillon, which the applicant
admitted is a mechanism found in the escapement of some watches.


According to the record, tourbillons were developed around 1795 and were originally designed to improve
watch accuracy. They are still included in some expensive modern watches as a novelty and demonstration
of watchmaking virtuosity. Therefore, the TTAB held there was no doubt that TOURBILLON is descriptive of
watches and their parts.

Before the TTAB proceeding, Swatch had entered a disclaimer of exclusive rights to use the term ‘tourbillon’
for “horological and chronometric instruments”, but did not enter a disclaimer in relation to jewellery. Noting
that “a descriptiveness refusal is proper with respect to all of the identified goods in an International Class if
the mark is descriptive of any of the goods or services in that class” (citing In re Chamber of Commerce
(102 USPQ2d 1217, 1219 (Fed Cir 2012)), the TTAB discussed why the descriptiveness refusal applied to

The examining attorney’s evidence included advertisements that referred to watches as a category of
jewellery. The TTAB also relied on the wording ‘jewellery watches’ as an acceptable identification of goods
listed in the “Identification of Goods and Services Manual (2014 version)”. Swatch countered that “the watch
industry does not consider watches as ‘jewellery’ and that, accordingly, TOURBILLON is arbitrary as
applied to jewellery and therefore registrable for such goods”. The TTAB held that the term ‘jewellery’
includes watches. Therefore, “TOURBILLON is merely descriptive of jewellery, inasmuch as the category of
jewellery includes watches and watches may include, as a significant component, a tourbillon”.

Swatch also argued that the design element of the mark created a separate commercial impression from
the word element and should not be considered descriptive because it is “not an exact representation of the
applicant’s extremely intricate escapement, but is an abstract, highly stylised version of the applicant’s
unique mechanism”.

The TTAB examined this argument at length but rejected it, concluding that the design contained sufficient
detail to convey that it represents a tourbillon even though it might not be an exact representation of a
tourbillon or Swatch’s tourbillon. The TTAB explained that, unlike determining whether a minimum level of
creativity was satisfied to merit copyright protection, “the ultimate guideline in this case is whether the
design forthwith conveys an immediate idea of a feature of the goods and lacks any additional fanciful,
arbitrary or suggestive matter.”

Finally, Swatch argued that the combination of the word and design was sufficient to render the mark
registrable as a whole. The TTAB found that, “to the contrary, the combination of the word ‘tourbillon’ with
the applicant’s tourbillon design increases, rather than decreases, the clarity with which the design will be
perceived as a tourbillon, inasmuch as the wording immediately conveys that information to the customer”.

Therefore, the TTAB held that the mark as a whole and its component parts were merely descriptive.

Curiously, Swatch previously owned US Registration No 2884033 for the TOURBILLON word mark by itself covering “jewellery; precious stones; precious metals”, but apparently could not establish use of the mark
so it was cancelled for failure to file an affidavit of use the same year this new application was filed. In that
application, the examiner never raised a descriptiveness refusal and no disclaimer was entered.

This article first appeared on WTR Daily, part of World Trademark Review, in May 2014. For further information, please go to

[View source.]

DISCLAIMER: Because of the generality of this update, the information provided herein may not be applicable in all situations and should not be acted upon without specific legal advice based on particular situations.

© Ladas & Parry LLP | Attorney Advertising

Written by:

Ladas & Parry LLP

Ladas & Parry LLP on:

Readers' Choice 2017
Reporters on Deadline

"My best business intelligence, in one easy email…"

Your first step to building a free, personalized, morning email brief covering pertinent authors and topics on JD Supra:
Sign up using*

Already signed up? Log in here

*By using the service, you signify your acceptance of JD Supra's Privacy Policy.
Custom Email Digest
Privacy Policy (Updated: October 8, 2015):

JD Supra provides users with access to its legal industry publishing services (the "Service") through its website (the "Website") as well as through other sources. Our policies with regard to data collection and use of personal information of users of the Service, regardless of the manner in which users access the Service, and visitors to the Website are set forth in this statement ("Policy"). By using the Service, you signify your acceptance of this Policy.

Information Collection and Use by JD Supra

JD Supra collects users' names, companies, titles, e-mail address and industry. JD Supra also tracks the pages that users visit, logs IP addresses and aggregates non-personally identifiable user data and browser type. This data is gathered using cookies and other technologies.

The information and data collected is used to authenticate users and to send notifications relating to the Service, including email alerts to which users have subscribed; to manage the Service and Website, to improve the Service and to customize the user's experience. This information is also provided to the authors of the content to give them insight into their readership and help them to improve their content, so that it is most useful for our users.

JD Supra does not sell, rent or otherwise provide your details to third parties, other than to the authors of the content on JD Supra.

If you prefer not to enable cookies, you may change your browser settings to disable cookies; however, please note that rejecting cookies while visiting the Website may result in certain parts of the Website not operating correctly or as efficiently as if cookies were allowed.

Email Choice/Opt-out

Users who opt in to receive emails may choose to no longer receive e-mail updates and newsletters by selecting the "opt-out of future email" option in the email they receive from JD Supra or in their JD Supra account management screen.


JD Supra takes reasonable precautions to insure that user information is kept private. We restrict access to user information to those individuals who reasonably need access to perform their job functions, such as our third party email service, customer service personnel and technical staff. However, please note that no method of transmitting or storing data is completely secure and we cannot guarantee the security of user information. Unauthorized entry or use, hardware or software failure, and other factors may compromise the security of user information at any time.

If you have reason to believe that your interaction with us is no longer secure, you must immediately notify us of the problem by contacting us at In the unlikely event that we believe that the security of your user information in our possession or control may have been compromised, we may seek to notify you of that development and, if so, will endeavor to do so as promptly as practicable under the circumstances.

Sharing and Disclosure of Information JD Supra Collects

Except as otherwise described in this privacy statement, JD Supra will not disclose personal information to any third party unless we believe that disclosure is necessary to: (1) comply with applicable laws; (2) respond to governmental inquiries or requests; (3) comply with valid legal process; (4) protect the rights, privacy, safety or property of JD Supra, users of the Service, Website visitors or the public; (5) permit us to pursue available remedies or limit the damages that we may sustain; and (6) enforce our Terms & Conditions of Use.

In the event there is a change in the corporate structure of JD Supra such as, but not limited to, merger, consolidation, sale, liquidation or transfer of substantial assets, JD Supra may, in its sole discretion, transfer, sell or assign information collected on and through the Service to one or more affiliated or unaffiliated third parties.

Links to Other Websites

This Website and the Service may contain links to other websites. The operator of such other websites may collect information about you, including through cookies or other technologies. If you are using the Service through the Website and link to another site, you will leave the Website and this Policy will not apply to your use of and activity on those other sites. We encourage you to read the legal notices posted on those sites, including their privacy policies. We shall have no responsibility or liability for your visitation to, and the data collection and use practices of, such other sites. This Policy applies solely to the information collected in connection with your use of this Website and does not apply to any practices conducted offline or in connection with any other websites.

Changes in Our Privacy Policy

We reserve the right to change this Policy at any time. Please refer to the date at the top of this page to determine when this Policy was last revised. Any changes to our privacy policy will become effective upon posting of the revised policy on the Website. By continuing to use the Service or Website following such changes, you will be deemed to have agreed to such changes. If you do not agree with the terms of this Policy, as it may be amended from time to time, in whole or part, please do not continue using the Service or the Website.

Contacting JD Supra

If you have any questions about this privacy statement, the practices of this site, your dealings with this Web site, or if you would like to change any of the information you have provided to us, please contact us at:

- hide
*With LinkedIn, you don't need to create a separate login to manage your free JD Supra account, and we can make suggestions based on your needs and interests. We will not post anything on LinkedIn in your name. Or, sign up using your email address.