Monday, July 06, 2020

Ruling That "generic.com" Terms May Be Registrable, Supreme Court Affirms Fourth Circuit BOOKING.COM Judgment

In a closely watched case, at least by trademark attorneys, the United States Supreme Court ruled that a proposed mark comprising a generic term coupled with ".com" is not automatically generic, but may be registrable provided that consumers perceive the mark as a source indicator. The Court affirmed the judgment of the U.S. Court of Appeals for the Fourth Circuit, which rejected the USPTO's argument that the combination of ".com" with the generic term "booking" is generic for online hotel-reservation services. [TTABlogged here]. The Supreme Court concluded that "[i]n circumstances like those this case presents, a 'generic.com' term is not generic and can be eligible for federal trademark registration." USPTO v. Booking.com B.V., 591 U.S. ___ (2020).


The U.S District Court for the Eastern District of Virginia concluded, based on evidence of consumer perception, that BOOKING.COM, unlike the word "booking" itself, is not generic. [TTABlogged here]. It also found that the term had acquired distinctiveness with regard to hotel reservation services and was therefore registrable. The Fourth Circuit affirmed the district court's judgment, "rejecting the PTO's contention that the combination of '.com' with a generic term like 'booking' is necessarily generic."

The parties agreed that "[e]ligibility for registration ... turn's on the mark's capacity to 'distinguis[h] goods 'in commerce.'" Trademark Act Section 1052. And the question of whether BOOKING.COM is generic "turns on whether the mark, taken as a whole, signifies to consumers the class of on-line hotel reservation services."

The Supreme Court pointed out that the courts below determined that consumers "do not in fact perceive the term 'Booking.com' that way." "That should resolve this case. Because 'Booking.com' is not a generic name to consumers, it is not generic."

The USPTO, however, contended that an inquiry into consumer perception was unnecessary, not that the determination regarding consumer perception was wrong. According to the USPTO, every "generic.com" term is generic, absent exceptional circumstances. Noting that the Office has allowed other "generic.com" terms to be registered, the Court found no support for that view in trademark law or policy.

The USPTO relied on Goodyear's Rubber Glove Mfg. Co. v. Goodyear Rubber Co., which held that "Goodyear Rubber Company" was not "capable of exclusive appropriation," the term "Goodyear Rubber" being generic. It argued that adding ".com" to a generic term is like adding "company" and conveys no additional meaning to distinguish one provider's goods or services from another's. The Court disagreed.

A “generic.com” term might also convey to consumers a source-identifying characteristic: an association with a particular website. As the PTO and the dissent elsewhere acknowledge, only one entity can occupy a particular Internet domain name at a time, so “[a] consumer who is familiar with that aspect of the domain-namesystem can infer that BOOKING.COM refers to some specific entity.” *** Thus, consumers could understand a given “generic.com” term to describe the corresponding website or to identify the website’s proprietor.

The Court noted that "generic.com" terms are not automatically nongeneric. Whether a given "generic.com" term is generic depends on whether consumers perceive the term as a source indicator.

The majority opinion addressed the concerns of Justice Breyer in his dissent where he argued that providing trademark protection for a "generic.com" term would hinder competition. According to the majority, "trademark law hems in the scope" of descriptive marks because weaker marks are given less protection: "consumers are less likely to think that other uses of the common element emanate from the mark's owner." Moreover, the doctrine of "classic fair use" shields one who uses a descriptive term "fairly and in good faith," and not as a trademark, to describe her own goods.

In addition, Booking.com conceded that "Booking.com" would be a weak mark, accepted that close variations are not likely to infringe. and acknowledged that registration of its mark would not prevent competitors from using the word "booking" to describe their own services.

Finally, the USPTO questioned whether owners of "generic.com" mark need additional protection in addition to the competitive advantages arising from ownership of the domain name. The Court was not impressed, observing that "the PTO fails to explain how the exclusive connection between a domain name and its owner makes the domain name a generic term all should be free to use." And dismissing the USPTO's argument that protection under unfair competition law would still be available if "booking.com" were deemed generic, the Court saw no reason to deny Booking.com the benefits provided to other marks that are not generic.

And so the Court rejected the USPTO's sole ground for challenging the judgment of the Court of Appeals by ruling that "generic.com" terms are eligible for registration.

Read comments and post your comment here.

TTABlog comment: In his dissent, Justice Breyer raises a number of real world concerns, noting, for example, that even if the defense of fair use may ultimately protect alleged infringers, just the threat of costly litigation will discourage others from using variations of the registered mark.

Text Copyright John L. Welch 2020.

Thursday, July 02, 2020

TTAB Posts July 2020 (Video) Hearing Schedule

The Trademark Trial and Appeal Board (Tee-Tee-Ā-Bee) has scheduled six (VI) oral hearings for the month of July 2020. All of the hearings will be held via video conference. Briefs and other papers for each case may be found at TTABVUE via the links provided.



July 7, 2020 - 2 PAM: In re Chicanos Por La Causa, Inc., Serial No. 87935794 [Section 2(d) refusal of the mark CPLC for various health care services in class 44, in view of the identical mark registered as a certification mark for "perinatal loss care services"].


July 9, 2020 - 1 PM: Biogrand Co., Ltd. v. Sunbio Corporation, Cancellation No. 92067124 [Petition for cancellation of a registration for the mark B-7 for dietary and nutritional supplements, on the grounds of likelihood of confusion with petitioner's identical mark for identical goods, deceptiveness (Section 2(a)), misrepresentation of source (Section 14(3)), fraud, nonuse, and abandonment].


July 23, 2020 - 10 AM: In re Slumbersac Trading Company Ltd., Serial Nos. 88514693 [Section 2(d) refusal of the mark shown below for babies' and childrens' clothing and for maternity wear, in view of the registered marks DREAM BAG for bedding and REBEL DREAM BAG for backpacks].


July 23, 2020 - 10:30 AM: In re Slumbersac Trading Company Limited, Serial No. 88278672 [Section 2(d) refusal of the mark shown below for babies' and children's clothing and bedding , in view of the registered mark DREAM BABY for, inter alia, children's safety products, child restraining devices, covers for baby strollers, spoons, teething rings, and baby bottles].



July 23, 2020 - 2 PM: Eleven IP Holdings, LLC v. K11 Group Limited, Consolidated Oppositions Nos. 91230955, 91230956, and 91236465 [Section 2(d) oppositions to registration of the marks K11 in standard and stylized forms, and the mark ATELIER K11 (stylized) for "Leasing and rental of real estate, real estate agency services, real estate management services, real estate valuation services, real estate appraisal, real estate brokerage, real estate investment services, rental of offices and apartments; financial advisory, analysis, consultancy, and information services; capital investment services; financial valuation services; advisory and consultancy services relating to finance, investments, and real estate." in view of the registered marks ELEVEN and the design mark shown below (purportedly a stylized "11") for various services, including hotels, travel agency services, and banking and wealth management services].


July 29, 2020 - 1 PM: In re Branded LLC, Serial Nos. 87214622 and 87214637 [Section 2(e)(1) mere descriptiveness refusal of TWEEDS for "Bed sheets, pillow cases, comforters, bedspreads, pillow shams, bed ruffles, duvet covers, comforter covers, mattress pads, bed blankets, towels, wash cloths, fabric shower curtains, draperies and fabric valances” and "shoes; belts; swimwear"].


Read comments and post your comment here.

TTABlog comment: Any predictions? See any WYHA?s ? By the way, why aren't these video hearings publicly accessible?

Text Copyright John L. Welch 2020.

Wednesday, July 01, 2020

TTABlog Quarterly Index: April - June 2020

E-mail subscriptions to the TTABlog are available. Just enter your e-mail address in the box on the right to receive a daily update via Feedblitz. You may also follow the TTABlog on Twitter: @TTABlog.


Section 2(a) - False Association:
Section 2(b) - Simulation of Flag:


Section 2(d) - Likelihood of Confusion:


Section 2(e)(1) - Mere Descriptiveness:


Section 2(e)(2) - Primarily Geographically Descriptive:
Section 2(e)(3) - Primarily Geographically Deceptively Misdescriptive:
Section 2(e)(4) - Primarily Merely a Surname:
Section 2(f) - Acquired Distinctiveness:
Abandonment/Nonuse:
Dilution:
Genericness:
Ownership:
Section 18 - Restriction of Registration:
Unacceptable Specimen:
Unlawful Use:
Concurrent Use:
Discovery/Evidence/Procedure:


CAFC Decisions:
Other:
Text Copyright John L. Welch 2020.

Tuesday, June 30, 2020

TTAB Sustains Two-Pronged Section 2(e)(1) Opposition to ANDRÉ-CHARLES BOULLE for Furniture

The Board sustained this two-pronged Section 2(e)((1) opposition to registration of the proposed mark ANDRÉ-CHARLES BOULLE for "Furniture, mirrors." Boulle was a celebrated 17th-Century French furniture maker whose works remain on the market today. The Board found the mark to be either merely descriptive, or deceptively misdescriptive, of the goods. De Boulle Diamond & Jewelry, Inc. v. Boulle Ltd., Opposition No. 91219499 (June 23, 2020) [not precedential] (Opinion by Judge Frances Wolfson).


A mark is “merely descriptive” if it immediately conveys information about an ingredient, quality, characteristic, feature, function, purpose or use of the goods. A mark is “deceptively misdescriptive if it: (1) misrepresents any fact concerning the goods or services; and (2) consumers are likely to believe the misdescription.

Opposer introduced the testimony of design historian Judith Gura to establish that André-Charles Boulle is a celebrated French cabinetmaker associated with the Baroque period, and known for an elaborate and intricate technique of marquetry that has become known as "Boulle work." His name is known to any person with an awareness of French traditional design. Boulle did not sign his work, and so it must be authenticated in other ways. “Virtually all fully-documented examples are in museums, and any pieces that come to market bring exceptional prices.”

Opposer argued that if Applicant sells genuine articles of furniture created by André-Charles Boulle or his studio (unlikely since Boulle's genuine works are exceedingly rare and virtually all examples are in museums), then the mark ANDRÉ-CHARLES BOULLE is merely descriptive of the goods. On the other hand, if Applicant sells furniture that is not genuine, the mark will be deceptively misdescriptive. Applicant stated that it "has not decided whether or not it will sell goods created by André-Charles Boulle."

In light of the fame and reputation of André-Charles Boulle the Board found that use of the proposed mark for furniture would likely "create the impression among potential buyers that the piece was created by Boulle's original workshop." If used in connection with furniture not made by André-Charles Boulle, it would be deceptively misdescriptive.

Applicant maintained that its mark is only “suggestive of the quality of craftsmanship and detail associated with André-Charles Boulle work and legacy,” but that assertion was belied by the use of the proposed mark at the website of applicant's affiliate (see depiction above) and its own Pinterest board.

Prospective consumers, viewing the board labeled “André-Charles Boulle/Jean Boulle Luxury Group,” will believe that Applicant sells genuine André-Charles Boulle goods. If true, the proposed mark is merely descriptive. If false, the designation is deceptively misdescriptive.

And so the Board affirmed the refusal(s) under Section 2(e)(1)

Read comments and post your comment here.

TTABlogger comment: There's a lot of history in the background to this case.

Text Copyright John L. Welch 2020.

Monday, June 29, 2020

TTABlog Test: Is STAGER Merely Descriptive of Theatrical Production Software?

The USPTO refused to register the proposed mark STAGER for, inter alia, downloadable theatrical management application software," finding the term to be merely descriptive under Section 2(e)(1). Applicant argued that "stager" is not a term of art in the theatrical production field, is not used by its competitors, and is primarily used in the real estate field for a person who prepares houses for sale. How do you think this came out? In re Stager Intellectual Properties, LLC, Serial No. 87756847 (June 26, 2020) [not precedential] (Opinion by Judge Angela Lykos).


Examining Attorney Julie Watson relied on online dictionary definitions of "stager" as "someone who supervises the physical aspects in the production of a show and who is in charge of the stage when the show is being performed." Moreover, applicant stated in its responses to a Rule 2.61 request for information that its software will be used by and marketed to stage managers, but it denied that "stager" is a term of art in the field.

The Board observed that "[a] term that identifies a group to whom the applicant directs its goods or services is merely descriptive. See In re Planalytics, Inc., 70 USPQ2d 1453 (TTAB 2004)." The Board agreed with the Examining Attorney that prospective customers will immediately perceive Applicant's mark STAGER as merely describing the intended users of the software.

Applicant pointed to a Wikipedia entry for "stager" as "someone who uses style to improve the appeal of real estate for sale," and on online advertisements for real estate stagers. The Board pointed out, however, that the term must be considered in the context of the identified goods, and meanings in other contexts are not relevant.

Likewise the lack of entries for "stager" in specialized dictionaries in the theater field is not probative. "The fact that a term is not found in a dictionary, much less that it is found only in
some dictionaries, is not controlling on the question of registrability if the Examining Attorney can show that the term has a well-understood and recognized meaning." The Board found the dictionary definitions of "stager" as "someone who assists in stage management or more generally as one who stages" to be sufficient to support the refusal.

As to lack of use of the term by competitors, the Board pointed out once again that "even if Applicant were the first and only entity in this industry to use 'stager' as a potential source indicator this would not obviate the descriptive nature of the proposed mark."

The logic of Applicant’s argument fails because the record shows that "stager" has a specific meaning when considered in relation to the goods by identifying the intended users. Competitors in this field should be able to use this descriptive term when advertising to the public their own similar goods.

And so the Board affirmed the refusal to register.

Read comments and post your comment here.

TTABlogger comment: WYHA?

Text Copyright John L. Welch 2020.

Friday, June 26, 2020

TTABlog Test: How Did These Three Section 2(e)(1) Mere Descriptiveness Appeals Turn Out?

The TTAB recently ruled on the appeals from three Section 2(e)(1) mere descriptiveness refusals summarized below. Let's see how you do with them, keeping in mind that last year the Board  affirmed, by my calculation, about 93% these refusals. Answer(s) will be found in the first comment.


In re Shimano North America Holding, Inc., Application Serial No. 88185338 (June 24, 2020) [not precedential] (Opinion by Judge George C. Pologeorgis). [Mere descriptiveness refusal of FLAT-FALL for "Fishing lures; Lures for fishing" in International Class 28. Applicant conceded that its fishing lures drop through the water, but the term “flat” does not describe their motion or position in the water.]


In re Fusion 360, Inc., Application Serial No. 88131491 (June 24, 2020) [not precedential] (Opinion by Judge Cristopher Larkin). [Mere descriptiveness refusal of BUD SET for "Fertilizers; plant foods; chemicals for use in agricultural and industry, namely, microbial nutrient compositions, microbial compositions, bioremediation compositions, mineral fertilizing preparations, and plant nutrient compositions," in International Class 1. Applicant argued, inter alia, that the proposed mark is not merely descriptive because it does not describe a "significant function, attribute, or property" of the claimed goods.]


In re Daktronics, Inc., Serial No. 87101453 (June 22, 2020) [not precedential] (Opinion by Judge Cheryl S. Goodman). [Mere descriptiveness refusal of LIVETICKER (in standard characters) for “Computer graphics software” in International Class 9. Applicant argued, inter alia, that the Examining Attorney was attempting to “guess or infer” how Applicant will use its mark, and that “at this stage the Examining Attorney is in no position to determine” how Applicant will use its mark.].



Read comments and post your comment here.

TTABlog comment: See any WYHAs here?

Text Copyright John L. Welch 2020.

Thursday, June 25, 2020

TTABlog Test: Are These Two "IMMORTAL" Marks for Wine Confusable?

The USPTO refused to register the mark IMMORTAL & Design, shown below, finding a likelihood of confusion with the registered mark THE IMMORTAL ZIN [ZIN disclaimed], both for wine. Applicant argued that the examining attorney “erred by finding that the allegedly dominant portion of Applicant’s Mark is the word ‘IMMORTAL,’ not the jellyfish.” How do you think this came out? Hidden Ridge Vineyard, LLC, Serial No. 87868652 (June 24, 2020)[not precedential] (Opinion by Judge Christopher Larkin).



In its 45-page opinion, the Board informatively marched through the DuPont factors. Since the involved goods are identical, a lesser degree of similarity between the marks is needed to support a finding of likely confusion. Moreover, the Board must presume that the goods travel through the same, normal channels of trade to same classes of consumers. With no limitations in the application or cited registration, the Board must consider the perception of the least sophisticated consumer of wine.

The Marks: Applicant Hidden Ridge strenuously argued that the jellyfish design in its mark suffices to distinguish the mark. The Board acknowledged that there are decisions finding the design to be dominant in a word-plus-design mark, but distinguished those cases and chose to follow In re Viterra: "the verbal portion of the mark is the one most likely to indicate the origin of the goods to which it is affixed.”

The Board found this case most similar to the recent Information Builders decision [TTABlogged here], where the design element was considered to be dominant in the applicant's mark (on the left) because "information" and "builders" were merely descriptive. Here, in contrast, the word IMMORTAL in applicant's mark is not descriptive.



Moreover, the evidence submitted by Examining Attorneys Laura Golden and Raymond Harmon, including applicant's own use of “Immortal” by itself, and references in the media, convinced the Board that consumers will use “Immortal,” not “Immortal Jellyfish” or “Jellyfish,” to refer to Applicant or its wines.

The nature of the applied-for mark and the involved goods, and the uses of “Immortal” by Applicant and others to refer to Applicant’s wines, including Applicant’s use of the word “IMMORTAL” on the same bottle of wine on which the applied-for mark appears, provide rational reasons to find that the word IMMORTAL formed by the letters and design in Applicant’s mark, and not the jellyfish design itself, is the dominant portion of the mark.

The Board did agree with applicant that, when comparing a standard character mark to a word + design mark for Section 2(d) purposes, it will consider variations of the depictions of the standard character mark only with regard to ‘font style, size, or color’ of the ‘words, letters, numbers, or any combination thereof,” Aquitaine Wine, 126 USPQ2d at 1187, but that was a hollow victory for applicant.

Strength of the cited mark: Applicant failed in its attempt to show that IMMORTAL is a weak formative.

We agree with the Examining Attorney that the handful of registrations, augmented by specimens of use of the registered marks and one additional third party use, are insufficient to show that the cited mark is weak Moreover, none of the third-party “marks is as close to the cited mark as . . . Applicant’s mark." Information Builders, 2020 USPQ2d 10444 at *8.

Conclusion: The Board found the that the first, second, and third DuPont factors support a finding of a likelihood of confusion. The goods, channels of trade, and classes of consumers are identical, while the fourth, fifth, sixth, eighth, tenth, and twelfth factors are neutral. And so it affirmed the refusal to register.

Read comments and post your comment here.

TTABlogger comment: A good discussion of the DuPont factors here. Is this a WYHA?

Text Copyright John L. Welch 2020.

Wednesday, June 24, 2020

TTABlog Test: Is HONEYCOMB WAXING STUDIO Confusable With HONEYCOMB SALON?

The USPTO refused registration of the mark HONEYCOMB WAXING STUDIO for body waxing services [WAXING STUDIO disclaimed], finding a likelihood of confusion with the mark HONEYCOMB SALON & Design for hair salon services [SALON disclaimed]. The Board found the services to be related, but what about the marks? How do you think this came out? In re Averi Skye Enterprise, LLC, Serial No. 87830306 (June 22, 2020) [not precedential] (Opinion by Judge Thomas W. Wellington).


The Marks: The word HONEYCOMB dominates both marks, but "honeycomb" may have a different connotation in each. "[I]n the context of body waxing services,the term 'honeycomb' will be understood as a play on the beeswax in actual honeycombs," whereas for hair salon services, "consumers will likely perceive a double entendre involving the composite words “honey” and “comb” and their individual meanings in the context of hair styling. The Board concluded that the marks are "are overall slightly more similar than not."

Strength of the Cited Mark: Applicant submitted printouts from more than 35 different third-party websites showing the term HONEYCOMB used in connection with hair salons across the country. There was no evidence that these businesses are related. In fact, the printouts came from different website addresses and the word HONEYCOMB appears in different stylizations and often alongside various logos.

[T]he number of third-party uses in this case is in line with what has been relied upon by our primary reviewing court in previously finding weakness based on extensive third party use of the same or similar term. Indeed, the Federal Circuit has twice characterized evidence of third-party use as “powerful on its face,” for purposes of demonstrating weakness, based on fewer third-party uses than what we have before us in this case. See Jack Wolfskin, 116 USPQ2d at 1136 (paw print found weak in connection with clothing based on a record comprising 14 third-party registrations and uses of paw print marks); and Juice Generation, 115 USPQ2d at 1674 (26 third party registrations and uses of marks containing the words “Peace” and “Love”).

The Board therefore found that the term HONEYCOMB is a weak formative for salon services, including hair salons.

[P]ut into context here, consumers viewing the two marks can rely upon subtle differences between the marks, such as Registrant’s scissors design element that separates the words HONEY and COMB, as well as the term SALON, and Applicant’s addition of the wording WAXING STUDIO for purposes of distinguishing the marks and perceiving that the two marks are identifying two unrelated businesses.

The Board also noted that several of the third-party business also offer waxing services, indicating the weakness of HONEYCOMB for waxing services.

In view of the commercial weakness of the term HONEYCOMB in connection with salon services, including hair styling, and the overall slightly different suggestive meanings of this term in one mark versus the other, we find that the sixth DuPont factor weighs in favor of not finding confusion likely.

The Services: The evidence showed a close relationship between body waxing and hair salon services, including seven different third parties advertising hair styling and waxing services from the same locations. The evidence also indicated that these services can be advertised in the same trade channels, directed to the same class of consumers.

Conclusion: The Board concluded the consumers will distinguish the marks based on their differences, and so confusion is not likely. It therefore reversed the refusal to register

Read comments and post your comment here.

TTABlogger comment: Now that's the way to use Jack Wolfskin and Juice Generation.

Text Copyright John L. Welch 2020.

Tuesday, June 23, 2020

TTAB Affirms Rejection of Specimen That Fails to Associate the Mark with the Identified Services

The Board affirmed a refusal to register the design mark shown here,
for "advertising, marketing and promotional services," agreeing with Examining Attorney Martha L. Fromm that "the specimens do not demonstrate use of the applied-for mark for the identified services." In re On the way LLC, Serial No. 87037256 (June 10, 2020) [not precedential] (Opinion by Judge Albert Zervas].

Click on picture for larger image

An acceptable specimen must show “some direct association between the offer of services and the mark sought to be registered therefor.” A specimen is not acceptable "if it fails to convey a proper nexus between the mark and the services, or if the services are too attenuated from the proposed mark, either in terms of proximity or logical connection."

The proposed mark appears in the specimen on the left, but not on the right. The services are not mentioned or referred to in either of the screenshots. Applicant explained that it provides a navigational app by which others may advertise:

Specifically, when users view Applicant’s app and enter a destination address, Applicant’s app has the ability to display the locations of the goods and services of others along the way, thereby promoting the goods and services of other companies to the users. For example, once a destination address is entered into the app, the user can request the app show the locations of grocery stores on the way to their destination, thereby actually promoting and advertising the grocery store.

Once an address is entered, the user can find, say, a florist, grocery store, etc., along the route. The app will show appropriate goods or services, "thereby actually promoting and advertising the goods and services of other companies." The Board noted, however, that "there is no indication from the first screen whether coffee shops, gas stations, grocery stores, restaurants and banks located by the app are actually advertised on the app or whether they appear simply as informational as determined by Applicant’s algorithms as part of its navigational service."

The Board found that the first screen "does not create a direct association of Applicant's mark with Applicant's identified services." As to the second screen, "[i]t is not clear whether the red dots represent customers of Applicant who have chosen to take advantage of Applicant’s alleged advertising and promotional services, or appear there informationally for the user."

Moreover, Applicant has not indicated when the Albertsons bubble appears on the screen, e.g., directly after the user has indicated that he or she would like to see grocery stores along the route, or as a pop-up when the user drives near Albertsons.

Applicant did explain how businesses, as potential consumers of Applicant’s services, would view the mark, as shown in the first screen, and associate this mark with the identified services. Applicant focused on the perceptions of users of the app rather than the perception of potential consumers of Applicant’s services. Moreover, the Board agreed with the Examining Attorney that the reference in the second specimen to Albertons appears to be informational, rather than an advertisement.

In sum, nothing in the specimens demonstrates use of the mark for the identified services. And so the Board affirmed the refusal to register.

Read comments and post your comment here.

TTABlogger comment: WYHA?

Text Copyright John L. Welch 2020.

Monday, June 22, 2020

TTABlog Test: Is HIGH SPEED STEPPING Merely Descriptive of Laboratory Analyzers?

In December 2019, the Board affirmed a mere descriptiveness refusal of Omniome, Inc.'s proposed mark SEQUENCING BY BINDING for goods and services directed to the analysis of biological analytes. [TTABlogged here]. Omniome was back before the Board in this case, seeking to register HIGH SPEED STEPPING, again for  goods and services directed to the analysis of biological analytes. Examining Attorney Caroline E. Wood maintained that the proposed mark is merely descriptive because "Applicant’s goods and services feature stepping motors that operate at high speed[.]" How do you think this came out? In re Omniome, Inc., Serial No. 87960945 (June 18, 2020) [not precedential] (Opinion by Judge Christen M. English).

stepper motor

Ominome acknowledged that hits technology incorporates a "stepper motor" and did not dispute that "high speed stepping" is descriptive of, or generic for, stepper motors or "perhaps goods and services for which stepper motors serve as a significant or touted feature thereof." It argued, however, that the proposed mark does not describe a "significant function or feature" of its technology "with any degree of "particularity" because a stepper motor is a small component in its technology that is also "commonly used by competitors," and in a myriad of other devices across countless industries." [An odd interpretation of "particularity" - ed.].

Of course, Omniome argued that HIGH SPEED STEPPING is merely suggestive of its technology. Its Head of Intellectual Property averred that that the phrase was "coined ... to be suggestive of newly developed scanning technology intended to be employed by Omniome's goods and services which relates to a methodology of taking sequential images of DNA colonies (or other biological analytes) on a surface in a flow cell, which flow cell is moved in a precise manner in a translational direction ...."

The Board was not impressed" "We need not resolve whether a “stepping motor” is a significant feature of the applied-for goods and services." See In re Eagle Crest Inc., 96 USPQ2d 1227, 1229 (“[T]he Board need not find that the examining attorney’s rationale was correct in order to affirm the refusal to register, but rather may rely on a different rationale.”)

Based on Mr. Murphy’s explanation, “high speed stepping” immediately and with particularity describes a characteristic and feature of Applicant’s intended goods and services, namely, that the goods and services involve imaging the surface of a flow cell by repeatedly moving through a three-step process at high speed (e.g. by “high speed stepping”).

Even it Omniome coined the phrase HIGH SPEED STEPPING for its technology "does not imbue the phrase with source identifying significance."  In re Nat’l Shooting Sports Found., Inc., 219 USPQ 1018, 1020 (TTAB 1983) (the fact that the applicant may be the first to use a merely descriptive designation does not “justify registration if the term projects only merely descriptive significance.”).

And so the Board affirmed the refusal to register.

Read comments and post your comment here.

TTABlogger comment: WYHA?

Text Copyright John L. Welch 2020.