Thursday, July 14, 2005

TTAB Finds Three "REAL TIME" Marks Merely Descriptive Of Computer Training Services

I've been having a heck of a time trying to find interesting TTAB decisions to blog. That's why I've been reduced to presenting cases like the ones in this posting. Thank goodness the CAFC came down with a decision Monday, giving me a one-day reprieve. Oh well, here goes....

Global Mentoring Services, Inc., of Columbia, Maryland, had a real TTABad time in June, as three of its marks -- REAL TIME MENTORING, REAL TIME LEARNING, and REAL TIME LAB -- were deemed merely descriptive of "training services in the field of computer applications and technical training for businesses via the Internet." For some reason, the cases were not consolidated and the Board issued three separate opinions, two (nearly identical) by veteran Judge Hohein and one by rookie Judge Walsh. In re Global Mentoring Services, Inc., Serial Nos. 76487220 (June 7, 2005), 76487218 (June 21, 2005), and 76487221 (June 30, 2005) [not citable].

Examining Attorney Brendan D. McCauley, who handled all three cases, relied on various electronic search results, website excerpts, dictionary definitions, and Applicant's own specimens of use in solidly supporting the refusals to register.

Applicant Global Mentoring's argument had two prongs, neither sharp: first, it pointed to various third-party registrations for marks that contain one or more of the constituent terms, but the Board observed for the millionth time that "[e]ven if some prior registrations had some characteristics similar to [applicant's] application, the ... allowance of such prior registrations does not bind the Board or this court." In re Nett Designs Inc., 57 USPQ2d 1564, 1566 (Fed Cir. 2001). In other words, each Section 2(e)(1) descriptiveness case must be decided on the particular record before the Board. Doh!

Second, Global offered the oft-rejected and wholly futile argument that the Examining Attorney failed to provide any evidence that a consumer who encounters the mark ... will immediately understand that Applicant's services are 'training services in the field of computer applications and technical training for business via the Internet.'" Judge Walsh repeated the standard TTAB response to that lame contention: "Whether consumers could guess what the product is from consideration of the mark alone is not the test." In re American Greetings Corp., 226 USPQ 365, 366 (TTAB 1985). Judge Hohein didn't even bother to address the argument.

TTABlog comment: When I compiled my list of The Top Ten Losing TTAB Arguments a few years ago, high on the list was the "descriptiveness as a guessing game" approach offered by Global. Apparently the "popularity" of this hopeless argument continues.

Text Copyright John L. Welch 2005. All Rights Reserved.


Post a Comment

<< Home