Monday, March 06, 2006

Citable No. 12: TTAB Throws Wet 2(e)(1) Blanket on "PARTY AT A DISCOUNT!" Application

In its 12th citable decision of 2006, the Board played the role of party pooper by affirming the PTO's Section 2(e)(1) refusal to register the mark PARTY AT A DISCOUNT! The Board found the mark to be merely descriptive of Applicant Promo Ink's services, identified as "preparation and dissemination for others of advertising and promotional matter via global computer communications networks in the field of shopping for goods and services." In re Promo Ink, 78 USPQ2d 1301 (TTAB 2006).

Every year or so, the Board deems citable a decision confirming the PTO's right to demand relevant information from an applicant under Rule 2.61. [See Section I.C. of my article, "The TTAB in 2004: What Was Hot, What Was Not."] Here, the situation was a little different: Examining Attorney Yong Oh (Richard) Kim relied upon Internet printouts that he obtained from Promo Ink's website. (see example above). Promo Ink objected, arguing that its application was based on intent-to-use, that specimens of use were not required, and that it was therefore improper for the Examining Attorney to introduce this evidence. Not surprisingly, the Board quickly dismissed that assertion:

"... the fact that applicant has filed an intent-to-use application does not limit the attorney's evidentiary options, nor does it shield an applicant from producing evidence that it may have in its possession."

The Board noted that had the Examining Attorney requested this same material under Rule 2.61(b), Promo Ink would have had to produce it. Contrary to Promo Ink's lame argument, the PTO was not "producing a specimen for applicant" nor was it "requiring applicant's intent-to-use application to meet the requirements of a use-based application." The Examining Attorney was instead "using the printouts as evidence that the mark is merely descriptive of applicant's services."

As to the "central" issue in the case, mere descriptiveness vel non, the Examining Attorney also submitted dictionary definitions of "party" and "discount." According to the Board, the Internet evidence "shows that there are services that involve disseminating promotional information that features discount coupons for parties."

The Board found that a "significant feature" of Promo Ink's services involved discounts for parties. For example, the website printouts refer to "Top Values" for parties in New York City, including "John's of 12th Street - $50 Gift Certificate with party."

Concluding that potential customers would immediately understand that the phrase PARTY AT A DISCOUNT! "exactly describes the services, i.e., that the services involve parties at a discount," the Board ruled that Applicant's mark is merely descriptive.

Text Copyright John L. Welch 2006.


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