Wednesday, August 23, 2006

TTABlogger Asks PTO to Reconsider Mere Descriptiveness Refusal of "THE TTABLOG"

In a Request for Reconsideration filed on August 18, 2006, yours truly has requested reconsideration and withdrawal of the PTO's Section 2(e)(1) final refusal to register the mark THE TTABLOG for "an online blog featuring commentary and information in the field of trademarks; an online blog featuring commentary and information regarding decisions of the Trademark Trial and Appeal and the courts relating to trademark law." (File wrapper documents may be found at the TDR database under Application Serial No. 78669946). The PTO's refusal to register was discussed here at the TTABlog.

The TTABlogger and "Bloggsie"

Taking direct issue with the Examining Attorney's reasoning and conclusion, Applicant asserted:

"The proper inquiry is not whether the meaning of the mark is evident upon consideration of the goods or services, but whether the mark has some characteristic that would cause the consumer to recognize it not as just a descriptive term, but also as a trademark. In the case of the double entendre marks, the consumer recognizes the clever use of a phrase that has a well-known second meaning. With regard to the subject mark, the consumer recognizes the odd, tongue-twisting fusion of the words TTAB and blog. Even though the consumer in these instances understands the meaning of the terms as applied to the goods or services in question, he or she also recognizes that the mark has a unique and memorable aspect that gives the term its source-identifying power."

Applicant argued in the alternative that the mark THE TTABLOG has acquired distinctiveness under Section 2(f), citing, inter alia, pertinent portions of 27 communications (attached to the Request for Reconsideration) from trademark practitioners across the country, attesting to the distinctiveness of the mark. In that regard, the TTABlogger wishes to thank the following 27 individuals for taking the time to provide their support for registration of this mark:

  • Michael Heilbronner, attorney, IdeaLegal, P.C., Portland, Oregon.
  • Mike Oliver, attorney, Bowie & Jensen, P.C., Towson, Maryland.
  • Assoc. Professor Rebecca Tushnet, Georgetown University Law Center.
  • Douglas W. Lytle, attorney, Duckor Spradling Metzger & Wynne, San Diego, California.
  • Orrin A. Falby, trademark paralegal, Siemens Corp., Iselin, New Jersey.
  • Dennis Griggs, attorney, Griggs Bergen LLP, Dallas, Texas.
  • Anthony J. Tambourino, attorney, York, Pennsylvania.
  • Leo Stoller,, Chicago, Illinois.
  • Aaron Silverstein, attorney, Saunders & Silverstein LLP, Newburyport, Massachusetts.
  • Christopher Shiplett, law student, George Mason University.
  • Herbert J. Singer, attorney, Silverman, Cass & Singer, Ltd., Chicago, Illinois.
  • Christopher Turk, attorney, The H.D. Lee Company, Inc., Wilmington, Delaware.
  • Derek A. Newman, attorney, Newman & Newman, Seattle, Washington.
  • Venkat Balasubramani, attorney, Seattle, Washington.
  • Ryan W. Corrigan, attorney, Dowling Aaron & Keeler, Inc., Fresno, California.
  • Keith Danish, attorney, New York, New York.
  • H. Jay Spiegel, attorney, Mount Vernon, Virginia.
  • Peter Michaud, attorney, Thompson, Bull, Furey, Bass & MacColl, Portland, Maine.
  • J. Scott Gerien, attorney, Dickensen Peatman & Fogarty, Napa, California.
  • Mark J. Plotkin, attorney, Waller Lansden Dortch and Davis LLP, Nashville, Tennessee.
  • Marsha K. Hoover, attorney, Davis McGrath LLC, Chicago, Illinois.
  • Brett Tolpin, attorney, Welsh & Katz, Ltd., Chicago, Illinois.
  • Ronald D. Coleman, attorney, Bragar, Wexler & Eagel, PC, New York, New York.
  • Mark Leonard, attorney, Davis & Leonard, LLP, Sacramento, California.
  • Nancy Dwyer Chapman, attorney, Lackenbach Siegel LLP, Scarsdale, New York.
  • Lance Johnson, attorney, Roylance, Abrams, Berdo & Goodman, LLP, Washington, D.C.
  • Dave Purdue, attorney, Toledo, Ohio.
Applicant also made it clear that, regardless of whether the Examining Attorney accepts the Section 2(f) evidence, if the Examining Attorney decides not to withdraw the refusal under Section 2(e)(1), Applicant intends to appeal that refusal. See Trademark Trial and Appeal Board Manual of Procedure (TBMP), Section 1215. In other words, Applicant is not willing to accept a registration under Section 2(f) unless, upon appeal, the TTAB holds that the subject mark is merely descriptive.

TTABlog admission: Actually the dog is not "Bloggsie." It's my brother's dog, "Tanner." I don't have a dog, but if I did, I think I'd call it .... "Fido," or "Rover," or "Rex." Anything but "Bloggsie."

Text Copyright John L. Welch 2006.


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