Wednesday, October 24, 2007

TTAB Affirms Mere Descriptiveness Refusal of "AUTOSTITCH" for Photography Software and Services

The Board methodically affirmed a Section 2(e)(1) refusal to register the mark AUTOSTITCH, finding it merely descriptive of software for editing and manipulating images and for photographic editing services. The University of British Columbia, as Applicant, argued that the term is incongruous and merely suggestive, since the program does not operate fully automatically and nothing like stitching (i.e., sewing) occurs. But the Board was not moved. In re Univ. of British Columbia, Serial No. 78700787 (October 18, 2007) [not precedential].

Examining Attorney Jason Paul Blair maintained that, because Applicant's software and services involve the joining of multiple photos with a computer, the term AUTOSTITCH is merely descriptive of them. He relied on a dictionary definition of "auto" as meaning "automatic" and on numerous Internet printouts showing that "stitch" means to merge several photographs together to form a large image. The Board agreed that "auto" and "stitch" are descriptive of Applicant's goods and services.

The Board failed to see any incongruity or double entendre in the combined term AUTOSTITCH. The word "stitch" describes the joining of multiple photos, and "auto" describes the fact that certain features of the process are automatic rather than manual.

The University submitted GOOGLE brand printouts in which the references to "Autostitch" in the search results point to Applicant. Not significant, responded the Board. It is black letter law that even if Applicant is the first and/or only user of the term, that does not mean the term is not descriptive of the goods and services.

The Board therefore affirmed the refusal to register.

Text Copyright John L. Welch 2007.


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