Tuesday, June 24, 2008

"WWW.BOTMAG.COM ROBOT" Merely Descriptive of Robot Magazines, Says TTAB

Applicant Maplegate Media lurched into a TTABrick wall in its attempt to register the mark WWW.BOTMAG.COM ROBOT for "journals and magazines for hobbyists of robots, robotics, and computers" [ROBOT disclaimed]. Examining Attorney Hannah M. Fisher maintained that the mark is merely descriptive of the goods, and the Board agreed. In re Maplegate Media Group, Inc., Serial No. 78814834 (June 10, 2008) [not precedential].

(click on photo for larger picture)

The PTO's online dictionary evidence established that "in the context of applicant's goods ... both 'bot' and 'mag' are generally recognized and have meaning. The combination of these two abbreviations, BOTMAG, simply communicates to purchasers that the subject matter of applicant's magazines is robots, or robotics."

Applicant lamely argued that the term "botmag" does not appear in any dictionary, but the Board pointed out once again that "[A] word need not be in common use in an industry to be descriptive, and the mere fact that an applicant is the first to use a descriptive term in connection with its goods, does not imbue the term with source-identifying significance."

Of course, the "www" and ".com" portions of Applicant's mark have no trademark significance, and therefore the Board found that "the Internet address WWW.BOTMAG.COM immediately identifies a feature of applicant's goods."

Turning to the word ROBOT, Applicant's disclaimer constitutes an admission that the term is merely descriptive of the goods. Applicant weakly argued that its mark "is WWW.BOTMAG.COM ROBOT, not BOT MAG nor ROBOT MAGAZINE, and must be analyzed in its entirety. Any descriptive connotation that may be conveyed by each term on its own is obviated by combining the terms in a unitary fashion in the compound term WWW.BOTMAG.COM ROBOT." The Board was unimpressed:

"In applicant's mark, each component retains its merely descriptive significance in relation to the goods and does not create a unique or incongruous meaning. Also, applicant's mark is merely a combination of applicant's internet address, with BOTMAG providing information about applicant's goods, and the term ROBOT, which is at a minimum descriptive of applicant's goods, and, as evidenced by applicant's specimen and the first entry in the Google search results, appears to be the name opposer [sic!] uses for its magazine. We see nothing in applicant's mark – including the combination of BOT and MAG - that makes it a unitary combination of terms, and applicant has not indicated why it is unitary."

The Board concluded that Applicant had failed to overcome the PTO's prima facie case, and so it affirmed the Section 2(e)(1) refusal.

TTABlog comment: If you click on the photo of Applicant's specimen of use (above) to enlarge it, you will see that the phrase "WWW.BOTMAG.COM" appears in the upper left corner in relatively tiny print, above the large word ROBOT. Do you think that this specimen displays trademark use of the applied-for mark WWW.BOT.MAG ROBOT? I don't. But the PTO did not raise that objection.

Text Copyright John L. Welch 2008.


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