Thursday, May 14, 2009

Tip from the TTABlog: Don't Use the Applied-For Mark Descriptively in the Identification of Goods

One should expect a Section 2(e)(1) descriptiveness refusal if one uses the applied-for mark in one's identification of goods, shouldn't one? Applicant epcSolutions, Inc. found out the answer to that question in In re epcSolutions, Inc., Serial No. 76675389 (May 1, 2009) [not precedential]. Applicant subsequently amended its i.d., but the damage had been done. That misstep, along with other evidence, led the Board to affirm a mere descriptiveness refusal of ASSET OVER INTERNET PROTOCOL for "computer network systems comprised of computer hardware and software for creating radio frequency identification tags for assets and tracking those same assets in transit" [INTERNET PROTOCOL disclaimed].

The Board first found that "asset" merely describes a significant feature and purpose of Applicant's goods: hardware and software that track a company's physical assets. The Board pointed to Applicant's original identification of goods for confirmation: "an asset over Internet protocol network for work in process, fixed assets, finished goods assets and human assets, tagged with RFID tags." And its final i.d. of goods also refers to assets: "...for assets and tracking those same assets in transit."

Moreover, the record included third-party descriptive use of "assets" and "asset tracking software" in connection with the tracking of assets via RFID.

As is often the case in Section 2(e)(1) appeals, the appellant made a hopeless argument about other meanings for all or part of the mark in question. Here, Applicant feebly urged that "asset" is not descriptive because it could refer to "essentially anything of value, such as jewelry, one's home, or one's education." Of course, that ignores the basic legal requirement that a mark be considered in the context of the goods at issue, not in the abstract.

The Board concluded that "asset" is merely descriptive of Applicant's goods, despite the omission of the word "tracking" from the mark.

As to OVER INTERNET PROTOCOL, that too merely describes the goods because they employ an "over Internet Protocol" in performing their function. The record established that "when specific applications utilize an Internet Protocol, they are commonly identified by combining a descriptor of the application with the words 'over Internet Protocol.'" Moreover, in its brief, Applicant acknowledged the mere descriptiveness of "over Internet Protocol." [E.g., VOIP].

Finally, the Board ruled that the combination of ASSET with OVER INTERNET PROTOCOL is also merely descriptive of the goods: it directly describes the key feature of the goods, namely, tracking assets via an over Internet Protocol.

Applicant didn't give up yet. It argued that, although asset tracking is known via RFID, and although over Internet Protocol is a known technology, the two have never before been combined and therefore the relevant consumers would have no basis for understanding ASSET OVER INTERNET PROTOCOL with regard to these novel goods. Again, the Board was unimpressed. The mark must be considered in the context of the goods at issue, not in the abstract. And it does not matter for mere descriptiveness purposes whether Applicant was the first or only user of the phrase. And in any case, the evidence showed that combining RFD asset tracking with the Internet is "not as usual or unexpected as applicant claims."

Finally, the Board pointed to Applicant's original identification of goods, which "used the term 'asset over internet protocol' in a merely descriptive manner, and indeed in a generic manner, to identify its goods."

We find that applicant's own use of "asset over internet protocol" in this manner belies its claim that the mark is not merely descriptive.

For all these reasons, the Board affirmed the refusal under Section 2(e)(1).

TTABlog comment: WYHA?

Text Copyright John L. Welch 2009.


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