Wednesday, June 10, 2009

Precedential No. 22: Saying No-No to Double Entendre Argument, TTAB Deems "URBANHOUZING" Merely Descriptive of Real Estate Services

Despite Applicant Dean S. Carlson's dogged efforts, the Board affirmed a Section 2(e)(1) mere descriptiveness refusal of the mark URBANHOUZING in standard character form for "real estate brokerage; real estate consultation; and real estate listing." Carlson unsuccessfully contended that the compression and misspelling of the words URBAN HOUSING into URBANHOUZING transforms the phrase into an inherently distinctive mark, and that the ZING portion of the mark creates a separate commercial impression that results in a double entendre. No and no, said the Board. In re Dean S. Carlson, 91 USPQ2d 1198 (TTAB 2009) [precedential].

Applicant Carlson did not deny that "urban housing" is descriptive of his services. In fact, he offered to disclaim that phrase. [more about that below - ed.] Instead, Carlson tried to convince the board that the compressed form and the misspelling of "housing" made the mark inherently distinctive. He failed.

The Board observed that the compressed term URBANHOUZING "still conveys the commercial impression of the two words." The misspelling of HOUSING as HOUZING likewise did not change the commercial impression. "In general, a mere misspelling of a word is not sufficient to change a merely descriptive term into an inherently distinctive trademark." Here, HOUZING will be recognized as a misspelling of HOUSING. Examining Attorney Amy C. Kean supplied website evidence showing that "houzing" is a recognized misspelling of "housing." Moreover, at his own website, Carlson uses "HOUZING" as an alternative version of "housing."

The Board then found that the ZING portion of Carlson's mark does not create "a separate commercial impression, such that the mark as a whole has a double entendre, with one meaning that is not merely descriptive." Carlson argued that "zing" suggests that his services are provided with "speed and enthusiasm." The Board pointed out, however, that the "Z" in Carlson's mark is not emphasized or highlighted and would be perceived as only a misspelling of the descriptive word "housing" without projecting "the impression of the separate word 'zing.'"

Carlson contended that the Board should look at his specimens of use to determine whether ZING makes a commercial impression [see picture above], but the Board flatly refused. In its precedential decision in In re The Place, Inc., 76 USPQ2d 1467 (TTAB 2005). [involving the mark THE GREATEST BAR], the Board rejected that very argument, stating that "[a] mark ... is deemed to be a double entendre only if both meanings are readily apparent from the mark itself." [emphasis in original]. One does not look at "other indicia" to determine double entendreness.

And so the Board concluded that Carlson's mark "does not convey a double meaning that would prevent it from being merely descriptive of applicant's services."

The Board then specifically rejected Carlson's assertion that "the Board employs three tests to determine whether a mark is suggestive rather than descriptive: (1) the 'competitors’ need test,' (2) the 'competitors’ use test,' and (3) the degree of imagination test.'" The Board emphatically pointed out that "the test for descriptiveness is whether a term 'immediately conveys knowledge of a quality, feature, function or characteristic of the goods or services with which it is used." Period.

Turning, finally, to the PTO's rejection of Carlson's disclaimer of "urban housing," the Board found that issue to be moot. However, it ruled that if URBANHOUZING were found to be inherently distinctive due to the alleged double entendre, the disclaimer submitted by Carlson would be acceptable.

TTABlog comment: Riddle me this: If URBANHOUZING turns out not to be merely descriptive, then why disclaim "urban housing"? Can one disclaim one meaning of a mark if the mark is a double entendre? What would the disclaimer look like for the famous double entendre mark, SUGAR AND SPICE? "The phrase SUGAR AND SPICE is disclaimed to the extent that it means the condiments 'sugar and spice,' but not to the extent that it means the nursery rhyme or the pop song" (or whatever the heck else it refers to)?

TTABlog postscript: At his Registration Ruminations blog, Michael Hall comments here on the TTAB's mere descriptiveness standard.

Text Copyright John L. Welch 2009.


At 8:51 AM, OpenID samcurt said...

As a normal observer, I would rather accept the applicant's argument. This is a suggestive mark, not merely descriptive.

At 1:32 PM, Blogger John L. Welch said...

Thanks for your curt comment, Sam.


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