Friday, June 05, 2009

TTAB Affirms Mere Descriptiveness Refusal of "AUTOPROBE" for Soil Sampling Machines and Related Services

The mark AUTOPROBE may bring to mind a trip to Lovers' Lane, or maybe a UFO abduction movie, but the Board found it to be merely descriptive of "self-powered, mobile soil sampling machines" and of "agricultural services, namely, soil sampling, testing, and analysis." I think this case deserves a slot in our WYHA collection. Do you? In re AgRobotics, LLC, Serial No. 77138973 (May 20, 2009) [not precedential].

Examining Attorney John D. Dalier relied on dictionary definitions of "auto" and "probe," and asserted that Applicant's goods feature an "automatic self propelled probing function," that the goods are capable of automatically "extracting soil from the probe itself and properly storing each soil sample;" and that, presumably “the services will feature the use of self propelled probing devices to obtain research data.” Therefore, AUTOPROBE "provides an apt description of the goods and services within the meaning of Section 2(e)(1)."

Applicant AgRobotics pulled out several feeble arguments, none of which bore fruit. It lamely contended that “auto” has other meanings in the context of its goods, such as "automobile," and suggests that the goods are "powered like automobiles." It also claimed that the AUTO portion does not directly modify PROBE [Huh? - ed.]; that the device performs several functions other than just inserting a probe into the ground; and that the entire machine is encompassed by "auto," not just the probe.

The Board pointed out that the word "auto" must be considered in the context of the goods, and so consumers will immediately understand the AUTO portion of the mark to refer to “automatic” or "self-powered."

Moreover, the PROBE portion of the mark exactly identifies the device on the machine that extracts the soil, as well as identifying the action of the device in “probing” the soil to remove a sample.

Thus the mark AUTOPROBE is merely descriptive of the machine.

Furthermore, because the identified goods are the "principal means for rendering the identified services, we find that the mark is equally merely descriptive of these services."

And so the Board affirmed the Section 2(e)(1) refusal.

TTABlog comment: I think the Board should have cited a case or two for the proposition that a mark that is descriptive of the "principal means for rendering a service" is merely descriptive of the service. Anyone have a cite?

What if the mark is not descriptive of the principal means for rendering a service? Like GRASS RAKE for landscaping services?

Text Copyright John L. Welch 2009.


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