Monday, July 13, 2009

TTAB Says No and No to "NAP OF THE CARIBBEAN" Double Entendre Argument

The TTAB turned a double play in affirming Section 2(d) and 2(e)(1) refusals of the mark NAP OF THE CARIBBEAN for "telecommunications services, namely, providing central connection points for telecommunication network carriers." [It wasn't a Tinker to Evers to Chance double play, but Hairston-Grendel-Rogers]. Applicant Centennial argued that the mark is a double entendre (can you guess the supposed other meaning?), but the Board was not on board. In re Centennial Communications Corp., Serial No. 76283603 (July 2, 2009) [not precedential].

Mere Descriptiveness: Examining Attorney Karen Bush relied on an entry for "NAP" at the Acronym Finder, on a Wikipedia entry for "Caribbean," and on several Internet websites, in maintaining that NAP stands for "network access point" and CARIBBEAN identifies a geographic location. She concluded that NAP OF THE CARIBBEAN immediately describes a feature, function, or purpose of Centennial's services.

... the telecommunication services ... provide central connection points for telecommunication network carriers. The central communication points are network access points located in the Caribbean; in other words the services are a NAP OF THE CARIBBEAN.

Centennial feebly argued that the Examining Attorney had improperly dissected the mark and that NAP OF THE CARIBBEAN creates a double entendre:

... the term "nap" means a short sleep or period of relaxation and the term "Caribbean" means a destination with a reputation where one can go to unwind or relax; ... when combined, the phrase NAP OF THE CARIBBEAN "connotes a laid-back, relaxed, easy-going type of impression."

The Board agreed with the Examining Attorney. As to the double entendre argument, the Board was not laid-back at all:

... in each of the double entendre cases cited by applicant, the secondary interpretations that make each expression a double entendre consist of an association that the public would make quite readily. In this case, we are not convinced that purchasers would readily associate a short sleep or period of relaxation with NAP OF THE CARIBBEAN. There is nothing of record to indicate that visitors to the Caribbean “nap” any more than visitors to other regions of the world, or that, even if the record did establish this point, ... prospective purchasers of applicant’s services would be aware of the purported practice.

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

Likelihood of Confusion: The Board also found Centennial's mark likely to cause confusion with the registered mark NAP OF THE AMERICAS [NAP disclaimed] for various telecommunications services. Centennial did not disagree that these services overlap with its services. It asserted that the purchasers of the services are sophisticated, and the Board was not wholly dismissive, while noting that although the purchasers of the services would be knowledgeable, that does not mean that "they would be immune from confusion as to source or sponsorship." This factor weighs "slightly against a finding of likelihood of confusion."

Centennial again relied on its double entendre argument to distinguish the marks, but the Board had discerned no double meaning and it concluded that the marks have similar connotations. Moreover, the Board found that the marks "engender similar overall commercial impressions."

... it is reasonable to conclude that purchasers familiar with registrant's mark will view NAP OF THE CARIBBEAN as identifying a more specialized telecommunication service from registrant which serves to link the Caribbean to other parts of the world.

Centennial urged that NAP OF THE AMERICAS is merely descriptive and therefore entitled to a narrow scope of protection. The Board asserted that this argument "constitutes a collateral attack upon the validity of the registered mark and as such can only be entertained in the context of a petition to cancel. Furthermore, the issuance of the cited registration under Section 2(f) of the Trademark Act indicates that the mark shown therein had become distinctive of the registrant's services in commerce prior to the issuance of the registration." [TTABlog comment: Since when is a party precluded from arguing that a registered mark is weak and entitled to a narrow scope of protection?]

The Board noted, however, that NAP stands for "network access point," and it certainly has descriptive significance. However, it has the same meaning in both marks, and the Board's finding of confusing similarity "is not based solely on the commonality of the term NAP, but on the overall structure of the marks, and the overlapping geographical connotations."

The Board affirmed the 2(d) refusal.

TTABlog comment: In baseball, a player who is hitting under .200 is said to be below the Mendoza line. Do you think this case falls above (i.e., worth appealing) or below the WYHA line? Should the WYHA line, like the Mendoza line, be set at 20% chance of success? 10% ? 5% ? 0% ?

Text Copyright John L. Welch 2009.


At 8:17 AM, Anonymous Paul Reidl said...


To use a rough analogy, Mario Mendoza took the field on a regular basis because his manager put him there notwithstanding his inability to hit a baseball. Similarly, if a client wants to appeal even though the odds are below the "Mendoza line", wherever that is, we as lawyers appeal. I have to agree that in this case the odds of overcoming all of the objections on appeal are pretty low, and since you have to run the table in order to get a registration I'd put this one below the Mendoza line.


At 12:19 PM, Anonymous Anonymous said...

I completely concur with Paul. Indeed, it is not my decision as an attorney whether to appeal. Therefore, the WYHA question should always be directed to the Applicant. Any WYHA question directed to the attorney for taking the best position possible in an appeal brief after receiving instructions is warranted only when that attorney has falsely advised the client that the appeal is a clear winner simply to get the opportunity to file the appeal.

At 3:40 PM, Blogger John L. Welch said...

Let's suppose the client says to you, "What would you do if it were your decision and your money?"

At 4:38 PM, Anonymous Chris said...

To answer John's question. No, at least not with that argument. On the side, I would feel some responsibility to advise my client on the likelihood of success in an appeal, even if not directly asked. If the client wishes to proceed, then the WYHA question is moot.


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