Thursday, September 17, 2009

WYHA? "INVENTION REGISTRY" Merely Descriptive of Invention Document Storage, Says TTAB

Would You Have Appealed this one? The TTAB affirmed a Section 2(e)(1) refusal to register the mark INVENTION REGISTRY, finding it merely descriptive of "electronic storage of archival documents related to invention conception dates" [REGISTRY disclaimed]. The Board agreed with Examining Attorney Sani Khouri that the mark "immediately describes, without any kind of mental reasoning," the purpose of applicant's services. In re Krasik, Serial No. 77381912 (September 11, 2009) [not precedential].

U.S. Patent No. 6,647,892
Calibrated Angle and Depth Scissors

The Examining Attorney relied on dictionary definitions of "register" and "registry," and on a website excerpt referring to the ability of the government to maintain an "invention registry." [The Board understandably found irrelevant the Examining Attorney's reference to a certain website excerpt labeled "grossly obsolete," to an item at the Trademark and Intellectual Property Office of the Republic of Yemen, and to an excerpt from the Vietnam Investment Review.]

Applicant Michael Krasik lamely argued that his services "are clearly not for patent registrations or invention registrations," but are intended for "maintenance of an electronic document repository and services associated therewith.... No 'registration' ... of anything is accomplished."

The Board, however, found the mark to be descriptive of the services. The combination of INVENTION and REGISTRY "fails to create a new and distinct commercial impression." And Mr. Krasik did not help his own cause:

Applicant’s own use of the term “invention” in the identification of goods shows that INVENTION directly describes an attribute of applicant’s services. Additionally, as previously indicated, the term “registry” means “an official record of names or events or transactions” and the term “register,” a variation of the term “registry,” means “a written record” The term “registry” thus clearly describes the purpose of applicant’s electronic storage of archival documents, i.e., to provide a written record of invention conception dates. We note, too, that applicant confirms in his brief that "Applicant’s services relate to an electronic repository for archival documents related to dates of conceptions for inventions."

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

TTABlog comment: Well, WYHA?

Text Copyright John L. Welch 2009.


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