Friday, March 12, 2010

"USEFUL NETWORKS" Merely Descriptive of Location Software, Says TTAB, Questionably

The Board affirmed two refusals to register the mark USEFUL NETWORKS in standard character and design form, finding the term to be merely descriptive of computer software for physically locating people and for related software development services, and the logo unregistrable absent a disclaimer of the term. In re Useful Networks, Inc., Serial Nos. 77364008 and 77364155 (March 3, 2010) [not precedential].

Examining Attorney Geoffrey Fosdick maintained that USEFUL NETWORKS immediately "conveys the fact that applicant's software and software consulting 'utilize communication network devices to create useful social networks.'" He relied on dictionary definitions of "useful" and "network " and on excerpts from Applicant's website discussing "social networking,"

Applicant Useful Networks contended that a multiple step reasoning process is needed "to conclude that products bearing this mark are for use in physically locating people." It asserted that the mark suggests only a desirable end result without describing the goods and services themselves. Useful pointed to nine third-party registrations containing the words "use," "user," or "useful" without a disclaimer or a claim of acquired distinctiveness.

The Board found it "clear" that Applicant's software and services create "useful networks (i.e., valuable connections between users and service providers)."

While the term “useful networks” does not in and of itself directly convey that the software applications and services related thereto involve location based
services, it is a laudatory term and merely descriptive of the goods and services because it describes a quality that all networking software and services aspire to achieve (i.e., to make useful connections for its users). In this regard, a laudatory term that describes the merits of the goods and/or services is merely descriptive because it describes the characteristics or quality of the goods in a condensed form.

The Board opined that such "location-based technology increases the usefulness [of] the software applications ... and, therefore, is the epitome of a 'useful network.'" The mark "directly describes the purpose of applicant's goods and services: that is the creation of useful networks of mobile communication device users."

The Board rejected Useful's contention that the combination of the words creates some commercial impression different from the individual works. And, of course, the fact that Useful may be the first and only user of the term does not avoid the mere descriptiveness bar.

And so the Board affirmed the two refusals.

TTABlog comment: Sorry, but I don't buy this one. "Useful networks" just doesn't tell me anything about the goods and services, and I don't see it as all that laudatory. I mean, is that a great selling point? We'll make your network useful? Ho-hum. I would have given Useful the benefit of the doubt on this one.

Text Copyright John L. Welch 2010.


At 10:50 AM, Anonymous Anonymous said...

"Useful" was given no weight because it was a laudatory term, but the term "network" hardly describes location based software specifically. Technically network depends on software to run, but not location based.

Was the design implementation given any weight at all? How come the sup wasn't offered in this case?

At 10:52 AM, Blogger ccusick said...

When I read this, I think of BEST BUY. Clearly a laudatory term but secondary meaning has been acquired for electronics retail. Still a search for BEST BUY yields a large number of results. When you adopt a weak mark, and claim secondary meaning, it is still an uphill battle.

At 2:31 PM, Blogger Catherine said...

I don't buy this one either. I agree with Jon that "Useful Networks" tells me nothing about the services; add the design element and I think the applicant was entitled to the benefit of the doubt.

At 8:36 AM, Anonymous Rob said...

I agree with the previous comments. Speaking of the principal vs. supplemental register, it is not clear why the PTO allows reopening prosecution post-judgment for the purpose of adding a disclaimer, and allows raising an alternate Section 2(f) claim, but won't allow amendment to the supplemental register. That makes no sense.


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