Monday, June 14, 2010

TTAB Affirms Disclaimer Requirement of "VILLAGE" in "HEALTH VILLAGE" Mark for Real Estate Services

The Board affirmed a refusal to register the mark HEALTH VILLAGE for rental, sales, management, and development of real estate, based on Applicant's refusal to disclaim the word VILLAGE. Examining Attorney Lydia M. Belzer maintained that VILLAGE identifies a feature or characteristic of the services because they "pertain to villages and/or to buildings set up in such a manner as to form villages." In re Adventist Health System/Sunbelt, Inc., Serial Nos. 77589735 and 77589737 (May 20, 2010) [not precedential].

The Board agreed:

The word VILLAGE clearly and unambiguously describes a significant feature of the real estate services in that it clearly denotes a particular location involving a grouping of residences and other buildings in the immediate vicinity of each other, which is directly pertinent to the rental and leasing, management, development and sales of real estate. We also find that the word VILLAGE when combined with the word HEALTH does not lose its descriptive significance.

Applicant contended that VILLAGE "merely describes the organization or location of building or structures" and is "one or more steps" from describing the services. The Board disagreed:

Here the term VILLAGE, as applicant apparently acknowledges, immediately conveys the information that the properties that applicant is renting, leasing, managing, developing or selling are located in a village, or are organized in such a manner as to resemble the form of a village.

The Board noted that the Board's history of disclaimers as to the word VILLAGE is "inconclusive," but in any case decisions by Examining Attorneys in other applications are not binding on the Board.

And so the Board affirmed the refusal.

TTABlog comment: What do you think about this one? Adventist is apparently developing a complex in Winter Park, Florida that one could consider to be a "village." But where's the evidence of that in the record? Otherwise, shouldn't there be some evidence that real estate developers develop "villages?"

Text Copyright John L. Welch 2010.


At 10:07 AM, Anonymous Miguel Danielson said...

The jurisprudence around descriptiveness seems hopelessly lost to me.

The word VILLAGE is a noun. It is not an adjective or an adverb and therefore cannot really be descriptive of anything, assuming the English language is to have any meaning in trademark law.

And so, over the years, the courts have fashioned really lame tests to determine if words are descriptive of the goods or services offered. Is the word an "ingredient, quality, characteristic, feature, function, purpose or use?" The word VILLAGE is none of these things in relation to Applicant's services. OK, let's go dig for some more completely ambiguous and strained tests -- is the word a "significant attribute, function or property." No, not really.

In this case, the Board says "applicant’s services is descriptive. The word VILLAGE clearly and unambiguously describes a significant feature of the real estate services." Riiiiiiight. I'm sure that lots of people are out marketing real estate services to their prospective clients by describing their wonderful "village" feature.

I have long joked with my trademark attorney colleagues that the actual test of descriptiveness, at least for most examining attorneys, is "can I use the word or phrase in a sentence about the Applicant's goods or services?" In other words, the test seems to be, can I make some sort of connection between the word at issue and the goods and services in question. Obviously, this test is very easily met.

VILLAGE is not a feature of Applicant's services. The Board needs to tell us what they actually mean. Trying to figure out if a word is a "feature" (or an ingredient, or whatever silly synonyms the courts want to come up with) of the services is like chasing the shadow of a ghost in a dark room.

At 8:10 PM, Anonymous Rob said...

I agree with Miguel that the test (as applied in practice) is in fact more inclusive than the textbooks suggest. Perhaps it's the theory, not the practice, that needs to be revisited. In any event, I can find no fault in the Board's decision.


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