Wednesday, December 15, 2010

TTAB Finds "ROC USA" to be Primarily Geographically Descriptive but Registrable Under Section 2(f)

In a real snoozer, the Board reversed two refusals to register the mark ROC USA in standard character form [USA disclaimed], finding it primarily geographically descriptive of Applicant's various services relating to resident-owned communities, but further finding the mark registrable in light of Applicant's evidence of acquired distinctiveness under Section 2(f). In re Roc USA, LLC , Serial No. 77044525 (December 10, 2010) [not precedential].

There was no serious dispute that USA is geographically descriptive of the services. The Board "dismissed out of hand" Applicant's unsupported argument that USA is "too broad to convey an association between the services and the place named."

As to the meaning of ROC, the Examining Attorney relied on acronym listings and website pages wherein ROC is used as shorthand for "resident-owned communities." The Board rejected Applicant's argument that the Examining Attorney must show ROC to be either highly descriptive or generic to support the refusal. The question then was whether ROC "is descriptive to whatever degree, and whether it is insufficient to remove the mark from the prohibition of Section 2(e)(2)."

The Board concluded that ROC is merely descriptive of the services because the relevant public would understand ROC to refer to resident-owned communities. Moreover the composite mark ROC USA is primarily geographically descriptive of the services.

There is nothing about the combination of ROC and USA which renders the entire mark inherently distinctive. Both ROC and USA describe something significant about the identified services. There is no incongruity about the combination .... Also, the services are specialized and directed to a distinct segment of the public, those concerned with the establishment and administration of resident-owned communities or “resident ownership of manufactured housing communities.” This fact reinforces the conclusion that the relevant public would understand the meaning of both ROC and ROC USA.

However, the Board rejected the Examining Attorney's contention that the mark is "highly descriptive," since there is no evidence that anyone else uses this combination of words.

Turning to Section 2(f), the Examining Attorney argued that two years of use is not enough for acquired distinctiveness in light of the limited advertising and the highly descriptive nature of the mark. Applicant submitted several affidavits, copies of numerous media references, and letters from the Ford Foundation and resultant publicity related to a grant to Applicant.

The Board found the 2(f) evidence to be sufficient under the circumstances: the mark is not highly descriptive, and the recited services are "targeted to a narrow field, those interested in resident ownership of manufactured housing communities." It rejected the Examining Attorney's arguments, observing that it "would not expect to see applicant's mark advertised in the same manner as a mark for consumer goods."

And so the Board reversed the refusal to register.

TTABlog comment: Applicant was represented by Professor Ashyln J. Lembree with the assistance of three students (Nicole Wanty, Georgia Ellis, and Timothy Willis) from the University of New Hampshire School of Law (formerly Franklin Pierce Law School). Congratulations!

Text Copyright John L. Welch 2010.


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