Tuesday, June 28, 2011

Test Your TTAB Judge-Ability: Is MOTIONPOWER Merely Descriptive of Electrical Generation?

The USPTO refused registration of the mark MOTIONPOWER for electricity generators and power generation services, on the ground of mere descriptiveness under Section 2(e)(1). The Examining Attorney relied on dictionary definitions of the constituent words, and of "kinetic energy power." Applicant argued that its mark is merely suggestive and that no other entity in its industry uses the term or has a need to do so. In re Kinetic Energy Corporation, Serial No. 77707733 (May 31, 2011) [not precedential].

Applicant's website and press releases indicated that its goods and services relate to the generation of power from the motion of vehicles. Applicant points out that moving vehicles possess kinetic energy, which can be converted into electricity. The website compares applicant’s technology with other sources of energy, including “wind power,” “solar power,” “hydro power” and “geothermal power.”

The Board concluded that the mark is merely descriptive:

The evidence shows that kinetic energy, the type of energy involved in applicant’s goods and services, is energy associated with motion. The evidence also shows use of terms such as “solar power” (generation of power from the sun), “wind power” (generation of power from the wind) and “hydro power” (generation of power from water). The construction of applicant’s term MOTIONPOWER is similar, and consumers are likely to perceive applicant’s designation as merely descriptive when used in connection with goods or services that feature the generation of power from motion.

Of course, whether Applicant is the first or only user of the term does not affect the Section 2(e)(1) mere descriptiveness determination.

And so the Board affirmed the refusal.

Text Copyright John L. Welch 2011.


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

Government bureaucrats say "no."

Private sector suffers.


At 11:00 AM, Anonymous Anonymous said...

@Anonymous: What of the interests of all of applicant’s competitors to use a term that describes the goods?
"When he has discovered that a difference is a difference of degree, that distinguished extremes have between them a penumbra in which one gradually shades into the other, a tyro thinks to puzzle you by asking where you are going to draw the line, and an advocate of more experience will show the arbitrariness of the line proposed by putting cases very close to it on one side or the other. But the theory of the law is that such lines exist."
-- Just another bureaucrat (Oliver Wendell Holmes, Jr.)

At 9:02 AM, Anonymous Logokopp said...

Thank you Anonymous II, for an intelligent response. To a small degree, your post helped restore my faith in our great nation. Although it often seems otherwise, all is not lost. Thanks for that.

At 9:43 AM, Anonymous Anonymous said...

We've had electrical generation for, let's see, about a Century now. Nobody has ever called their product MOTIONPOWER before. Those competitors of applicant are not harmed by not being allowed to do what they have apparently freely chosen not to do for 100 years.

At 10:14 AM, Blogger Robert said...

@Anonymous 1: The private sector suffers when a bureaucrat declines to confer a government-enforced monopoly rights? Your snark is ironically off the mark. The private sector benefits. The applicant is still free to assert its trademark rights, and its competitors are free to claim the phrase is descriptive. If a dispute arises, the applicant can still prove it owns a valid trademark rather than relying on the government-granted presumption of validity. And here I thought libertarians preferred the market to work without government intervention.

Robert P.

At 3:10 PM, Anonymous Anonymous said...

@Anonymous I: Much like hybrid car technology, for example, I would bet that roadway systems for generating electricity by capturing the kinetic energy produced by moving vehicles is not something competitors have been doing for a century. This applicant's proprietary technology is the subject of at least nine pending patent applications in the United States Patent and Trademark Office.

At 6:43 PM, OpenID samcurt said...

Anonymous I, III and IV: I'm not a lawyer, but I do not think rejecting a trademark out of generic grounds has anything to do with this, unlike denying its patent application. Anyone can just decide on any trademark to sell things as they see fit, and there's always the common-law trademark rights as a last resort.

I'd also say, being the first party to commericalize the technology does not mean it has the automatic right to register a trademark considered merely descriptive to the technology, especially considering trademark rights can be potentially perputual, because:
1. It provides a likelihood for trademark harassment by the applicant for (even) non-commercial use of the term, and
2. It is not, competition-wise, to grant a monopoly on such terms on a first-come-first-served basis, as this would stifle other businesses that comes up with other implementations of the method of power generation.

I do not usually see this kind of comments on TTABlog, but I would censor my next line should I be sued for libel or slender.


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