Wednesday, December 14, 2011


Applicant disclaimed GEORGIA but not MARKETPLACE in its applied-for mark TEAM GEORGIA MARKETPLACE for services involving procurement and government contract management. Examining Attorney Jessica A. Powers consequently refused registration under Section 6(a) of the Lanham Act. Would you have appealed? In re Georgia Department of Administrative Svcs., Serial No. 77792242 (November 21, 2011) [not precedential].

The Examining Attorney relied on dictionary definitions of MARKETPLACE, Internet excerpts showing use of GEORGIA MARKETPLACE and third-party registrations that either included disclaimers of MARKETPLACE or resided on the Supplemental Register. She contended that:

the wording GEORGIA MARKETPLACE is merely geographically descriptive in relation to the applicant’s ordering, procurement and business services taking place in or specifically targeting businesses that operate in the state of Georgia and further that the term MARKETPLACE is itself descriptive of a characteristic of those services, namely, buying, selling and general economic activity.

The Board found that the Examining Attorney had made a prima facie case that MARKETPLACE is merely descriptive of Applicant's services.

Applicant feebly argued that some imagination or reasoning would be required to connect the word MARKETPLACE with the services, but the Board found that the term is "not so vague that consumers will not understand its meaning in relation to applicant's services."

Applicant submitted a list of third-party registrations and applications for marks containing the word MARKETPLACE. The Board accepted the list, since the Examining Attorney did not timely object, but it accorded the list no probative value since the goods and services involved were not indicated. Moreover, third-party applications have no evidentiary value, other than to show that they were filed.

Finally, Applicant submitted a third-party registration for the mark TEXAS MARKETPLACE for "business resource referral services," which issued without a disclaimer. The Board found that evidence "inconclusive."

In fact, this registration highlights why prior decisions in other applications are not binding on the Board and underscore the need to evaluate each case on its own record. In re Nett Designs Inc., 57 USPQ2d 1564.

And so the Board affirmed the refusal, but it allowed Applicant thirty days to submit the required disclaimer of MARKETPLACE.

Text Copyright John L. Welch 2011.


At 8:32 AM, Anonymous Joe Dreitler said...

Anyone remember the article "disclaimers may they rest in peace"
30 years later and they still are very much alive.

At 9:52 AM, Anonymous Anonymous said...

I remember Mr. Saul Lefkowitz's excellent article. He was right.
71 TMR 215 (1981)


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