Thursday, July 19, 2012

"METRO LIVING & Design" Not Descriptive of Real Estate Brokerage Services, Says TTAB

In this "fairly close" case, the Board dismissed a two-pronged opposition to registration of the mark METRO LIVING & Design for real estate brokerage serves, finding that Opposer had failed to meets is burden to prove mere descriptiveness under Section 2(e)(1) or geographical descriptiveness under Section 2(e)(2). K. Hov IP II, Inc. v. Jonathan Benner-Ortega d/b/a Metro Living, Opposition No. 91185619 (June 26, 2012) [not precedential].

Mere descriptiveness: Opposer claimed that the word portion of the mark "immediately conveys the message that Applicant's services assist home buyers in finding housing that provides an attractive lifestyle in a metropolitan area." Furthermore, the design portion, depicting certain famous federal buildings [can you name them?], makes it clear that the services are offered in the Washington, D.C. area.

The Board, however, agreed with Applicant that the mark is only suggestive of the services. Recognizing that there is a "fine line" between the merely descriptive and the suggestive, the Board acknowledged that this determination is often subjective and not an "exact science." Here, the mark fell on the suggestive side.

The term “metro” is susceptible of various, albeit similar meanings, including “a large, sprawling metropolitan area” or “urbane,sophisticated, excitingly varied, cosmopolitan.” Likewise, the term “living” may be perceived as “dwelling in a particular place” as well as “conducting one’s life in a particular manner.” The mark does not immediately describe any specific characteristic or feature of applicant’s real estate brokerage services with any degree of particularity. At most, the mark suggests that use of applicant’s real estate brokerage services may result in some undefined, amorphous urban lifestyle.

The Board concluded that the meaning of the mark will vary from consumer to consumer, and does not directly tell the consumer anything other than to suggest that the services "will result in an undefined lifestyle in an urban environment." [Gee, that describes my life exactly - ed.].

Since the mark does not immediately describe any characteristic or feature of real estate brokerage services, it is not merely descriptive of them. Resolving any doubt in Applicant's favor, the Board reversed the Section 2(e)(1) refusal.

Primarily geographic descriptiveness Opposer urged that the landmarks depicted in the mark would be recognized as being located in Washington, D.C. The Board, however, found that Opposer had failed to prove that the primary meaning of the image is the geographic location, because these monument create a "separate readily understood meaning that is not geographic:" national pride and patriotism, the federal government, the seat of power of the United States, and the memory of historical persons and events that shaped this country. In light of these strong concepts conveyed by the image, the Board could not conclude, in light of meager evidence, that the mark is primarily geographically descriptive.

TTABlog comment: I get the point that Opposer's evidence on the geographic point was weak, but shouldn't the meaning of the image have been considered in the context of Applicant's services, and not in the abstract? What do national pride and patriotism have to do with real estate brokerage services? In context, doesn't the image say "Washington, D.C." And isn't the subway in D.C. called the "metro?" I think this is one of those cases where the Board was not going to rule in favor of a party who put in a feeble effort - which is all Opposer did on the geographic descriptiveness issue.

Text Copyright John L. Welch 2012.


At 12:54 PM, Anonymous Orrin A. Falby said...

I think the opposer had a up hill battle here. METRO LIVING, per se, is a unitary phrase. Similar to the phrase AMERICAN LIVING, it evokes a certain lifestyle or standard. The same goes for the design element as indicated by the judges. So both elements of the mark have readily understood meanings that are not geographic.

Is DC known for their subway system, like NY and Chicago?

Where the mark is ambiguous and has both geographical and non-geographical connotations, the primary impression created by mark in the minds of the public controls. When the mark creates a separate readily understood meaning that is not geographic, registration should not be refused. See In re International Taste, Inc., 53 U.S.P.Q. 2d 1604, 2000 WL 177409 (T.T.A.B. 2000) (HOLLYWOOD is not primarily geographical because, in addition to having two geographical meanings, it refers to the U.S. motion picture industry and the atmosphere attributed to it).

Likewise, a geographic term used in a composite expression which detracts from the geographical meaning is inherently distinctive and registrable on the Principal Register. See Wilco Co. v. Automatic Radio Mfg. Co., Inc., 255 F. Supp. 625, 151 U.S.P.Q. 24 (D. Mass. 1966) (ALL AMERICAN has a connotation of excellence rather than of geographic origination); In re Jim Crockett Promotions Inc., 5 U.S.P.Q. 2d 1455 (T.T.A.B. 1987) (THE GREAT AMERICAN BASH for promoting wrestling matches is not, when viewed as a whole, primarily geographical, but rather suggestive of the nature or quality of the wrestling matches).


Post a Comment

<< Home