Monday, November 19, 2012

TTAB Sustains Mere Descriptiveness Opposition to WOMEN'S RUNNING for Fitness Website

The Board sustained a Section 2(e)(1) opposition to WOMEN'S RUNNING, finding the mark to be merely descriptive of sports and health information services. In view of the highly descriptive nature of the mark, Applicant Rodale's claim of five years of continuous and substantially exclusive use under Section 2(f) was insufficient to prove acquired distinctiveness. Wet Dog Media, Inc. v. Rodale, Inc., Opposition No. 91193283 (October 18, 2012) [not precedential].

Because the PTO approved Applicant's 2(f) claim in passing the mark to publication, Applicant Rodale enjoyed a presumption that its mark is registrable, and Opposer Wet Dog carried the initial burden to establish a prima facie case that Applicant's did not have acquired distinctiveness. If Opposer established a prima facie case, the burden would then shift to Applicant to provide additional evidence to rebut or overcome Opposer's evidence.

The Board agreed with Wet Dog that Rodale's mark is "highly descriptive" of its services. The Board observed that the degree of descriptiveness is relevant because it has a direct bearing on the amount of evidence needed to show acquired distinctiveness. To put it simply, the more descriptive the mark, the more Section 2(f) evidence required.

The Board noted that Rodale's mark is comprised of two "common and readily recognizable words that, combined, will be easily understood by consumers in the context of applicant's services." Consumers will understand that the mark is "merely describing that applicant's information services are geared to 'women' and will focus on the sports and health activity of 'running.'"

Materials submitted by Wet Dog, all by way of notice of reliance, along with Rodale's own website, underscored the straightforward meaning of the subject mark. At its website, Rodale displays "Women's Running" alongside, and in the same font as, other "categories" of information, such as "Nutrition & Weight Loss/ Motivation/ Site Map...Training Log/ High School Runner/Beginners."

The Board pointed out that Wet Dog's evidence (unaccompanied by testimony) does not establish the truth of the statements therein. It does not disprove Rodale's assertion of more than five years of continuous and substantially exclusive use. It does, however, support Opposer's assertion that the subject mark is "highly descriptive" and that Rodale "has not met its ultimate burden to prove acquired distinctiveness." Although the Board cannot reach any conclusions regarding the extent to which the public has been exposed to the materials submitted by Wet Dog, nor can it even assume that the publications were ever circulated, the materials do support Wet Dog's position: they corroborate the "plain meaning" of the term "women's running."

Turning to the sufficiency of Rodale's Section 2(f) evidence, the Board noted that Rodale did not submit testimony, but instead relied only on its 5-year claim of exclusivity. The Board concluded that, in view of the highly descriptive nature of the subject mark, Rodale's 5-year declaration is not sufficient to establish acquired distinctiveness. "The mark will clearly and immediately describe applicant's information services, namely, that applicant is rendering sports and health information [services] aimed at women and involving the sport of running."

The Board therefore affirmed the refusal to register.

TTABlog comment: Was the Examining Attorney asleep at the switch? We all know that Section 2(f) claims based on five years of use are not automatically accepted. Would you have accepted this one?

Text Copyright John L. Welch 2012.


At 6:21 PM, Anonymous Joe Dreitler said...

publications (and now websites) have a history of being descriptive, at best. I think that the examiner did the right thing, assuming it has been in use for >5 years. Let someone who is a competitor and thinks that they will be damaged by that term becoming a trademark oppose it. They did.


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