Thursday, February 28, 2013

Test Your TTAB Judge-Ability: Does the Stylization of this Mark Render it Inherently Distinctive?

VOX Media applied to register the mark MMA FIGHTING.COM in the stylized form shown below, for "on-line journals, namely, blogs featuring sports; providing information in the field of sports." The PTO refused registration on the ground of mere descriptiveness under Section 2(e)(1). Applicant admitted that the wording is descriptive of the services  (MMA meaning Mixed Martial Arts], but it argued that the stylization of the mark renders it inherently distinctive. The PTO disagreed and VOX appealed. How would you rule? In re VOX Media Inc., Serial No. 85085395 (February 19, 2013) [not precedential].

Applicant argued that the letters "MMA" represent the following:

The white portion of the letter "A" is clearly a thumb with the thumbnail showing. The white portions of the M are clearly the fingers of two clenched fists. The black portions also resemble the columns of an arena or temple. And the black portions also resemble blades such as those used in a box cutter, utility knife, or Samurai sword.

Examining Attorney Alain A. Lapter maintained that Applicant merely used a non-traditional font, and did not replace any letters or words with a design element.

The Board observed that the determination of whether a descriptive term is sufficiently stylized to merit registration is "in the eyes of the beholder." The question is whether the stylization creates "a separate and inherently distinctive commercial impression apart from the word itself, such that the mark as a whole is not merely descriptive."

Both the Applicant and the Examining Attorney pointed to prior Board decisions. Applicant noted, for example, the Board's blessing of the mark JACKSON HOLE in stylized form (shown below), found registrable with the words disclaimed.

Unlike Applicant's mark, however, the JACKSON HOLE mark features the letters JH in larger font, partly joined together, in the nature of a monogram, and set lower than the rest of the letters. Moreover, the JH portion was not descriptive of the involved services, whereas MMA is descriptive.

We acknowledge that the lettering in applicant's mark is displayed in a stylized font with sharp, angular lines. However, we do not find that the stylization resembles, as applicant asserts, two punching fists, or calls to mind "the columns of an arena or coliseum" or "blades or knives."

The Board concluded that "the impression conveyed by applicant's mark is not separate from the disclaimed wording in the mark." And so it affirmed the refusal.

Read comments and post your comment here.

TTABlog note: Well, how did you do?

Text Copyright John L. Welch 2013.


At 7:24 AM, Anonymous Elizabeth King said...

I hope this was a close case. I disagree with the Board but I can see how they got there.

At 7:39 AM, Anonymous Morris Turek said...

I think the JACKSON HOLE case is bunk.

At 8:16 AM, Anonymous Gene Bolmarcich, Esq. said...

This comment has been removed by a blog administrator.

At 8:41 AM, Anonymous Anonymous said...

This decision is bizarre on the face of it. There are clearly significant overall impressions here that are font-style related separate and apart from the words. It's a distinction without a difference to speak about the capital letters in Jackson Hole as distinguishing the two. This is a decision unrelated to consumer behavior and thus very troubling.

At 9:26 AM, Anonymous Jessica said...

I can't take the PTO seriously on this topic after that Jackson Hole decision. Talk about tortured analysis of the so-called stylization!

At 9:40 AM, Anonymous Joe Dreitler said...

Does not give the bar guidance or confidence in the process. Either overrule Jackson Hole and do away with the policy so people don't rely upon it or register it. A blind man (or woman) could not look at that logo and Jackson Hole and say MMH is not as stylized as Jackson Hole----------- with a straight face anyway.

At 10:23 AM, Anonymous Anonymous said...

I disagree with this one. I've faced similar subjective and incorrect decision making. This has come up not only in the Trademark Office but also in the Copyright Office where we've tried to register logos and rejections come back on grounds of lack original expression. It would be interesting to see if the MMA logo might pass muster on that front in the Copyright Office.

At 10:45 AM, Blogger Annette Heller said...

I agree with all of the comments. In my opinion, it is stylized.

At 12:33 PM, Anonymous Anonymous said...

I agree with the Board's decision. The take away is that mere use of non-traditional font will not carry a mark. Prior decisions like JH, etc. are just reference points not policy. The mark was still registrable -- the Applicant had the opportunity to amend to the Supplemental Register and did not. Instead they filed a 2(f) claim based on 5 years use without having used the mark for 5 years. MMA is a generic acronym and the Applicant had not acquired distinctiveness for the Principal Register. The stylization here is capable of distinctiveness but is not inherently distinctive.

At 1:17 PM, Anonymous Joshua Jarvis said...

The applicant's proffered interpretation of the white spaces is an obvious stretch, but the overall stylization here pretty clearly creates a distinctive commercial impression. I think Jackson Hole is poisoning the waters on this topic.

At 8:50 PM, Anonymous Anonymous said...

One more vote for reversal. A bad decision.


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