Friday, March 15, 2013

Test Your TTAB Judge-Ability: Is "Property, intangible" Inherently Distinctive for an Intellectual Property Blog?

Pamela Chestek, expert blogger on intellectual properly ownership issues, applied to register the mark Property, intangible, in standard character form, for "on-line journals, namely, blogs featuring information on intellectual property law." The PTO refused registration under Section 2(e)(1), but accepted Ms. Chestek's Section 2(f) evidence of acquired distinctiveness. Ms. Chestek then appealed the Section 2(e)(1) refusal, contending that her mark is inherently distinctive. The Board panel rendered a split decision. How do you think it came out? In re Chestek, Serial No 85072195 (March 14, 2013) [not precedential].

Applicant Chestek argued that her mark is only suggestive, because it comprises an unnatural, incongruous combination. Examining Attorney Laura Kovalsky maintained that the reversal of word order and addition of a comma do not lessen the merely descriptive nature of the mark, pointing to the public's understanding of such formats as "item, type of" and "last name, first name."

The panel majority deemed it  undisputable that "intangible property" is a commonly-used and well understood term in law. The target audience for applicant's blog is intellectual property attorneys. These "knowledgeable customers" would readily understand that the transposed term "property, intangible" directly conveys information about the subject matter of the blog. "[M]erely reversing the word order of 'intangible property' to 'property, intangible' in an 'item, type of' format does not give the term the modicum of distinctiveness to make it inherently distinctive."

Judge David Bucher dissented, finding that the applied-for mark creates a distinct commercial impression. It is not analogous to the "last name, first name" telephone listings or the "item, type of" format. Nor is it analogous to the mere insertion of "surprising, punctuation," or cases involving a "reversed order word" or a "mispelled" term. [sic!]

Rather, with a reversal of the word order and the insertion of a comma, one experiences a sudden pause, a mental hiccup. Rolling this designation across one’s tongue creates a momentary aural awkwardness bordering on the poetic. Property, Intangible breaks apart a unitary term, and when reassembled in this new form, it creates an incongruity that requires a multi-stage reasoning process or imagination in order for readers of applicant’s blog to be able, perhaps, to ascribe any particular significance to the phrase when used in connection with applicant’s services.

Moreover, Judge Bucher saw a double entendre in the mark: "Readers of the Property, Intangible blog often struggle along with the author over complex intellectual property ownership disputes of a most elusive nature." [Emphasis in original] This alternative meaning necessitates "sufficient mental gymnastics" to mandate a conclusion that the mark is suggestive, not merely descriptive. The proffered declarations of other intellectual property attorneys indicate that readers of the blog see the mark as an inherently distinctive source indicator. That creates sufficient doubt to warrant a reversal.

Read comments and post your comment here.

TTABlog note: Sadly, I am reminded of the Board decision in In re Welch, wherein the Board rejected the contention that THE TTABLOG was inherently distinctive for a blog featuring commentary and information regarding our favorite tribunal. [TTABlogged here].

Text Copyright John L. Welch 2013.


At 8:25 AM, Anonymous Jessica said...

Boo hiss. The majority was wrong and Judge Bucher right. This is not a mere word reversal case and it's annoying that the majority couldn't perceive how evocative the mark is.

At 8:43 AM, Anonymous Trevor Schmidt said...

The dissent was right. The incongruity should have rendered the mark inherently distinctive.

At 8:48 AM, Blogger Pamela Chestek said...

Needless to say, I think Judge Bucher is brilliant. And it's probably the first time in my life I've been referred to as "poetic."

At 9:13 AM, Blogger Steve said...

Judge Bucher was also the dissenting Judge in In re Chippendales where the issue was inherently distinctive. Sadly, I think that many Board members are mechanical applicators of precedent and forget that the issue here is how consumers perceive marks and not whether the mark fits within some mechanical defintion that, in the end, is just supposed to be a tool to devine what consumers actually percieve.

At 9:57 AM, Anonymous Gene Bolmarcich, Esq. said...

John, in In Re Welch, why didn't you argue that TTABLOG has two meanings. In fact I always thought it was supposed to mean TTAB LOG as in a log of TTAB cases! I'm dead serious!

Also, I completely agree with Judge Bucher. And he was quite poetic in his support for Pam! I never once even stopped to try to figure out the "meaning" of Property, Intangible because it just looked and sounded so od to me. Pam needed me in her case.

At 9:58 AM, Blogger Rebecca Tushnet said...

I'll respectfully dissent from the other commenters and side with the majority. (NB: I provided one of the statements of distinctiveness for the TTABlog, which had acquired distinctiveness, but I also agreed that it was not inherently distinctive. And in full sauce for the gander mode, nor is 43(b)log.) In my opinion, a lot of what makes it through as suggestive should be better categorized as descriptive.

It doesn't have much effect here, but when a producer in a position to use a term anticompetitively gets a registration for a mark that (at best) straddles the line, it has an incentive to use its registration to suppress competition. In the last week alone, I blogged about "True Fit" and "Mobileye," both of which cost their competitors a ton of money and one of which even gets to go to trial on infringement by a dissimilar mark in significant part because of a suggestiveness finding (the other lost because on examination of the evidence, the PTO was wrong to find the mark inherently distinctive).

At 10:16 AM, Anonymous Anonymous said...

To be clear -- a "mental hiccup" is not the same thing as a "brain fart." The dissent had the former and the majority the latter.

At 10:50 AM, Anonymous Alex B. said...

I agree with Judge Bucher and also note that he seems to be the frequent dissenter among the TTAB judges who rarely seem to issue separate concurring or dissenting opinions.

While I'm sure that many, if not all, of these TTAB judges read these trademark blogs like TTABLOG and PROPERTY, INTANGIBLE, it seems like they have some bias against registering those marks as inherently distinctive. Maybe the USPTO is going out of its way to demonstrate some consistency in the examination of these IP blog marks?

At 10:50 AM, Blogger John L. Welch said...

Gene: I thought both meanings (TTAB log or TTAB blog) raised the same issue of descriptiveness, so I didn't see much use in arguing the two meanings.

At 11:23 AM, Blogger Pamela Chestek said...


Your point is well-taken but contrary to the legal standard. In descriptiveness cases, doubt goes to the applicant. And the possibility that someone might overreach shouldn't be a reason to punish everyone; plenty don't.

At 11:58 AM, Anonymous Gene Bolmarcich, Esq. said...


TTAB log IMHO at least deserves a fighting chance to prove itself suggestive. "Log" is not generally used to refer to a body of case law.

At 12:02 PM, Anonymous Gene Bolmarcich, Esq. said...

Even a monopoly on "Property, Intangible" does absolutely no harm to the market for IP blogs. It's suggestive and there is no competitive need to use this mark to describe one's services. I'm not even sure I ever heard or saw the term "intangible property"! Concern for over-protection is to be addressed in the enforcement of a mark. This is clearly IMHO a suggestive mark.

At 1:35 PM, Anonymous Mark Donahey said...

I thought the majority’s analysis was excessively mechanical. Yes, there are cases showing that punctuation alone may not be sufficient to avoid mere descriptiveness. Yes, there are cases showing that transposition or inversion of terms alone may not be sufficient either. But none of those decisions align with the mark at issue in this case, because this mark does not rely on either of these features alone to create its unusual and jarring commercial impression. Result: all trees, no forest.

Also, speaking as a member of the blog's presumed target audience and a reasonably informed intellectual property attorney, I can’t say that I’m all that familiar with the term “intangible property” in the first place. While it may technically encompass intellectual property, the terms aren’t used interchangeably, and “intangible property” may even be more closely associated with other fields. For example, the only examples of “intangible property” provided by Black’s Law Dictionary are stock options and business goodwill.

In addition, there appears to be a growing divergence between the terms. Take a look at this Google Ngram Viewer comparison of the frequencies with which “intellectual property” and “intangible property” appear in English language works from the Google Books corpus. Until 1949 these terms were used with about the same frequency as one another. Since then the relative frequency of “intellectual property” has steadily risen to 160 times the frequency of “intangible property” in 2008. So, I'm not surprised that I haven't encountered "intangible property" much at all in the course of my career.

Of course, I don’t mean to suggest that “intangible property” itself, if it were the mark, would be inherently distinctive. Rather, this case turns on the question of the immediacy with which PROPERTY, INTANGIBLE informs us about the nature of the blog. If “intangible property” is archaic, rarely used in the field in question, and possibly more closely related to other fields, these factors should suggest that even experienced IP practitioners will have to stop and reflect when they encounter an unusual variation on the term before appreciating the mark’s significance.

Rebecca, I fully appreciate the substantial burdens and abuses that result from the seemingly endless parade of merely descriptive marks that make their way onto the Principal Register each week. In my view, at least, this isn’t one of those marks.

In any case, I thought Judge Bucher’s dissent was excellent, and I’ll probably end up quoting it often, whether or not it has precedential force.

At 2:48 PM, Blogger Pamela Chestek said...

Mark: I indeed simply conceded that "intangible property" was descriptive. The EA had evidence showing that intellectual property was a type of intangible property. So I didn't think I would make much headway to try to argue that "intangible property" wasn't really descriptive, but I would risk credibility. So I decided just not to go there, but in hindsight maybe I should have. :))

At 2:03 PM, Blogger Ron Coleman said...

Of course it is not descriptive. The PTO seems to be in a pendulum-swinging-the-other-way mode after the previous decade of wanton allowances of descriptive marks. Hopefully that swing has reached its apogee.


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