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 In re Chestek, Serial No 85072195 (March 14, 2013) [not precedential].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.
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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.