Divided TTAB Panel Finds OPEN SOURCE HARDWARE Merely Descriptive of Technology Website Services

In a less than convincing decision, the Board affirmed a Section 2(e)(1) refusal to register the mark OPEN SOURCE HARDWARE, finding it to be merely descriptive of "computer services, namely, providing an interactive web site featuring technology that allows users to consolidate and manage social networks, accounts, and connections to existing and emerging application programming interfaces (APIs)." Judge David Bucher dissented, opining that the PTO had failed to make a prima facie case of mere descriptiveness. In re Fuhu Holdings, Inc., Serial No. 85326591 (April 19, 2013) [not precedential].

The Examining Attorney relied on various definitions and website pages in arguing that OPEN SOURCE HARDWARE is merely descriptive of Applicant Fuhu's services because it identifies the computer hardware that applicant uses in rendering its computer services:

Applicant’s services involve the sharing or use of hardware-related information because the provision of an interactive web site featuring technology that allows users to consolidate and manage application programming interfaces is essentially an open source hardware platform that involves open source hardware interfaces.

The panel majority found that "open source hardware" has a "variety of uses, and includes software."

It follows, then, that applicant's website 'featuring technology' may feature open source hardware that allows users to consolidate and manage social networks, accounts, and connections to existing and emerging APIs.

Fuhu contended that its mark consists of a new and unique combination of OPEN SOURCE and HARDWARE, but the panel majority brushed that aside, noting that "open source hardware" has a defined meaning. Applicant further contended that its services "do not feature any ... sharing of hardware-related information" and that its services "are not related to hardware or physical attributes at all." The Board, however, found that OPEN SOURCE HARDWARE is merely descriptive of a feature of applicant's services, and it affirmed the refusal.

Disssent: Judge Bucher concluded that the PTO had failed to make out a prima facie case that the subject mark immediately conveys information about the recited services. 

"Open Source Hardware" as represented throughout this record (e.g., Arduino, BeagleBone or BeagleBoard) currently involves circuit boards that sell for around $100. Given applicant’s world of Web 2.0 technologies, open cloud web APIs, software development kits, and a platform having access to over 70 million devices (PCs, TVs and mobile devices), I am quite sure that inexpensive circuit boards designed for hobbyists are not the type of hardware applicant relies upon in rendering its services.

The Examining Attorney should have asked for more information, under Rule 2.61(b), according to Judge Bucher. With a better understanding of what Fuhu proposes to do, the PTO might have concluded that the applied-for mark is not merely descriptive, "but may be deceptive (viz. applications for SILK-formative terms in connection with cheap polyester fabrics), or deceptively misdescriptive (or even to those in the open source movement, 'scandalous'!)." Said Judge Bucher:

I would hold my nose, vote to reverse the merely descriptive refusal under Section 2(e)(1) of the Lanham Act, and send this application to publication. If the system works as it should, a competitor, trade association, industry group or someone else in the open source community would then oppose this application – making the appropriate statutory refusal(s) having a sound basis in trademark law – with the result that applicant would not succeed in having this mark registered, avoiding all the potential confusion and mischief that could ensue therefrom.

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Text Copyright John L. Welch 2013.