Precedential No. 19: PTO "Clear Error" Determination Not Reviewable by Petition or Appeal
After receiving a notice of allowance, the applicant filed its statement of use for the mark DOTBLOG for “providing specific information as requested by customers via the Internet.” The examining attorney determined that the applied-for mark was merely descriptive of the services, and that it was “clear error” under Section 1109.08 of the Trademark Manual of Examining Procedure (TMEP) to have failed to refuse registration, during initial examination, on the ground of mere descriptiveness. He therefore entered refusals to register the mark under Sections 1, 2, 3 and Section 2(e)(1) of the Lanham Act. The applicant argued that the refusal was improper because it was not a “clear error,” but the Board ruled that an applicant may not separately challenge that determination of “clear error,” either by petition to the Director or on appeal to the Board. Applicant’s only recourse is to appeal the substantive refusal. In re Driven Innovations, Inc., 115 USPQ2d 1261 (TTAB 2015) [precedential].
Clear Error: Section 1109.08 of the TMEP provides that, in examining a Statement of Use, an Examining Attorney "should not make a requirement or refusal concerning matters that could or should have been raised during initial examination, unless the failure to do so in initial examination constitutes a clear error, i.e., would result in issuance of a registration in violation of the Act or applicable rules." Although here the Examining Attorney did not use the term "clear error" in connection with issuance of the belated refusal, the Board observed that it was not necessary that he do so. Given the posture of the case, the refusal was obviously made under the "clear error" standard.
The Board took the opportunity to clarify the Applicant's position under the "clear error" scenario:"
We hold that an applicant may not directly challenge the Office’s determination under the clear error standard and that the only way an applicant may challenge a refusal that was issued during examination of the statement of use under the clear error standard is by appealing the merits of that final refusal to the Board.
Although the USPTO does have a policy that all possible refusals and requirements should be included in the first Office Action, that is not a requirement of the statute or any rule. "The Office has the inherent discretion to issue a requirement or refusal that it finds is correct at any stage in the prosecution of an application."
Mere Descriptiveness: The Board affirmed the refusal of DOTBLOG on the ground of mere descriptiveness. Although applicant does not operate a blog, it provides information that "may be derived from blogs or [may] be for blogs." Its specimens of use display the tag line, "Need to know what the buzz is within the blogosphere?" The word BLOG thus immediately describes Applicant's information services.
The term DOT represents the standard pronunciation of the period that separates address levels in an Internet address. As used in Applicant's mark, DOT indicates that the services may be requested and provided via the Internet.
When the composite DOTBLOG is considered as a whole, the meaning is still merely descriptive.
Alternatively, in view of ICANN's potential activation of the ".blog" TLD, consumers are likely to perceive Applicant's mark as related to information gleaned from ".blog" domains.
[W]hen considered as the coupling of a term ("DOT") that indicates Applicant provides an Internet-based service with a term ("BLOG") that describes places on the Internet, regardless of the domain in which those webpages reside, DOTBLOG is merely descriptive of Applicant’s services of "providing specific information as requested by customers via the Internet."
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TTABlog comment: I thought an examining attorney could always issue a mere descriptiveness refusal once he or she saw the specimen of use after notice of allowance. Didn't think there had to be "clear error."
Text Copyright John L. Welch 2015.
posted by John L. Welch @ 7/08/2015
5 comments
5 Comments:
I recall something differently. At the time ITU was being introduced and the rules package was being proposed to those of us on the PTO committee of then USTA, this issue was widely discussed. And we were assured that the Office was not going to use the examination of specimens to get a second bite of the apple. Had serious reservations about the process at the time, but was assured otherwise by asst Commissioner. I don't know how often it has happened in the last 26 years and if this case was egregious enough to warrant it, but a few of us were around when this was instituted and if there is something else going on now, it doesn't comport with what we were told and promised.
Joe's comment makes a good point about a second bite of the apple. How can this mark be allowed and now it is refused? Refuse the specimen, yes, but refuse the examined,publication tested and now allowed mark - no. I think the Board got this one all wrong, but who am I to challenge them.
I have had this happen on several occasions even though it just felt wrong. It makes me more careful with the specimens that are submitted after the NOA issues.
I think all of us have had experience with marks that should not have issued being cited against our clients. I had one recently that was egregious - the specimen was a plain t-shirt with a post-it note, hand-written with the mark, placed just below the collar. There has to be a way to stop these marks and others that don't belong on the register before they issue and it would seem that this case makes that point. The system isn't perfect but in my case my client now has to file a cancellation and literally pay for the PTO's mistake!
I still don't see a problem with the PTO reviewing the specimen and reconsidering the refusal. In a use-based application, the examining attorney can look at the specimen in determining descriptiveness. Why not look again when the specimen arrives.
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