Wednesday, September 09, 2015

TTAB Test: Is This Display of "SmartDGA" Inherently Distinctive?

The USPTO refused registration of the mark SmartDGA, in the design form shown below [SmartDGA disclaimed], for dissolved gas conditions monitors for electrical power transformers, on the ground that the mark is merely descriptive of the goods. The question was whether the design components of the mark - the colors black and gold, the polygon shape, and the stylized lettering - create a distinctive commercial impression apart from the meaning of the words SmartDGA, that would warrant registration on the Principal Register. What do you think? In re LumaSense Technologies Holdings, Inc., Serial No. 86004595 (September 3, 2015) [not precedential].

The Board noted that is decision is "necessarily a subjective one" that must be made "based on a viewer's first impression." It found that the design components of the applied for mark failed to create a commercial impression separate and apart from the verbal component.

First, the typeface is a simple sans-serif font. The capitalization and slight bolding of DGA do not contribute to the mark's commercial impression.

Second, the background shape is a simple polygon. Although elongated, the shape is a nondistinctive geometric figure that consumers would not regard as a trademark for the goods.

Third, the gold color does not "change the standard by which these types of marks are judged." Anyway, color can never be inherently distinctive. [What about green-gold, like a certain press-pad? - ed.].

Considering the design elements together, the Board concluded that the non-literal portions of applicant's mark primarily serve as a mere background for the term "SmartDGA" and not as a designation of source.

And so the Board affirmed the refusal.

Read comments and post your comment here.

TTABlog comment: DGA stands for "Dissolved Gas Analysis", the study of dissolved gases in transformer oil. "Insulating materials within transformers and electrical equipment break down to liberate gases within the unit. The distribution of these gases can be related to the type of electrical fault, and the rate of gas generation can indicate the severity of the fault. The identity of the gases being generated by a particular unit can be very useful information in any preventative maintenance program." [Wikipedia].

Text Copyright John L. Welch 2015.


At 8:23 AM, Anonymous Anonymous said...

How about a TTABlog 'top ten list' of things clients suggest when seeking to obtain registration of an inelegible proposed word mark? Here are two nominations: put it in a box and use a different font; and mis-spell it.

At 9:20 AM, Anonymous Anonymous said...

Wasn't the basis of the press-pad case that colors can acquire distinctiveness?

At 12:38 PM, Anonymous Dane said...

It seems to me that this decision is literally correct; i.e., none of the elements discussed are inherently distinctive. However, taken as a whole, SmartDGA's design looks like something that would appear on a given brands product rather than something that would appear on all products of that type. Yes, the literal elements are disclaimed and there is a presumption of descriptiveness. However, the whole mark should be evaluated based on a "viewer's first impression." And, on first impression, this looks like something that is a mark and it looks like something that would delineate one product from another. As such, it seems like it may have inherent distinctiveness. Moreover, registration with a disclaimer in this case would offer Applicant only a thin layer of protection against nearly identical marks.


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