TTABlog Test: Is "DIGITAL BOOTH" Merely Descriptive of Metal Phone Booths?

The USPTO refused registration of the mark DIGITAL BOOTH for "metal phone booths." Applicant Packaging 22 argued that the mark is merely suggestive because "there is nothing digital about a phone booth." The Examining Attorney maintained that the mark describes booths that will feature digital voice over IP telephone services. How do you think this came out? In re Packaging 22, LLC, Serial No. 86212977 (May 10, 2016) [not precedential].

Applicant contended that the mark has a "strong incongruity" because "'booth' is something tangible, physical, and of low technology. 'Digital' denotes modern, high tech, and something ephemeral." A booth cannot be digital, and something digital cannot be a booth.

The Board, however, found nothing incongruous about the mark DIGITAL BOOTH; it "immediately describes a purpose or function of the goods, that is, the phone booth is designed and built to house digital technology, namely, a VoIP phone. Relying on dictionary definitions of "digital," "booth," and "VoIP," the Board found that the combination of DIGITAL and BOOTH does not convey "any distinctive source-identifying impression contrary to the descriptiveness of the individual parts."

Applicant indicated that its booths will house VoIP technology, and third-party websites showed that phone booths employ VoIP digital technology.

On this record, we conclude that consumers familiar with Applicant’s goods would immediately understand, upon seeing Applicant’s proposed mark, that the goods are designed and built to house a digital telephone. No imagination or thought is required by a prospective purchaser to discern that a significant purpose or feature of Applicant’s “metal phone booths” is use with digital technology, namely VoIP.

Finally, the Board observed that "the fact that an applicant may be the first and only user of a merely descriptive designation does not justify registration if the only significance conveyed by the term is merely descriptive."

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TTABlog comment: How did you do? Do you think this was a WYHA?

Text Copyright John L. Welch 2016.