Wednesday, August 24, 2016

Double WYHA? RENTED.COM Merely Descriptive and Confusable with RENT.COM for Real Estate Services

The USPTO refused registration of the mark RENTED.COM for "Computer services, namely, providing search platforms to allow users to request content from and receive content to a computer or mobile device in relation to real estate," finding the mark both merely descriptive of the services under Section 2(e)(1) and likely to cause confusion with the registered mark RENT.COM, in standard character and design form, for providing online real estate information and providing a website for promotion of rental properties." The Board affirmed the refusals. Would You Have Appealed? In re VacationFutures Inc., Serial No. 86634983 (August 22, 2016) [not precedential].


Mere Descriptiveness: Applicant VacationFutures did not address the Section 2(e)(1) refusal in its appeal brief, but the Board reviewed the refusal anyway. Internet evidence submitted by Examining Attorney Seth A. Rappaport showed, not surprisingly, that the terms "rent," "rental" or "rented" are commonly used as descriptors in connection with services identical or similar to Applicant’s services. Of course, ".com" has no source-identifying significance. Only in exceptional circumstances does the addition of ".com" to an unregistrable term yield a registrable result.

Here, no such exceptional circumstances exist. The “RENTED” portion of the applied-for mark is unregistrable by itself, and the addition of the “.COM” gTLD does not create a witty double entendre or add any other significance capable of identifying source or acquiring distinctiveness.

And so the Board affirmed the mere descriptiveness refusal.

Likelihood of Confusion: The Board found the applied-for mark to be "highly similar to Registrant's mark or to the dominant portion of Registrant's marks, with respect to sound, appearance and commercial impression."

Applicant argued that the cited marks are weak, noting that RENT.COM is registered on the Supplemental Register. The Board, however, pointed out that "marks deemed 'weak' or merely descriptive are still entitled to protection against the registration by a subsequent user of a similar mark for closely related goods and/or services." That applies to marks registered not only on the Principal Register, but those on the Supplemental Register as well.

Evidence of third-party use demonstrated that "the same entity commonly markets and provides the relevant services under the same mark, and that the [involved] services are sold or provided through the same trade channels and to the same classes of consumers in the same fields of use." The Board noted for the umpteenth time that when the marks at issue are highly similar, a lesser degree of similarity between the involved goods or services is necessary to support a finding of likely confusion.

The Board therefore found confusion likely and it affirmed the Section 2(d) refusal.

Read comments and post your comment here.

TTABlog comment: Well, would you have?

Text Copyright John L. Welch 2016.

7 Comments:

At 10:27 AM, Anonymous Anonymous said...

The answer to the WYHA is simple. The attorney representing the applicant is Matthew Swyers of the Trademark Company. Has he ever won an appeal? How did he get to be the second largest filer of trademark applications with his record?

 
At 2:45 PM, Anonymous Anonymous said...

This comment made me wonder what was happening with Matthew Swyers and I found this info:

In January 2016, Matthew Swyers filed the action in USDC to enjoin the PTO from pursuing disciplinary proceedings against him stemming from the Office of Enrollment and Discipline's purportedly unconstitutional investigation into his patent (sic) practice. Swyers also requested damages from three individual PTO employees. He claimed the PTO was retaliating against him with a meritless, “Kafkaesque” investigation.

After the USDC case was filed, the PTO initiated a formal disciplinary proceeding against Swyers that is now pending before an administrative law judge. The disciplinary complaint alleges eight counts of ethical misconduct and is based on Swyers’ failure to respond to some of the agency’s requests for information and whether Swyers knowingly allowed others to sign his name on the more than 15,000 trademark applications and related submissions he has filed since January 2010.

On May 27, 2016, the USDC judge dismissed his suit against the PTO.

Swyers has said he’s spent more than $250,000 in legal fees and hundreds of man-hours responding to repeated “requests for information” about his practice.

 
At 5:30 PM, Blogger Carole Barrett said...

This is a WYHF? (Would you have filed!)

 
At 5:47 PM, Anonymous Anonymous said...

Where is the PTO OED report against him? He is a nightmare.

 
At 11:15 AM, Anonymous Joshua Jarvis said...

John, I think it's time to create a "Swyers WHYA-O-Meter" to keep track of his oeuvre.

 
At 4:46 PM, Anonymous Anonymous said...

I believe information is not available while it is ongoing, but I am not sure. I was curious about discipline at the USPTO because I did not know it existed. For most attorneys they would never need to know. This is what I found, although there were changes to the rules a few years ago, so I am not sure the following is 100% accurate.

The Office of Enrollment and Discipline (“OED”) performs investigations of alleged misconduct reported to the OED. If the director of the OED is of the opinion that a practitioner has violated a disciplinary rule, the director of the OED presents the evidence to support his opinion to a committee on discipline, which functions like a mini grand jury.

The committee determines whether there is probable cause that the accused practitioner has violated at least one disciplinary rule. The prosecution is performed by an associate solicitor in the solicitor’s office of the USPTO, who represents the director of the OED in disciplinary proceedings.

The prosecution is before an administrative law judge, who renders an initial decision, which can be a final decision of the USPTO with respect to discipline if it is not appealed by the director of the OED and/or the accused practitioner to the director of the USPTO.

 
At 5:01 PM, Anonymous Anonymous said...

You can see information on disciplined attorneys in the FOIA reading room. Nothing on Swyers yet.

https://e-foia.uspto.gov/Foia/OEDReadingRoom.jsp

The USPTO appears to be taking some action against people who sign other peoples names on documents because it is so easy to sign /Sign/ for someone else. I know there are attorneys doing this and they think nothing of it.

 

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