TTAB Test: Is "PRO." (Stylized) Merely Descriptive of Architectural Services?
The USPTO refused registration of the mark PRO. in the form shown below, finding it to be merely descriptive of "consulting services in the field of architectural design." Applicant Pic Pro appealed, contending that the stylization of the mark renders it inherently distinctive. How do you think this came out? In re Pico Pro Inc., Serial No. 86672373 (August 23, 2016) [not precedential].
Examining Attorney Seth A. Rappaport submitted dictionary definitions of the word "pro": a professional, especially in sports; an expert in a field of endeavor. The evidence also showed that "pro" is an abbreviation for "professional": having or showing great skill; expert; a person following a profession, especially a learned profession. The evidence also showed that it is not uncommon for entities to use the term "professional" to describe their architectural design services.
The Board concluded that applicant's mark "immediately conveys to the consumer that Applicant offers professional consulting services in the field of architectural design, and thus the mark is merely descriptive." The addition of a period makes no difference in the consumer perception of the mark.
Applicant maintained that the the stylization of the mark renders it inherently distinctive, pointing to "two tones, a specific font, and a large ball in distinct shading in lieu of a typically sized period of this font and size."
The Board noted that descriptive words presented in a distinctive design may be registrable as a whole, but with disclaimer of the descriptive wording. The question is whether the stylization creates "a separate and inherently distinctive commercial impression apart from the word itself." The Board acknowledged that this determination is a subjective one.
The Board found that neither the very plain presentation of the mark nor the addition of a period in the form of a "large ball" suffice to create a separate and inherently distinctive impression apart from the word "pro." In short, the appearance of the mark is "relatively ordinary."
The Board noted that the two marks shown below were found to be insufficiently stylized to be considered inherently distinctive, but it also pointed out that each case must be decided on its own merits.
The Board affirmed the refusal to register.
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Text Copyright John L. Welch 2016.