TTAB Test: Is PROBOKNOW Merely Descriptive of a Legal Services Website?
The USPTO refused registration of the mark PROBOKNOW, in standard character form, deeming it merely descriptive of "Operating an online marketplace for providers and consumers of free and affordable legal services." The PTO maintained that the mark is the phonetic equivalent of "pro bono."Applicant argued that PROBOKNOW will not be recognized as "pro bono," but rather as a merely suggestive portmanteau of the terms "pro bono" and "knowledge." Moreover, said applicant, the mark is a double entendre. How do you think this came out? In re Proboknow, LLC., Serial No. 86790769 (September 14, 2016) [not precedential].
The Board first observed that PROBOKNOW is a novel spelling of the phonetically equivalent “pro bono.” "The novel spelling of a mark that is the phonetic equivalent of a merely descriptive word or term is also merely descriptive if purchasers would perceive the different spelling as the equivalent of the descriptive word or term."
Examining Attorney David I. Dubin submitted dictionary definitions of the term "pro bono," which made clear that the term “pro bono” merely describes legal services provided to clients who are unable to pay. Internet evidence also indicated that “pro bono” is a well-recognized term in the field of law describing legal work performed for the public good to clients who are unable to pay. Applicant's website states that it services enable 'new attorneys to gain the experience they need by connecting them with those in need." Thus prospective customers would immediately know that the services are intended for providers and consumers of free, or pro bono, legal services.
As to applicant's argument that PROBOKNOW would be perceived as a melding of "pro bono" and "knowledge," there was no evidence to support that theory, nor is such an interpretation evident from applicant's manner of use of the mark. Moreover, even if consumers perceive the mark as applicant asserts, the mark would still be descriptive of applicant's services.
As to the double entendre argument, both meanings of the mark are descriptive of the services, and therefore there is no double entendre.
Finally, even if applicant is the first and only user of the term PROBOKNOW, it is still merely descriptive of the services, because it immediately describes an essential function, feature or characteristic of the identified services.
And so the Board affirmed the refusal to register.
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TTABlog comment: How did you do? PS: the Board did acknowledge once again that "there is a thin line between terms that are merely descriptive and those that are suggestive." That should make applicant feel better.
Text Copyright John L. Welch 2016.