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 In re Proboknow, LLC., Serial No. 86790769 (September 14, 2016) [not precedential].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.
Read comments and post your comment here.
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.
posted by John L. Welch @ 9/16/2016
17 comments
17 Comments:
ABSOLUTELY NOT Descriptive! The CAFC will agree
Very bad decision. In order to recognize that the mark PROBOKNOW can be pronounced as "pro bono," one must first perceive the word "know" in the mark, but if one has done that then one has recognized the inventive twist in the mark. In other words, this is not the typical case where there is a "novel" spelling of a merely-descriptive term.
"Know" clearly refers to the ability of consumers to obtain "knowledge" of pro bono services through Applicant's web based service. This required evidence according to the TTAB?
The applicant would probably feel even better if he had had a simple survey under his belt rather than "no evidence."
I'm not surprised at all how the Board decided (based on their track record of siding so heavily with examining attorneys). However, I think they're wrong and I was really hoping that the double entendre argument would carry the mark.
How is "know" or "knowledge" descriptive of "operating an online marketplace for providers and consumers of free and affordable legal services"?
I agree with the first two commenters, this is a bad decision and I would love to see this appealed and overturned.
What about the triple entendre argument, reflecting that former pro-NFL player, Bo Jackson may have knowledge of the subject, hence PRO-BO-KNOW.
Another example of the importance of at least some evidence. Argument alone will not carry the day.
"'Know' clearly refers to the ability of consumers to obtain 'knowledge' of pro bono services through Applicant's web based service. This required evidence according to the TTAB?"
The TTAB considered this argument, but determined that the obtaining knowledge of pro bono services was also merely descriptive of the services. Apparently, it doesn't help a mark to have two different meanings if both of the meanings are merely descriptive.
I saw it as an Eastern European surname or
Pro Bok Now, which would be an advocacy group for Derek Bok: https://en.wikipedia.org/wiki/Derek_Bok
Before reading previous comments, I came here to write that this _may_ be the worst decision in the history of the TTAB. Now I'm convinced it is the worst decision.
Yeah, evidence, legal theory, etc. Of course, that's all important in reality for us lawyers who know how arguing with the EAs and in the TTAB work.
But this mark should not have even elicited an office action in the first place. As in too many cases, the USPTO (EAs and TTAB) are mechanical and almost robotic with no apparent ability to step back a few feet and think logically how a real consumer (without dictionaries in their hands, legal know-how of the ways this might be descriptive, etc.) are going to perceive this.
In the modern economy, where marketing and branding are ubiquitous and consumers are accustomed to it, this is a trademark and nothing else.
Complete waste of money for the applicant.
"Pro bono knowledge" might be descriptive. PROBOKNOW is not. It uses a clever double-entendre. What does "knowing probo" mean?? Evidence has no role in a case like this. Common sense does.
What if the mark had been PROBO KNOW with a space?
I think the misspelling was so far off that it went from descriptive to suggestive.
The pronunciation is clearly different as well.
I thought it had something to do with probiotics at first. On seeing the mark I had no idea what it meant. It took me several steps and then I finally said "Oh, I get it." Doesn't that extra step of imagination, thought, or perception to reach the conclusion as to the nature of the services make it a suggestive mark? But maybe I am just "slow."
I love the word "portmanteau." Honestly, I had to look it up - a word the fuses BOTH the sounds and the meanings of its components, as in "smog."
They definitely need to add this case to the TMEP, just so the word "portmanteau" gets added to the TMEP probably in §§1209/1213.
If PROBOKNOW is merely descriptive then surely PROBOKNOWLEDGE would be descriptive, since it's even more direct..right?...wait...this decision must be wrong.
File this under "Duh" but maybe I can blame it on being dyslexic - I totally didn't pickup on the pro bono pronunciation until I was halfway through the first paragraph of the post! However, the inability to "hear it" properly in my head only supports registration since I certainly had to take several mental steps before I "got" it!
PROBOK NOW!
So, "SNORAKE" for a snow rake is not descriptive, but PROBOKNOW for operating an online marketplace for providers and consumers of free and affordable legal services is. Makes perfect sense.
PROBO KNOW immediately provides information about the nature of the services with particularity? Really? Are the listed services "Making others know about probo"?
Without having read the decision yet, based on this discussion, I'm thinking the outcome may have been different if the Applicant had sought a stylized version of the mark like the one shown at the top of John's blog post. This one kind of reminds me of an unsuccessful appeal I had years ago for the standard character mark URBANHOUZING (http://ttabvue.uspto.gov/ttabvue/v?pno=78752616&pty=EXA&eno=14) in connection with a real estate website -- the realtor and applicant had ZING separately registered(http://tsdr.uspto.gov/#caseNumber=3563002&caseType=US_REGISTRATION_NO&searchType=statusSearch) for the same services and a stylized rendition of URBANHOUZING.COM (http://tsdr.uspto.gov/#caseNumber=78752617&caseType=SERIAL_NO&searchType=statusSearch) registered for the same services, but the Board rejected the suggestiveness argument playing on the speedy meaning of ZING given the standard character application.
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