CAFC Reverses TTAB's "DOTBLOG" Mere Descriptiveness Decision
In a non-predecential opinion, the CAFC reversed the Board's decision (TTABlogged here) that found the mark DOT BLOG to be merely descriptive of the service of "providing specific information as requested by customers via the Internet." Appellant Driven Innovations did not challenge the Board's procedural ruling regarding application of the "clear error" standard. [The Board held that an applicant may not separately challenge that determination of "clear error," either by petition to the Director or on appeal to the Board. Applicant’s only recourse is to appeal the substantive refusal.] In re Driven Innovations, Inc., Appeal No. 2016-1094 (January 4, 2017) [not precedential].
The Board reasoned that "blog" refers to an online journal, and applicant's specimen of use showed that it provides information that may be derived from or used for blogs. The word "dot" represents the punctuation mark in an internet address, and the combination of "dot" and "blog" has the same meaning as the component parts. According to the Board, "[c]onsumers will immediately understand the term DOTBLOG, when used in association with Applicant’s services of ‘providing specific information as requested by customers via the Internet,’ as describing a website that may feature information for blogs, or be related to blogs, regardless of the domain in which the blogs reside."
Alternatively, the Board found that consumers are likely to perceive the mark as "related to information gleaned from the '.blog' domain" because ICANN’s activation of the .blog generic top-level domain.
The CAFC disagreed because the definitions of "dot" and "blog" did not provide sufficient support for the Board’s finding, under the applicable substantial evidence standard.
The word “dot” does not “immediately convey” a meaning of the punctuation mark used in an internet address, nor does it immediately describe the online nature of Driven Innovations’ services. See Chamber of Commerce, 675 F.3d at 1300. Instead, it merely suggests the online nature of Driven Innovations’ services because it “requires some operation of the imagination” to connect the term “dot” to the online nature of Driven Innovations’ services. Abcor Dev. Corp., 588 F.2d at 814. Similarly, the word “blog” at most establishes some form of relation between the services rendered and blogs generally, without any description as to how the services rendered relate to blogs. The use of “blog” in the mark is not descriptive because it does not immediately convey knowledge of a feature of the services. See Chamber of Commerce, 675 F.3d at 1300.
Finding the applied-for mark to be merely suggestive of applicant's services, the Board reversed the Section 2(e)(1) refusal and remanded the case for further proceedings.
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TTABlog comment: FWIW, at the TTAB, the case was heard by an augmented panel of five judges, including the Chief Judge and Deputy Chief Judge.
Text Copyright John L. Welch 2016.