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 In re Driven Innovations, Inc., Appeal No. 2016-1094 (January 4, 2017) [not precedential].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.
Read comments and post your comment here.
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.
posted by John L. Welch @ 1/06/2017
7 comments
7 Comments:
So, have I been teaching descriptiveness all wrong? I teach my students that, properly understood, descriptiveness asks whether imagination is required to connect the mark and the goods/services when you know both, not whether the mark requires imagination to figure out which goods/services it covers. The Ninth Circuit likes to say the latter, and the Second Circuit just went in that direction, and now this decision sounds like the Federal Circuit is close to on board. I find this idea completely incoherent--you can only figure out what "Apple" is, Abercrombie spectrum-wise, after you know the goods/services--but it seems to be becoming more common. Plus, I thought descriptiveness could include identifying what the goods/services are--their nature being a relevant characteristic--so I don't see why the fact that you don't know what specific type of blog-related services "dot blog" covers makes the term other than descriptive. But maybe I'm an old woman yelling at clouds.
One you connect the dots, it's obvious you used your imagination.
This analysis would appear to reverse the Cheese Zombie decision - as to the descriptiveness issue.
This decision sounds an awful lot like "The mark isn't descriptive, because you can't guess the services from the mark", which is traditionally considered a completely wrong way of looking at descriptiveness.
Take this line: "We also disagree with the Board’s reasoning because it logically results in the refusal to register any mark that includes the word 'blog' whenever the mark’s associated product or service relates in some way to blogs."
Well, yes, the Board's reasoning is that the word 'blog' is descriptive (which could result in a refusal to register or a disclaimer requirement) if the products/services relate in some way to blogs. If that's not correct, then the Board's been doing descriptiveness wrong for quite a while.
I would have bought--albeit been surprised by--a decision that 'Dot' was suggestive (and so the mark as a whole was suggestive) or that 'Dot' and 'Blog' created a suggestive meaning greater than the component parts, but to flat-out say that 'blog' isn't descriptive in the context of a blog-related service is pretty odd.
So, apparently TTABlog® is actually inherently distinctive?
I think the word "dot" might not be descriptive, or at least might cause some hesitation. But I can't see how "blog" isn't descriptive of the services.
Wait... but the services that the applicant is providing does not state that it's a "blog-related service." The applied for services for the trademark doesn't mention the word "blog," - just the internet and customers as a whole.
Blog is arguably generic where the information is provided via a blog. Dotblog could be, e.g, a blog about Georges Seurat, Animanics, ladybugs, gumdrops. the department of transportation, flash-frozen ice cream, a Kalamazoo guitar. Is it likely, no. But apparently that's the new standard for finding suggestiveness.
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