TTAB Test: Is RAINSCAPES Merely Descriptive of Irrigation Services?
The USPTO refused to register the logo mark shown below, for "installation and maintenance of residential and commercial irrigation systems; and lighting installation services," on the ground that Applicant failed to comply with the Examining Attorney's requirement for disclaimer of the word RAINSCAPES. Applicant argued that rainscapes (which preserve and recycle rain water) are used "in lieu of," or are "the complete opposite of" irrigation systems. The Board rendered a split decision. How do you think this came out? In re Rainscapes Construction, Inc., Serial No. 86906294 (January 27, 2017) [not precedential].
Examining Attorney John D. Dalier relied on dictionary definitions of "irrigation" ("the distribution of water over the surface of the ground, in order to promote the growth and productiveness of plants"), and Internet evidence ("[r]ainscapes are landscape enhancements that reduce stormwater runoff from properties ... Rainscapes simulate natural drainage to intercept, capture and absorb rain into the ground") in finding "rainscapes" descriptive of applicant's services.
Applicant's specimen of use revealed "not only that Applicant provides irrigation services, but also that it is committed to water conservation in performing those services." The Board noted that water conservation is a goal of both rainscapes and irrigation
The panel majority had no doubt that "rainscapes" is merely descriptive of applicant's irrigation services, because "rainscapes supply land with water, which is one definition of 'irrigation,' and can support plants’ need for water, which is another."
They majority concluded that "RAINSCAPES immediately conveys knowledge of a quality, feature, function, characteristic or purpose of Applicant’s irrigation services. Customers will understand that Applicant uses “rainscapes” in at least some of its irrigation systems.
Finally, the majority observed, "applicant’s competitors which use rainscapes to irrigate, or in conjunction with irrigation products and services, should, like Applicant, have the opportunity to use the term “rainscapes” or variations thereof to describe their goods and services."
And so the panel majority affirmed the disclaimer requirement.
In dissent, Judge Bergsman contended that the evidence did not show that “Rainscapes” is merely descriptive when used in connection with applicant's recited services. "[N]one of the websites discussing 'Rainscapes' make reference to installing irrigation systems."
Irrigation and rainscaping are distinct but related processes. As noted by the majority, the term “Rainscape” refers to a landscaping technique intended to preserve and recycle rainwater. It is designed to be used in lieu of irrigation whereas irrigation is the application of water to landscape. According to Wikipedia, “[i]rrigation is often studied together with drainage, which is the natural or artificial removal of surface and sub-surface water from a given area.
Therefore, RAINSCAPES need not be disclaimed.
Read comments and post your comment here.
TTABlog comment: How did you do? Note that, whether or not the mark is registered, competitors can still use the term "rainscapes" descriptively.
Text Copyright John L. Welch 2017.
posted by John L. Welch @ 2/01/2017
4 comments
4 Comments:
It seems to me that if rainscapes are part of the applicant's service, it would be merely descriptive and should be disclaimed, and if they are not part of the applicant's service, it would be deceptive and should be rejected. It seems a little self-serving to argue that rainscapes is the opposite of the service applicant provides and still try to trademark it for the name.
While I will not quibble with the decision, I find the reliance on Wikipedia to be a bit disturbing. It is one thing to rely generally on a Wikipedia entry to find public perception of a term, but in Footnote 6 the Board goes so far as to parse the language of the Wikipedia entry ("is usually not" does not mean "is never") to find a possible meaning of "rainscapes." Given the various biases associated with Wikipedia entries, that seems to give the entry a bit too much credit.
Yet again overreaching by the wanna-be judges at TTAB. Almost anything is descriptive these days. Disclaimer requirements are the new thing!
I would agree with the majority decision that the word, “RAINSCAPES” is merely descriptive and should not be eligible for trademark protection. If the applicant wishes to use it, applicant should disclaim the word, “RAINSCAPES”.
To determine eligibility, I would first go to § 45 of the Lanham Act for the definition of “trademark”. Generally, a trademark is any word, name, symbol, device, or combination used by a person in bona fide commerce or who has an intention to use in bona fide commerce. Applicant here would fit the definition because it wanted to use the word Rainscapes in connection with its business of selling irrigation services.
I would then look to §2 of the Act for marks excluded from trademark protection. Particularly relevant here is §2(e), which excludes marks that are merely descriptive of the product. The main issue is whether “Rainscapes” is merely descriptive of irrigation services. The Webster dictionary defines “irrigation” as, “the watering of land by artificial means to foster plant growth”. Rainscape is not a term found in Webster, so I separated the compound word rainscapes into “rain” and “scapes”. Webster defines “rain” as, “water that falls in drops from clouds in the sky”. One definition of “scape” from Webster is, “a view or picture of a scene” originating from the word “landscape”, meaning, “the landforms of a region in the aggregate”. Combining the two words “rain” and landscape”, my mind is immediately conveyed an image of land being watered. Land being watered is very similar to the definition of irrigation. It is very possible then that consumers interested in irrigation services would draw similar if not the same conclusion that rainscapes is describing watering land.
§2(f) allows an applicant to jump over the merely descriptive hurdle if applicant can show that s/he had been using rainscapes substantially exclusively and continuously for at least 5 years prior to his/her claim of distinctiveness. Acquired distinctiveness does not seem to be the case for the applicant however.
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