Friday, May 10, 2019

TTABlog Test: Is "ARKIVE" Merely Descriptive of Document and Data Storage Services?

The USPTO refused registration of the mark ARKIVE for document and data services, finding the mark to be merely descriptive under Section 2(e)(1). On appeal, applicant argued that its mark is a creative double entendre. Do you recognize it? How do you think this came out? In re Arkive Information Management LLC, Serial No. 87487874 (May 8, 2019) [not precedential] (Opinion by Judge Michael B. Adlin).

Examining Attorney Paul A. Moreno maintained that the mark is a 'novel spelling of and the phonetic equivalent to, the word 'archive,'" which is defined as a place where documents are kept. Thus applicant's mark merely describes the field and subject matter of its services.

Applicant did not dispute the definition of "archive" but instead asserted that "ARKIVE is a creative combination of the words 'ark' and 'archive' to create a word that has multiple meanings."

Specifically, Applicant’s mark plays on the word “ARK,” which is in reference to the Ark of the Covenant and Noah’s Ark. Applicant’s mark, therefore, conveys that its services are as secure as the ark that Noah built for himself, his family, and hundreds of animals, who were sheltered from the flood. *** Alternatively, consumers may be under the impression that Applicant’s data sharing and cloud computing backup services are as secure and sturdy as the Ark of the Covenant, a gold-covered wooden chest with a lid cover described [in] the Book of Exodus as containing the two stone tablets of the Ten Commandments.

The Board had no doubt that "archive" is merely descriptive of applicant's services. The slight misspelling of the mark does not make ARKIVE non-descriptive. As to applicant's double entendre argument, "[a] double entendre is registrable only if the second, non-descriptive meaning would be readily apparent to the consumer from the mark itself." There was no evidence that consumers would perceive ARKIVE as a reference to Noah's Ark, the Ark of the Covenant, or any other ark.

Applicant's own use of the mark at its website makes clear that the term ARKIVE conveys the same descriptive properties as "archive."

[T]he connection between “disaster recovery” and “security” on the one hand and Noah’s Ark or the Ark of the Covenant on the other is not by any means “readily apparent” from Applicant’s proposed mark, especially where the letters “a-r-k” are used only as part of the term ARKIVE in standard characters, and Applicant uses the phonetically identical, common and descriptive or generic term “archive” (as well as equivalent terms such as “backup”) repeatedly throughout its website.

In short applicant uses ARKIVE to refer to the storing of data and materials, not as a reference to Noah's Ark or the Ark of the Covenant. The meaning suggested by applicant is not apparent when the mark is used with the services.

And so the Board affirmed the refusal.

Read comments and post your comment here.

TTABlog comment: Is this a WYHA? By the way, even if applicant's website showed a picture of Noah's Ark, that would be irrelevant since the double meaning must be apparent from the mark itself, without any reference to trade dress, advertising copy, etc. See THE GREATEST bar case (here).

Text Copyright John L. Welch 2019.


At 6:06 AM, Blogger Gene Bolmarcich, Esq. said...

Can anyone explain to me why the USPTO is allowed to use extrinsic evidence to show that a trademark is merely descriptive (and all those annoying examiner inquiries intended to trap an applicant...reminds me of something else but I digress) but turns a blind eye to the same evidence when it shows that the mark will NOT be perceived in a merely descriptive manner? I think this should be appealed to the CAFC.

At 6:35 AM, Blogger John L. Welch said...

Where's the evidence (not attorney argument) that ARKIVE is not merely descriptive?

At 10:47 AM, Blogger Gene Bolmarcich, Esq. said...

I misunderstood the facts. I thought there were photos of Noah's Ark on the website. Assuming there were, for the sake of argument, my point is still that it should be considered in determining the meaning of the mark but I understand you to be saying that the law is that it will not be

At 10:55 AM, Blogger John L. Welch said...

In that regards, see THE GREATEST BAR case:

At 2:30 PM, Anonymous Anonymous said...

Humored by Gene's comment about the inquiry "trap." (Reminds me of someone else who has something to hide.) Also, pretty sure the evidence is weighed (by the Board and the CAFC). Looking forward to the CAFC's analysis of applicant's evidence.


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