TTABlog Test: Is "VOTESAPP" Merely Descriptive of a Social Networking App?
The USPTO refused to register the mark VOTESAPP for "online social networking services accessible by means of downloadable mobile applications," finding it to be merely descriptive of the services under Section 2(e)(1). Applicant Mehta stated that the app is "directed toward ‘getting out the vote,'" but he argued that his mark "has no recognized meaning in connection with social networking services and the relationship between the terms 'VOTES' and 'APP' is not immediately clear." How do you think this appeal came out? In re Niraj R. Mehta, Serial No. 88453022 (October 18, 2021) [not precedential] (Opinion by Judge Christopher Larkin).
There was no doubt that the term "app" describes applicant's services. The word "votes," however, was "quite a different matter." The Board took judicial notice that "'vote' is both a verb meaning 'to make an official choice for or against someone or something by casting a ballot, raising your hand, speaking your choice aloud, etc.,' and a noun meaning 'a usually formal expression of opinion or will in response to a prompted decision, especially: one given as an indication of approval or disapproval of a proposal, motion, or candidate for office.'"
The examining attorney argued that "votes" directly describes the subject matter of applicant’s services, just like PSYCHOLOGY PRESS for books in the field of psychology and WEATHER CHANNEL for television programming and weather information services, both of which were found to be merely descriptive. The Board disagreed.
That meaning of VOTES is not at all apparent on the face of the mark, and the Examining Attorney relies solely on Applicant’s statements during prosecution that his service "provides the ability to socialize a user’s self-disclosed vote status (voted, not voted, registered, etc.) amongst their contacts," and "creates a non-political interface that provides the vote status of contacts that utilize the service." Those statements, standing alone, are insufficient to establish that the word VOTES in Applicant’s proposed mark would be understood to have such a descriptive meaning by a consumer who knows that the involved services are "Online social networking services accessible by means of downloadable mobile applications."
In light of the sparse record, the Board was "constrained to agree" with Applicant.
There is nothing on the face of the mark that causes it to immediately convey that a feature of the identified social networking services is “the ability to socialize a user’s self-disclosed vote status (voted, not voted, registered, etc.) amongst their [sic] contacts,” id. at 9, and there is no record evidence to support a finding that the relevant purchasing public would so understand the word VOTES in the mark, or the mark as a whole.
And so, the Board reversed the refusal to register, resolving any doubt in applicant's favor.
Text Copyright John L. Welch 2021.
posted by John L. Welch @ 10/21/2021
6 comments
6 Comments:
I generally disagree with the TTAB's decision 100% of the time.
VOTESAPP not descriptive? Unless you have Covid Brain Fog, not thought or imagination is needed to figure out what the subject matter of the app is.
ICY v. ICEE for clothing - no likelihood of confusion?? The TTAB consistently finds marks that, in the business world/reality, would never, ever, assuming the universe is infinite and will expand forever until the last black hole evaporates its Hawking radiation in about 10 to 100 power years, would anyone be confused, but in this case, phonetically equivalent marks for clothing, which the TTAB finds pretty much all goods/services related to clothing? Come on.
Is it always "Opposite Day" at the TTAB?
I feel your pain Anonymous. This one has me now throwing up my hands because I no longer know when to tell a client that their mark is descriptive. I had just moved the line way to one side based on recent cases which established the "rule" that if the words have anything to do with the goods NOT AS DESCRIBED BUT AS THEY REALLY ARE (which is why the EAs ask questions) then the mark is descriptive..nothing nuanced about it any more...until now...what is the rule here, please?? It's an app and it has something to do with voting..MERELY DESCRIPTIVE..this would have been a classic example that I would have used for my clients to say "no" to their mark going on the Principal Register
Really? There's nothing on the face of the mark to cause it convey a feature?
VotesApp.
Without knowing anything I looked at it and said it must be an app about voting, getting people to vote. How did I make that brilliant deduction? Because it had the word App and the word Vote and put them next to each other and then nothing else.
Marks don't come any more descriptive than that.
Next time you label a case with "would you have appealed," think of this one.
Would you have appealed this refusal?
Agree with both Anon and Gene and how do we advise clients with these disparate and inconsistent decisions?
This is a good case to try out the new TTAB form requesting precedential status.
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