TTABlog Test: Must "DAILY" be Disclaimed in DAILY MIND for Mental Health Services
The USPTO refused to register the mark DAILY MIND for various mental health services, absent a disclaimer of the word "DAILY." The examining attorney maintained that "daily" describes a "feature or characteristic [of the mark], namely, the frequency in which the services are available or provided." Applicant SonderMind argued that the mark is unitary and that consumers "would not single out the word ‘DAILY’ or perceive it as describing the frequency in which the services are offered or available to consumers." How do you think this appeal came out? In re SonderMind Inc., Serial No. 97005621 (July 12, 2024) [not precedential] (Opinion by Judge Thomas W. Wellington).
In support of the refusal, the Examining Attorney relied upon the defined meaning of DAILY as “occurring, made, or acted upon every day” and also pointed to six third-party uses of the term in connection with mental health therapy services, including uses of “daily therapy” [e.g., "Rogers Behavioral Health website offering 'you or your child in daily therapy for several weeks'"(sic)].
SonderMind, based on the definitions of "daily" and "mind," argued that "the combined phrase has several meanings, none of which are immediately descriptive of Applicant’s mental health therapy services, including: (1) a memory that occurs every day, (2) an intention that is acted on every date, (3) an opinion that is made every day, and (4) a mood that occurs every day."
In response, the examining attorney pointed out that "all of applicant’s proposed alternate meanings demonstrate that consumers are likely to understand the wording DAILY as describing the feature or characteristic of 'occurring every day.'"
The Board sided with the SonderMind:
Here, we find consumers encountering DAILY MIND in connection with Applicant’s services will perceive the proposed mark in a unitary manner, and will not attribute a separate, merely descriptive meaning to the term DAILY, by itself. That is, grammatically, consumers will understand the word DAILY as modifying the word MIND and, taken together, as conveying suggestive, but not descriptive, meanings in connection with the services.
According to the Board, "DAILY MIND conveys various suggestive messages, e.g., 'a mood that occurs each day' or 'that Applicant’s services will help consumers create positive intentions they can focus on every day.'" Acknowledging that each of these meanings involves a "daily" occurrence, as the examining attorney pointed out, the Board nonetheless found that "the overall meanings conveyed by entire mark are only suggestive of Applicant’s services and not merely descriptive of them. Simply put, Applicant’s use of DAILY in the phrase DAILY MIND creates a suggestiveness that is not found in the third-party examples of the descriptive phrase 'daily therapy.'"
DAILY is “inseparable” from the entire mark, and the proposed mark DAILY MIND “has a distinct meaning of its own independent of the meaning of its constituent elements.”
And so, the Board rejected the disclaimer requirement and reversed the refusal.
Read comments and post your comment here.
TTABlogger comment: This decision makes no sense to my mind. Nor can I understand why the applicant made such a big deal out of disclaiming "daily."
Text Copyright John L. Welch 2024.
posted by John L. Welch @ 7/16/2024
6 comments
6 Comments:
It is not necessary that a term describe all of the purposes, functions, characteristics, or features of a product to be considered merely descriptive; it is enough if the term describes one significant function, attribute, or property. In re Chamber of Commerce, 675 F.3d at 1300, 102 USPQ2d at 1219 (citing In re Dial-A-Mattress Operating Corp., 240 F.3d 1341, 1346, 57 USPQ2d 1807, 1812 (Fed. Cir. 2001)); In re Zuma Array Ltd., 2022 USPQ2d 736, at *5 (TTAB 2022); In re Fallon, 2020 USPQ2d 11249, at *7 (TTAB 2020); In re Fat Boys Water Sports LLC, 118 USPQ2d at 1513; see In re Oppedahl & Larson LLP, 373 F.3d 1171, 1173, 71 USPQ2d 1370, 1371 (Fed. Cir. 2004) ("A mark may be merely descriptive even if it does not describe the ‘full scope and extent’ of the applicant’s goods or services."). Similarly, the mark need not describe all the goods and services identified, as long as it merely describes one of them. In re Chamber of Commerce, 675 F.3d at 1300, 102 USPQ2d at 1219; In re Oppedahl & Larson LLP, 373 F.3d at 1173, 71 USPQ2d at 1371 (citing In re Dial-A-Mattress Operating Corp., 240 F.3d at 1346, 57 USPQ2d at 1812); In re Gyulay, 820 F.2d at 1218, 3 USPQ2d at 1010; In re Zuma Array Ltd., 2022 USPQ2d 736, at *5-6; In re Positec Group Ltd., 108 USPQ2d 1161, 1171 (TTAB 2013) ("[I]f the mark is descriptive of some identified items – or even just one – the whole class of goods still may be refused by the examiner."); In re Cox Enters. Inc., 82 USPQ2d 1040 (TTAB 2007); see also In re Omaha Nat’l Corp., 819 F.2d 1117, 1119, 2 USPQ2d 1859, 1861 (Fed. Cir. 1987) (rejecting argument that descriptiveness should be limited to a quality or characteristic of the service itself and holding that it includes a designation descriptive of the service provider).
Wow. 37 years in this job and I still can't predict how the Board will rule.
Board appeal decisions go like this:
2(d) refusals will be upheld
FTF refusals will be upheld either as FTF or merely descriptive
Everything else will be decided by a random-number generator
I think MIND should have been disclaimed.
I can understand DAILY NEWS. I get DAILY DOSE. I can't imagine what DAILY MIND would be. On the basis of incongruity alone, I can't see how any reasonable consumer would view the term DAILY as merely descriptive or generic in this context. I'd go with the Board and void the disclaimer requirement.
The idea that the phrase as a whole has no immediate discernible meaning re the services is irrelevant to the basic fact that the presence of the word "daily" in the whole connotes and denotes something occurring every day. Or course it should be disclaimed.
Add this to the very long list of "worst rulings in TTAB history"
TTAB continues to exist in a vacuum, divorced from reality and common senes.
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