Monday, January 30, 2006

In a Citable Decision, TTAB Reverses Genericness Refusal of AOL's "INSTANT MESSENGER"

More than seven years after filing its applications, AOL has overcome the PTO's refusals to register the marks INSTANT MESSENGER and AOL INSTANT MESSENGER for electronic messaging services. The Examining Attorney had deemed the term INSTANT MESSENGER generic, but the Board (in its third citable decision of 2006) reversed that ruling and also found that INSTANT MESSENGER has acquired secondary meaning under Section 2(f). In re America Online, Inc., 77 USPQ2d 1618 (TTAB 2006).

The Examining Attorney argued that the words "instant messenger" has become "the means by which consumers refer to real-time Internet communications services." She submitted "[numerous] references in a wide variety of publications over a number of years" showing such use of that term. That evidence established a prima facie case of genericness.

However, AOL successfully rebutted the PTO's case. It submitted a "snapshot of NEXIS printouts" for the period 15-30 June 2004, as to which the Board concluded that "the majority of the articles refer to applicant."

"Moreover, applicant has shown that it has engaged in substantial marketing of its services under this mark. Just one mailing of its advertisement involved 60 million copies. In effect, the one mailing would have been distributed to a significant percentage of the total population of America. Furthermore, applicant has 80 million users of its identified services. Its services deliver more than one billion messages every day."

The Board found AOL's evidence "impressive," because it "shows not only a significant amount of proper trademark use but also trademark recognition by customers, publishers, and third parties." The Board concluded that the record lacked "clear evidence" that the relevant public primarily uses or understands INSTANT MESSENGER to refer to the genus of the services.

Turning to the Section 2(e)(1) and 2(f) issues, the Board found the term "instant messenger" to be merely descriptive of AOL's services because prospective purchasers or users would immediately understand that the services "involve the sending, storing, and displaying of messages sent by instant messaging services." It therefore affirmed the PTO's 2(e)(1) refusal.

The Examining Attorney did not "seriously question" AOL's Section 2(f) claim; instead she simply maintained that "a generic term can never acquire distinctiveness." [TTABlog comment: shouldn't she have said that the term, if not generic, is so descriptive that no amount of evidence would suffice to prove secondary meaning?] AOL, however, met its 2(f) burden of proof via the evidence discussed above. Therefore the Board reversed the PTO's rejection of AOL's 2(f) claim.

TTABlog note: Last year, in an uncitable decision, Network Associates overcame a prima facie case of genericness and establish secondary meaning in its mark VIRUSSCAN for computer utility software [discussed here].

Text Copyright John L. Welch 2006.


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