Wednesday, October 18, 2006

PTO Denies Reconsideration Request Re "THE TTABLOG." Appeal Filed

First, the good news. The PTO accepted the TTABlogger's Section 2(f) evidentiary showing that the mark THE TTABLOG has acquired distinctiveness. [A tip of the TTABlog fedora to all my friends who provided e-mails and letters in support of the 2(f) claim. (list here)]. The bad news is that the Examining Attorney denied reconsideration of the claim of inherent distinctiveness. An appeal from the final refusal was then filed on October 14th.

The Examining Attorney, plainly misunderstanding Applicant's forceful yet subtle argument, maintained that the mark THE TTABLOG is not a double entendre and does not fall within the double meaning cases:

"In applicant'’s request for reconsideration, applicant refers the examining attorney to several '“double entendre'” cases. Resp. at 2. However, applicant'’s reliance on the cited cases is misplaced given that the proposed mark, TTABLOG, does not have another meaning. Thus, the proposed mark is not a double entendre. Because applicant'’s proposed mark is merely descriptive of the identified services, refusal is maintained under Trademark Act Section 2(e)(1). 15 U.S.C. §1052(e)(1)."

However, Applicant made no such argument. Instead, Applicant referred to the double entendre cases as support for a broader proposition:

"In the case of the double entendre marks, the consumer recognizes the clever use of a phrase that has a well-known second meaning. With regard to the subject mark, the consumer recognizes the odd, tongue-twisting fusion of the words TTAB and blog. Even though the consumer in these instances understands the meaning of the terms as applied to the goods or services in question, he or she also recognizes that the mark has a unique and memorable aspect of that gives the term its source-identifying power."

In other words, a double entendre may be deemed not merely descriptive despite the fact that, when the mark is considered with regard to the goods or services in question, the descriptive nature of the mark is immediately apparent. For example the meaning of SUGAR & SPICE for bakery goods is manifest, yet that mark falls in the favored "double entendre" category.

I argue that the double entendre mark is held to be inherently distinctive not because its descriptive meaning isn't apparent, but because it provides a noticeable and memorable "hook." So does THE TTABLOG. That's what makes them trademarks from the get-go.

I look forward to "hearing" what the Board has to say about this.

Text Copyright John L. Welch 2006.


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