Friday, August 24, 2007

TTAB Reverses 2(e)(1) Descriptiveness Refusal of "FOLDOVER" for Web-Based Marketing Software

A dearth of PTO evidence led the Board to reverse a Section 2(e)(1) refusal of the mark FOLDOVER for "[p]roviding temporary use of non-downloadable computer software for use in creating web-based advertisements" in Class 42. In re Point Roll, Inc., Serial No. 78612631 (August 17, 2007) [not precedential].

The Examining Attorney contended that the term FOLDOVER merely describes a type of advertisement, and "the purpose and function of the [applicant's] services is the creation of a foldover ad in an electronic environment." Applicant Point Roll, Inc. refused to roll over, urging (of course) that FOLDOVER is merely suggestive, not descriptive, and pointing out that its software works in a "one dimensional setting" [TTABlog comment: really?] and therefore the advertisement cannot literally be folded over.

The PTO failed to substantiate its contention that the term FOLDOVER describes a type of print advertising. Its meager evidence consisted of three Internet excerpts of limited probative value.

The Examining Attorney noted Applicant's own use of the term "folds over" in a press release, but the Board retorted that "applicant seeks to register the term FOLDOVER, not 'folds over.'" [TTABlog comment: so what?]. In a PTO response, Applicant stated that its software "allows for advertiser's promotions to appear as a fold over," but the Board brushed aside that evidence as well, observing that Applicant was merely using the PTO's terminology and did not concede the descriptiveness of the term.

Moreover, the Board adamantly asserted that even if it had found FOLDOVER to be descriptive of print advertising, that would not have changed its decision. FOLDOVER is merely suggestive of the services because "a multistage reasoning process or imagination would be necessary for purchasers of these services to deduce anything meaningful about the nature of the services from the mark FOLDOVER."

[TTABlog comment: Hmmm. Let's see. It's advertising software and it's called FOLDOVER. I wonder if it makes some kind of foldover advertisements?]

Anyway, the Board gave Applicant the benefit of the doubt and reversed the refusal to register.

Text Copyright John L. Welch 2007.


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