Friday, June 04, 2010

Test Your TTAB Judgeability: Is "BLUECAR" Merely Descriptive of Electric Vehicles?

Applicant Bollore sought to register the mark BLUECAR for electrically-powered vehicles, but the Examining Attorney refused registration on the ground that the mark is merely descriptive under Section 2(e)(1), reasoning that Applicant's identification of goods may encompass blue-colored electric cars. Bollore argued that BLUECAR is a double entendre because the mark is used in connection with environmentally friendly (i.e., blue) vehicles. The Board rendered a split decision. How would you rule? In re Bollore, Serial No. 79039545 (May 20, 2010) [not precedential].

To prove that the word "blue" means environmentally friendly, Bollore submitted excerpts from six websites from entities that use the word "blue" as part of their names and in connection with renewable energy. In view of that evidence, according to the panel majority, the Examining Attorney failed to give "appropriate consideration to the full context in which this mark will be used."

Applicant states that it intends to offer the goods in a range of colors, including blue. Therefore, potential purchasers of applicant’s cars, and the other goods identified, will approach the purchase with the understanding that the cars are available in a range of colors. Indeed, any other understanding would contradict both logic and experience. It would be unconventional to say the least for applicant, or any other car company, to offer its cars in only one color. Therefore, potential purchasers will perceive BLUECAR, not as merely describing the cars, even the cars which may be blue. Rather potential purchasers will perceive BLUECAR either as an arbitrary mark, or perhaps as a mark suggesting a clean, blue sky, that is, that the electric powered vehicles are environmentally friendly, as applicant argues. It would not make sense for potential purchasers who see the BLUECAR mark applied to cars of various colors to perceive BLUECAR as merely describing the color of some of those cars.

Noting that any doubt as to registrability must be resolved in favor of Applicant, the panel majority reversed the refusal.

Judge Bergsman, in dissent, pointed out that none of the definitions of "blue" submitted by Bellore include any reference to "environmentally friendly policies, practices, and products." Nor was he persuaded by the website evidence that "blue" is synonymous with environmentally friendly products and services. [In other words, "blue" does not have the same meaning as "green" to the consuming public.]

Moreover, purchasers of Applicant's cars presumably would include unsophisticated consumers "who merely want a blue car or for whom the color is the dominant feature."

He concluded that BLUECAR does not create a double entendre but merely means that Applicant's products include blue cars, and he would affirm the refusal to register.

TTABlog comment: If BLUECAR has two meanings: color and "environmentally friendly," aren't both meanings merely descriptive? Should the refusal be alternatively affirmed on that basis?

Note, however, that the majority does not say that the mark creates a double entendre. It says that consumers will perceive BLUECAR as "an arbitrary mark, or perhaps as a mark suggesting a clean, blue sky, that is, that the electric-powered vehicles are environmentally friendly."

So how do you come out on this one?

Text Copyright John L. Welch 2010.


At 9:42 AM, Blogger Frank said...

I agree with the TTAB majority opinion. For me, in order to be merely descriptive, there must be almost no other meaning in the public consciousness. Otherwise what is the significance of the word "merely"? The descriptive meaning must be the overwhelmingly dominant one. Here, as the TTAB majority points out, most consumers would not reasonably see BLUECAR as referring to the color of an automobile. In cases where a mark has multiple possible meanings I think that we need to find in favor of the applicant.

At 11:23 AM, Anonymous Tal Benschar said...

John, I'm with you. I always thought "green" means environmentally friendly, not "blue."

Could someone register "Greencar?"

"Environmentally Friendly Car?"

At 2:34 PM, Blogger Catherine said...

I agree that the commercial impression created is that of an arbitrary mark - I don't think the public would get any double entendre. I have not heard of "blue" meaning environmentally friendly, though one day perhaps it will be seen as synonymous with "green" - and at that point BLUECAR could well be too descriptive if it has not by then acquired sufficient secondary meaning. GREENCAR certainly would not fly (drive?) today.

At 3:43 AM, Anonymous Steve Baird said...

John, I think the majority got it right. To me, GREENCAR would immediately describe an environmentally friendly car, but BLUECAR requires some thought, imagination, or perception to understand the connection:

At 3:41 PM, Anonymous Rob said...

I, too, agree with the majority, for the reasons stated above. In a way, I also agree with John's comment, but am not sure the Board should have raised it on its own motion. Had the examiner raised it, that would have been different.

At 11:59 PM, Blogger jstack6 said...

They are a French company and in Europe Blue is like the US work Green as in Environmentally good. They have the lowest price and longest range of any Electric vehicle. They use Super Capacitors and High density lithium polymer batteries. Very innovative. Either way BlueCar is an ok name with no issues.


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