Friday, January 11, 2013

Precedential No. 40: On Summary Judgment, TTAB Rejects Claim that SMS Number Is Merely Descriptive of Mobile Search Services

Grape Technology was squashed by ChaCha in this combined opposition/cancellation proceeding. The Board denied Grape's belated motion to amend its counterclaim, denied its summary judgment motion seeking cancellation of ChaCha's registration on the newly-proposed ground of failure-to-function, and granted ChaCha's summary judgment motion for a ruling that its registered mark 242242 is not merely descriptive of "[p]roviding search engine services for obtaining specific user-requested information via text messaging, instant messaging, mobile internet, voice messaging, and wireless devices." ChaCha Search, Inc. v. Grape Technology Group, Inc., 105 U.S.P.Q.2d 1298 (TTAB 2012) [precedential].

Grape's Motion to Amend:  Grape filed its counterclaim in November 2010, stating on the cover sheet only mere descriptiveness as the ground for cancellation. Its allegations likewise referenced only mere descriptiveness and lack of acquired distinctiveness.

Grape sought to amend its counterclaim to add the ground of failure to function as a trademark, asserting that its proposed new allegations merely served to amplify the allegations raised in the original counterclaim. The Board disagreed, finding that Grape was "clearly seeking to add a new ground for cancellation."

A claim that a mark is merely descriptive relates to the character of the mark at issue, while a claim that matter does not function as a mark is generally tied to the manner in which that matter is used.

Moreover, Grape's motion to amend was filed in February 2012, fifteen months after its original counterclaim, after it served its pretrial disclosures (which date had been extended twice), and after ChaCha had filed its motion for summary judgment. The Board accordingly found that Grape had unduly delayed in filing its motion. The new ground proposed by Grape was based on facts know to it when it filed its original counterclaim. Although Grape claimed that the parties had been in settlement negotiations, the Board noted that those negotiations ended in July 2011.

The Board further found that ChaCha would suffer prejudice if the motion to amend were granted. "[A]llowing piecemeal prosecution of this case would reward Grape for its apparent haphazardness and would unfairly prejudice ChaCha by increasing the time, effort, and money that respondent would be required to expend to defend against an additional basis for Grape’s challenge to its registration."

And so the Board denied the motion to amend.

Grape's Motion for Summary Judgment:  Having denied the motion to amend, the Board denied Grape's cross-motion for summary judgment on the rejected ground of failure to function.

ChaCha's Motion for Summary Judgment:  ChaCha maintained that is mark 242242, which corresponds to CHACHA on the telephone dial, is not merely descriptive of its mobile search services because it does not identify any quality, characteristic, function, feature, purpose, or use of the services.

Grape argued that the USPTO has established "a bright line examination rule that requires alphanumeric telephone number marks to be deemed registrable [only] if there are word elements in the alphanumeric telephone number that are not descriptive or generic of the goods or services offered in association with the alleged mark," and Grape further contended that because 242242 is the SMS number by which users may obtain ChaCha's search services, the mark is merely descriptive.

Reviewing the record evidence, the Board found no genuine dispute that the mark 242242 does not identify an ingredient, quality, characteristic, function, feature, purpose, or use of ChaCha's recited services. Grape's assertion that "the fact that the marks are presented as telephone numbers gives rise to an inference that they are functional and descriptive" lacked any support and, the Board found, is "incorrect." Nor did Grape explain how 242242 identifies an ingredient, quality, characteristic, function, feature, purpose, or use of ChaCha's services.

And so the Board granted ChaCha's motion for summary judgment.

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Text Copyright John L. Welch 2013.


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