Monday, July 14, 2014

Precedential No. 30: YOUR CLOUD Merely Descriptive of Cloud Computing-Related Services, Says TTAB

Despite the existence of numerous third-party registrations for two-word "YOUR" marks without disclaimer of the word YOUR, the Board affirmed a Section 2(e)(1) mere descriptiveness refusal of YOUR CLOUD for cloud-computing related services. The immediacy with which YOUR CLOUD describes applicant Datapipe's personalized services distinguished the applied-for mark from the other registered marks. In re Datapipe, Inc., 111 USPQ2d 1330 (TTAB 2014) [precedential].

Examining Attorney Sung Hyun In maintained that "cloud" is the common descriptive name for a type of computer network in which data or software is stored and accessed remotely, rather than on one's own computer. Third-party website evidence demonstrated that Applicant is a provider of data center infrastructure and managed services in the fields of public and private cloud computing. The Board found that applicant's cloud storage services "provide customers with a viable alternative to capital expenditures for procuring new hardware - namely, providing, instead, infinitely scalable capacity at steadily decreasing prices." In short, the word "cloud" is descriptive of applicant's services.

As to the word "your," applicant pointed to a provision in a "nonpublic, internal examination guide that apparently directs Trademark Examining Attorneys to treat the word MY differently from the word YOUR on the issue of mere descriptiveness." According to applicant, this "'examination guide' produce[d] an unanticipated rejection" of its YOUR CLOUD mark. The Board was unmoved. The proffered document had "none of the hallmarks" of a genuine Examination Guide, and in any case, "the Board is not bound by Examination Guides, or the TMEP, etc." [Likewise, as I frequently say, the TBMP is not the law! - ed.].

The Examining Attorney relied on a dictionary entry indicating that "your" is "almost an equivalent to the definite article the <your typical teenager>." Applicant submitted several third party registrations for marks containing the word YOUR without disclaimer, including YOUR CHURCH (church management guidebooks), YOUR TUBE (condoms), YOUR CHEF (seasoning mixes), and YOUR NUTS! (pecan nuts). The Board, however, observed once again that it is not bound by by decisions of Examining Attorneys in other cases, nor is it privy to the evidence and arguments made in those cases. Moreover, most of those marks lacked the "stark immediacy" with which the word cloud conveys information about applicant's services.

Datapipe particularly relied on a prior Board decision reversing a mere descriptiveness refusal of YourDVD for DVD players, but since that decision was not precedential, the Board declined to discuss it in detail. It merely noted that there is a fine line between suggestiveness and mere descriptiveness, and in that case the Board panel apparently had a doubt about where to place the mark on the continuum of distinctiveness, and so it gave that applicant the benefit of the doubt (as it must). Here the Board had no such doubt.

Finally, the Board distinguished the YOUR CLOUD mark from several registered slogan marks - including two owned by applicant: THIS IS YOUR CLOUD and YOUR CLOUD MANAGED - because slogans are treated differently from two-word descriptors. And various third-party registered marks in which the second word was disclaimed, but not the first word YOUR, did not have the "immediate descriptiveness that is, by contrast, apparent in the content of Applicant's proposed mark, given the personalization of services that Applicant provides."

Applicant’s own website uses "you" and "your" four times in a single sentence. Additionally, the involved term points specifically to "your" (the customer’s) customized, unique, secured, backed-up, encrypted piece of the "cloud." When enterprises need cloud computing platforms and infrastructure, this personalized formulation is quite believable. By contrast, retailers of security products are unlikely to feel the same ownership of a brick-and-mortar warehouse, for example, when their wholesale distributor adopts as a service mark, YOUR WAREHOUSE.

The Board therefore found that YOUR CLOUD is merely descriptive of applicant's services, and it affirmed the Section 2(e)(1) refusal.

Read comments and post your comment here.

TTABlog note:  So what are YOUR THOUGHTS?

Text Copyright John L. Welch 2014.


At 11:36 AM, Anonymous Anonymous said...

It is almost as if the TTAB is making this stuff up as it goes along. There were well established precedents and practice of allowing "Your" formative and generic trademarks. It would have been preferable for the Board to reverse the previous non-citable decision than simply ignoring it altogether.

At 1:06 PM, Anonymous Rob said...

The designation is borderline generic.

At 9:02 PM, Anonymous Mitch Stabbe said...

According to this decision, YOUR RESUME for resume preparation and YOUR COLLEGE for assisting students in finding colleges apparently do not involve any personalization of services(!!), but YOUR CLOUD does. In most "YOUR ____" marks (as well as "MY ____" marks), personalization is the very message that the user wants to convey. This decision creates complete uncertainty for lawyers who need to advise a client whether a particular "YOUR ____" mark is merely descriptive.
How are trademark lawyers supposed to advise their clients when TTAB decisions make arbitrary assessments without providing any guidance how to assess a like mark in the future??

Also -- is "immediately descriptive" now a new category in the continuum of distinctiveness? Does it fall between "merely descriptive" and "generic" or between "merely descriptive" and "suggestive?"

Y'know, consistency is not the hobgoblin of small minds -- the aphorism refers to "foolish consistency."


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