Thursday, August 07, 2014

TTAB Reverses Mere Descriptiveness Refusal of RBAM for Engineering Consulting Services

In a rare reversal of a Section 2(e)(1) mere descriptiveness refusal, the Board found the mark RBAM not merely descriptive of management and consulting services in the field of engineering, particularly with regard to industrial, military, and marine equipment. The Board found the phrase "risk-based asset management" to be descriptive of applicant's services, but there was insufficient evidence to show that the acronym RBAM is understood by relevant customers as synonymous with that phrase. In re Life Cycle Engineering, Inc., Serial No. 85692710 (August 4, 2014) [not precedential].

Applicant refers to the "ultimate result of its services as 'a risk-based asset management strategy.'" The Examining Attorney established that third parties use the expression "risked-based asset management" to describe processes similar to those of applicant. Applicant did not claim that the phrase has an nondescriptive significance.

The question, then, was whether the acronym RBAM would be understood by relevant consumers to be synonymous with "risk-based asset management." The Acronym Finder website showed "risk-based asset management" as one of the meanings for RBAM, but did not indicate widespread exposure to or understanding of the correlation between the acronym and the phrase. With only one exception, that examples of third-party use of RBAM "never show the expression RBAM alone unless it has earlier appeared in the form 'risk-based asset management (RBAM)'" This type of usage, the Board noted, "may suggest that the writer would not expect readers to understand the acronym without explanation."

The Board also noted that the number of uses of the RBAM acronym in the record is "objectively small." Applicant's Manager of Director of Asset Management Services unequivocally averred that he was unaware of any third-party use of RBAM for similar services.

Although the Board had some doubt about the issue at hand, it resolved any doubt in favor of applicant and so reversed the refusal to register.

Read comments and post your comment here.

TTABlog note:  Do you think the acronym WYHA? has become synonymous with the phrase "Would You Have Appealed"? Is "Would You Have Appealed?" merely descriptive of anything? If not, why are we worried about the acronym anyway? Just embrace it.

Text Copyright John L. Welch 2014.


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