Friday, November 13, 2015

TTAB Test: Is PREGNANCY TEXT Merely Descriptive of Simulated Pregnancy Messages?

The USPTO issued a Section 2(e)(1) refusal of the mark PREGNANCY TEXT, finding it to be merely descriptive of "Education and entertainment services, namely, providing audio, video, and prose presentations featuring a simulated pregnancy experience in mobile wireless form in both SMS and MMS formats." The Examining Attorney maintained that the mark immediately informs consumers that applicant sends text messages regarding pregnancy. Applicant argued it mark comprises a double entendre or pun (think "pregnancy test"), and that its services provide "simulated pregnancy experience" in mobile form, that show teens that "becoming parents can change their lives." [Tell me about it - ed.]. How do you think this came out? In re Do Something!, Inc., Serial No. 85696594 (October 29, 2015) [not precedential].

Applicant pointed out that its services are not a "pregnancy test" since they do not determine if anyone is pregnant. It contended that consumers will readily associate PREGNANCY TEXT with the extremely common expression "pregnancy test," and the latter term is at most suggestive of its services. In short, according to applicant, PREGNANCY TEXT "creates an incongruous twist of the actual meaning of 'Pregnancy Test.'"

The Board, however, agreed with Examining Attorney Shaila Lewis that there is no double entendre here because the terms "Pregnancy Text" and "Pregnancy Test" are distinct phrases that have entirely different meanings. "To be a double entendre, the actual words in the mark PREGNANCY TEXT should have an alternate meaning and ... that meaning must be readily apparent to purchasers from the mark itself." Here, PREGNANCY TEXT "means exactly what it says, namely, a text message about pregnancy-related matters, including new born babies."

Applicant pointed out that its services concern "phone babies," not real babies. The Board grasped the difference, but pointed out that both simulated pregnancy and real pregnancy "deal with the subject of 'pregnancy' and are therefore appropriately describe by the word 'pregnancy' in the term PREGNANCY TEXT."

In sum, customers would understand that PREGNANCY TEXT describes the purpose and/or a feature of the services, namely, "that text messages are sent that relate to the subject of pregnancy."

The Board therefore affirmed the refusal.

Read comments and post your comment here.

TTABlog comment: Well, what do you think?

Note the Board's discussion of applicant's citation to a non-precedential TTAB decision. You can do it, but it is not encouraged. Non-precedential decisions are obviously not binding on the Board and the Board will generally not discuss them. [Too many such citations may just annoy the Board, which is something you want to avoid].

Text Copyright John L. Welch 2015.


At 8:26 AM, Anonymous Anonymous said...

If the point for which the non-precedential decision is cited is the same as the issue in the present case, is there a principled reason for the Board not to even discuss how three Board members (non-biased experts in trademark law) treated that same issue previously?

At 9:54 AM, Anonymous Anonymous said...

I agree with Anonymous. The notion that a judicial-like body can willy-nilly ignore its own prior decisions and smacks of a denial of due process.

Yes TTAB is not an Article III court, but that should mean it has LESS, NOT MORE freedom to depart from due process. What could be more fundamental to due process than stare decisis?

Further, if citing non-precedential opinions may annoy the Board, and cause the mortals who are board members to be biased against the opinion-citer takes the pomposity to Soviet levels.

At 11:17 AM, Anonymous Anonymous said...

Thanks for the practical advice re non-precedential cites.

At 11:25 AM, Anonymous Anonymous said...

Anonymous at 8:26am here again. This decision really annoys me, although I have no connection whatsoever to it. Aside from the precedential/non-precedential cop-out by the Board, it held, "To be a double-entendre, the actual words in the mark PREGNANCY TEXT should have an alternate meaning . . ." I don't believe that's correct. In In re Tea and Sympathy, Inc., 88 U.S.P.Q.2d 1062 (T.T.A.B. 2008), which was precedential, the Board reversed a refusal of THE FARMACY on the ground it was a double entendre:

"We find that the mark THE FARMACY, as used in connection with applicant's [retail store] services, is more than simply a misspelling of 'the pharmacy.' Consumers are not likely to perceive that mark as just a misspelling, but rather as a play on the natural or farm-fresh characteristics of applicant's herbs and organic products used for medicinal purposes featured in applicant's services. Thus, the mark conveys a dual meaning, that of the natural aspect of the goods sold by applicant and of a pharmacy. Applicant's mark is inventive and just clever enough, being an obvious play on 'the pharmacy' and 'farm,' so that the meaning or commercial impression of applicant's mark will be more than simply 'the pharmacy.'"

Note that, contrary to what the Board stated above in the PREGNANCY TEXT case, the actual words in the mark THE FARMACY did *not* have an alternate meaning, yet the Board still found THE FARMACY "an obvious play on 'the pharmacy' and 'farm,'..."

At 6:10 PM, Anonymous Anonymous said...

Pharmacy and farmacy are identical in pronunciation. Not the same as test vs text. Descriptive phrases need to be protected for the benefit of the public as a whole.

At 8:56 PM, Anonymous Anonymous said...

"Pharmacy" and "farmacy" are phonetic equivalents, but the point was that "farmacy" and "farm" aren't the same or phonetic equivalents. In other words, contra the Board's position in the PREGNANCY TEXT case, the Board did not believe the actual words "THE FARMACY" needed to have an alternate meaning in order to qualify as a double entendre. We know this because aside from being the phonetic equivalent of the descriptive wording "the pharmacy," THE FARMACY had no meaning at all.

At 2:57 PM, Anonymous Anonymous said...

Did the addition of the determiner "the" play any minor role in that case? Would this have been different if the application was for "The Pregnancy Text?"
I still believe double entedre wasn't the right argument here. Do you have any examples of a succesful argument for double entedre when there wasn't a phonentic or actual equivalent?
Perhaps they could have argued here the double entedre was for the word text. As in, some people could perceive the meaning to imply the term text to mean a work of literary art or an information guide.
As for descriptiveness, the user would literally be getting a text message regarding the subject of pregnancy. That is descriptive of a major feature of the service.

At 6:31 PM, Anonymous Anonymous said...

I think there's a miscommunication somewhere. You asked, "Do you have any examples of a succesful argument for double entedre when there wasn't a phonentic or actual equivalent?" Yes, THE FARMACY was not the phonetic equivalent or any type of equivalent for the word "farm," yet the Board found a double entendre.


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