Tuesday, April 10, 2018

TTAB Test: Is BRAND THERAPY Merely Descriptive of Graphic Design Consulting Services?

The USPTO refused registration of BRAND THERAPY for "Consulting in the field of graphic design; Graphic design," deeming the mark merely descriptive of, or generic for, the recited services. The Examining Attorney maintained that BRAND THERAPY "is a general term used to refer to the process of creating or re-creating graphic designs for use as brand images including consultation related to the graphic designs."Applicant Rachel Dunham argued that the phrase is merely suggestive, given the incongruity of a brand going into therapy. How do you think this came out? In re Dunham, Serial No. 86941745 (April 6, 2018) [not precedential] (Opinion by Judge Anthony R. Masiello).

The Board first considered the issue of mere descriptiveness under Section 2(e)(1). The Examining Attorney submitted Internet web pages from various consultants, primarily in the field of business strategy, that use the term “brand therapy.” However, as applicant pointed out, several of the Internet excerpts use the phrase "brand therapy" in "a metaphorical or even facetious way in order to suggest that the offered service is similar to psychoanalysis or psychotherapy." The Board observed that the other excerpts revealed no consistent meaning for the term:

We have considered all of the Examining Attorney’s usage examples carefully. Among the various users there does not appear to be agreement as to the meaning (if any) of BRAND THERAPY. No user employs the term to refer to graphic design, and different users apply it variously in the contexts of consultation regarding business development, communications, and public relations. It is also apparent that, in these examples, BRAND THERAPY is used to refer to a number of different things.

Contrary to the Examining Attorney's position, "the context of these uses of BRAND THERAPY strongly suggests that the users are attempting to express themselves in a novel, clever, or interesting way rather than simply employing the terminology or jargon of their fields."

Agreeing with applicant, the Board concluded that "[t]here is a degree of incongruity in the concept of subjecting a brand to therapy. Thought or imagination is required to leap past the incongruity in order to discern a descriptive quality of the mark."

The Board therefore found that BRAND THERAPY is not merely descriptive of applicant's services. Since genericness is the "ultimate in descriptiveness," the phrase, a fortiori, cannot be generic for those services.

And so the Board reversed the refusals to register.

Read comments and post your comment here.

TTABlog comment: How did you do?

Text Copyright John L. Welch 2018.


At 7:25 AM, Blogger Stephen Anderson said...

Hooray. I won this one. And so did the Applicant.

At 8:54 AM, Blogger parkerptlaw@gmail.com said...

I was relieved to see the board's decision

At 10:32 AM, Anonymous Anonymous said...

The Examiner for sure botched this one.

At 12:08 PM, Anonymous Joshua Jarvis said...

I think we need a new TTABlog acronym: WYEHNA? (Would You Ever Have Not Appealed?) This refusal was fairly mystifying.

At 1:28 PM, Anonymous Anonymous said...

In my experience, a lot of the ill conceived initial refusals have markers of poor training for the examining attorneys.


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