Wednesday, April 29, 2020

TTABlog Test: Is BLOCKCHAIN DRILLING Merely Descriptive of Offshore Drilling Services?

The USPTO issued a Section 2(e)(1) refusal to register the mark BLOCKCHAIN DRILLING, finding it to be merely descriptive of "Drilling of offshore oil or gas wells utilizing blockchain technology and solutions to enhance efficiencies and reduce costs" and "Implementation of blockchain technology and solutions, namely, providing a nondownloadable cloud-based computer software platform to enhance efficiencies and reduce costs in drilling offshore oil and gas wells" [DRILLING disclaimed]. Applicant argued that the mark is incongruous and therefore "at worst suggestive" of the services, since the "blockchain is traditionally used in ledgers, accountant's records, and in other data storage systems," not in the rough-and-tumble field of oil and gas well drilling. How do you think this came out? In re Diamond Offshore Drilling, Inc., Serial No. 87766205 (April 27, 2020) [not precedential] (Opinion by Judge Lorelei Ritchie).

Applicant submitted several dictionary definitions of "blockchain," all of which referred to the term in the context of "bitcoin" or "cryptocurrency" The Board, however, took judicial notice of other definitions of the term that are not so limited: e.g., "a digital database containing information (such as
records of financial transactions) that can be simultaneously used and shared within a large, decentralized, publicly accessible network; also: the technology used to create such a database."

Examining Attorney David A. Hoffman submitted a Wikipedia entry for “blockchain” that "reiterates that blockchain technology, while often used in reference to cryptocurrency exchanges, may be implemented in other systems, including supply chain monitoring."

Blockchain: A blockchain, originally block chain, is a growing list of records, called blocks, which are linked using cryptography. Each block contains a cryptographic hash of the previous block, a timestamp, and transaction data (generally representing a merkle tree root hash). By design, a blockchain is resistant to modification of the data. It is “an open, distributed ledger that can record transactions between two parties efficiently and in a verifiable and permanent way.”

The Examining Attorney also submitted an excerpt evidence from applicant’s website, touting its “Blockchain Drilling platform” as providing “transparency, provenance and immutability across the entire supply chain.”

Based on this evidence, the Board failed to see the incongruity that applicant claimed. Instead it found that the mark "when viewed in relation to Applicant’s identified services, immediately conveys that Applicant contemplates implementing 'blockchain' technology as a feature of its 'drilling' activities." Of course, the fact that applicant may be the first and only user does not immunize the mark from being merely descriptive of the services.

And so the Board affirmed the refusal.

Read comments and post your comment here.

TTABlogger comment: So on its face the mark may seem incongruous, but when you drill down to the actual services, maybe not.

Text Copyright John L. Welch 2020.


At 10:11 AM, Blogger Eddie said...

My question is what? They didn't even try to contemplate how drilling could utilize blockchain technology.

Good news for the applicant is not much of a name for drilling. So no big loss.

At 11:27 AM, Anonymous Ariana I. said...

I think that the Board correctly ruled on this refusal. A mark is said to be descriptive if it immediately conveys an idea about the quality, ingredients, function, etc. about a good or service. Before even reading what this case was about, I immediately thought that the term "BLOCKCHAIN DRILLING" had something to do with using some sort of blockchain technology used to drill something. After reading the case and seeing that the mark does incorporate blockchain technology for drilling, it is not surprising to me that the Board affirmed the refusal. In a way you can say that the mark itself describes the function of what the company does, i.e. drill for oil using blockchain technology, To me, it would be hard to deny that this mark is not descriptive.

It was interesting to read the company's arguments that the mark should be registrable because the term "BLOCKCHAIN" is used only in the financial industry. However, I don't think that they were convincing on this, based on other dictionary definitions of what blockchain means. I think the main concern was that the company used the term "BLOCKCHAIN" in the mark and described the goods as using that technology in order to drill.

My suggestion to the company would have been to use something that required a little more imagination and wasn't so literal. In other words, they needed to develop a stronger mark.


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