Monday, May 04, 2020

Precedential No. 16: TTAB Rules that Disclaimer of a Term Is Required as to All Services in a Class If Descriptive As to Any

Section 1213 of the Trademark Manual of Examining Procedure states (without cited authority) that "A disclaimer may be limited to pertain to only certain classes, or to only certain goods or services." [Emphasis added]. Not so, according to the Board in this precedential ruling. Applicant UST Global applied to register the mark INFINITY LABS for various services in five classes, but Examining Attorney David O. Johnson required disclaimer of the word LABS as to all. UST Global agreed to the disclaimer as to the services in class 35 and some of the class 42 services, but declined to do so as to the remaining services in class 42 and all the services in classes 36, 40, and 41. The Board affirmed the refusal in its entirety, extending to disclaimers "the well-settled principle that a "[i]f a mark is descriptive of any of the services in a class for which registration is sought, it is proper to refuse registration as to the entire class." In re UST Global (Singapore) Pte. Ltd., 2020 USPQ2d 10435 (TTAB 2020) [precedential] (Opinion by Judge Mark Lebow).

Under Section 6(a) of the Trademark Act, 15 U.S.C. § 1056(a), the USPTO "may require the applicant to disclaim an unregistrable component of a mark otherwise registrable," such as a component that is merely descriptive under Section 2(e)(1). Failure to comply with the requirement is a basis for refusing registration.

The Examining Attorney submitted dictionary definitions of "incubation," "labs," and "laboratory," while applicant provided a definition of "think tank." The Examining Attorney also made of record twenty-three use-based third-party registrations containing a disclaimer of the term "LABS."

Class 36: The Board found that LABS is not merely descriptive of "incubation services, namely providing financing to freelancers, start-ups, existing businesses and non-profits," since none of the evidence regarding the meaning of LABS related to the provision of financial services. As to applicant's "think tank services in the nature of consultation services in the field of digital finance," however, the Board found that consumers "would immediately understand 'LABS' to convey information about the services, namely that they are provided within a place, situation, or set of conditions conducive to experimentation, investigation, and/or observation." Therefore, LABS is merely descriptive of these think tank services.

Class 40: As to applicant's "think tank services in the nature of consultation services in the field of additive manufacturing," the Board again found LABS to be merely descriptive, focusing particularly on the "consultation services" portion of the recitation.

Class 41: These educational services related to retail, software design, technology research and development, and one-on-one mentoring. The Board pointed to a dictionary definition of a laboratory as "[a] place for practice, observation, or testing," finding that this "clearly describes Applicant’s educational services, provided virtually or otherwise." Two third-party registrations corroborated this conclusion. Therefore, the found “LABS” to be merely descriptive of these services.

Class 42: The Board also found LABS to be merely descriptive of "think tank services in the nature of technical consultation services" [emphasis by the Board] and "collaborative computer programming for others in the nature of hackathons," because collaboration is "akin to consultation," and consultation falls within the definition of LABS.

In summary, we find that “LABS” is merely descriptive of all services in Classes 40 and 41, and a portion of the services in Classes 36 and 42. We need not find “LABS” to be merely descriptive of all services in Classes 36 and 42 to require a disclaimer for all of the services in those classes. Regarding descriptiveness refusals under Section 2(e)(1) of the Trademark Act, we apply the well-settled principle that a “[i]f a mark is descriptive of any of the services in a class for which registration is sought, it is proper to refuse registration as to the entire class.” Chamber of Commerce of the U.S., 102 USPQ2d at 1219; In re Positec Grp. Ltd., 108 USPQ2d 1161, 1171 (TTAB 2013) (“If the Board affirms a refusal of an entire class based on the descriptiveness of the mark for one or more goods in the class, then the entire class will fail.”). We hold that the same principle applies to disclaimer refusals.

Applicant UST Global was allowed thirty days to submit an appropriate disclaimer of “LABS,” in which case the application will proceed to publication.

Read comments and post your comment here.

TTABlogger comment: Perhaps the TMEP is correct as to voluntary disclaimers? Can one still voluntarily disclaim a word or phrase as to some of the goods or services in a class, but not all?

Text Copyright John L. Welch 2020.


At 2:04 PM, Blogger Miriam Richter, Esq. said...

This is just another reason I very rarely file multiple class marks!

At 7:14 PM, Blogger Allison R said...

I think this decision is contrary to 15 U.S.C. §1112, which states that "The Director may establish a classification of goods and services, for convenience of Patent and Trademark Office administration, but not to limit or extend the applicant’s or registrant’s rights." This decision allows the applicant's rights to be limited by requiring the applicant to give up the exclusive right to use the mark for services for which the mark is not descriptive simply because those services are classified in the same class as services that have been found to be descriptive.


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