Monday, June 29, 2020

TTABlog Test: Is STAGER Merely Descriptive of Theatrical Production Software?

The USPTO refused to register the proposed mark STAGER for, inter alia, downloadable theatrical management application software," finding the term to be merely descriptive under Section 2(e)(1). Applicant argued that "stager" is not a term of art in the theatrical production field, is not used by its competitors, and is primarily used in the real estate field for a person who prepares houses for sale. How do you think this came out? In re Stager Intellectual Properties, LLC, Serial No. 87756847 (June 26, 2020) [not precedential] (Opinion by Judge Angela Lykos).

Examining Attorney Julie Watson relied on online dictionary definitions of "stager" as "someone who supervises the physical aspects in the production of a show and who is in charge of the stage when the show is being performed." Moreover, applicant stated in its responses to a Rule 2.61 request for information that its software will be used by and marketed to stage managers, but it denied that "stager" is a term of art in the field.

The Board observed that "[a] term that identifies a group to whom the applicant directs its goods or services is merely descriptive. See In re Planalytics, Inc., 70 USPQ2d 1453 (TTAB 2004)." The Board agreed with the Examining Attorney that prospective customers will immediately perceive Applicant's mark STAGER as merely describing the intended users of the software.

Applicant pointed to a Wikipedia entry for "stager" as "someone who uses style to improve the appeal of real estate for sale," and on online advertisements for real estate stagers. The Board pointed out, however, that the term must be considered in the context of the identified goods, and meanings in other contexts are not relevant.

Likewise the lack of entries for "stager" in specialized dictionaries in the theater field is not probative. "The fact that a term is not found in a dictionary, much less that it is found only in some dictionaries, is not controlling on the question of registrability if the Examining Attorney can show that the term has a well-understood and recognized meaning." The Board found the dictionary definitions of "stager" as "someone who assists in stage management or more generally as one who stages" to be sufficient to support the refusal.

As to lack of use of the term by competitors, the Board pointed out once again that "even if Applicant were the first and only entity in this industry to use 'stager' as a potential source indicator this would not obviate the descriptive nature of the proposed mark."

The logic of Applicant’s argument fails because the record shows that "stager" has a specific meaning when considered in relation to the goods by identifying the intended users. Competitors in this field should be able to use this descriptive term when advertising to the public their own similar goods.

And so the Board affirmed the refusal to register.

Read comments and post your comment here.

TTABlogger comment: WYHA?

Text Copyright John L. Welch 2020.


At 3:54 PM, Blogger Candi McBride said...

As someone who worked for many years in theater and the theater community, including earning a BFA and MA, I never heard the term "stager" until I watched real estate television shows. Of course being a TTABlogg regular, I can't say the Board's decision surprised me.

At 2:44 PM, Blogger Pamela Chestek said...

Ditto to what Candi said. My degree is in theatre and I never heard the word except in association with real estate. I wonder if you could provide "negative" evidence, e.g., that the word is never used in textbooks or trade books.


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