Thursday, May 27, 2021

TTABlog Test: Must "HAUS" Be Disclaimed in "GRAVITY HAUS" for Social Club Services?

The USPTO refused to register the mark GRAVITY HAUS for "Social club services, namely, arranging, organizing, and hosting social events, get-togethers, night club services and parties for club members; conducting guided outdoor expeditions and activities in the nature of guided hiking tours for club members," absent a disclaimer of HAUS. Applicant argued that the word HAUS “does not provide any indication of the type of services offered and certainly does not identify social club services." How do you think this appeal came out? In re Yodeets Digital, LLC, Serial No. 88977161 (May 21, 2021) [not precedential] (Opinion by Judge Christen M. English).

Applicant did not dispute that "haus" is German for "house." That was enough for the Board:

The definition of “house” as a “restaurant, hotel, bar, or club” immediately describes a feature or characteristic of social club services, namely, that the services are often arranged, organized and hosted in a “house.” The general consuming public of Applicant’s social club services are likely to immediately understand that the German word “haus,” meaning “house,” refers to the place or venue where social club services are rendered, e.g. a bar, restaurant, club.

The evidence also showed that "a number of third-parties offering social club services under marks that incorporate the descriptive word 'house' or 'haus'" The Board noted that applicant's recitation of services "does not exclude 'social club services' provided in a dedicated venue or 'house.'"

Moreover, the fact that the application also covers “conducting guided tour expeditions and activities in the nature of guided hiking tours for club members” – activities that would not be provided in a restaurant, bar or club – is of no consequence. A word is merely descriptive where, as here, it describes any of the goods or services for which registration is sought.

The Board then considered whether GRAVITY HAUS is a unitary mark, making the disclaimer requirement inapplicable. "A mark is unitary if it creates a single, distinct commercial impression."

Applicant argued that "“[t]he terms GRAVITY HAUS used together create a sense of unity as the term GRAVITY indicates something that is held to the ground or is of this earth and HAUS represents the article that is held down by gravity. A house is typically centered by gravity and suggests a location that is grounded or stable." However, there was no evidence that consumers would attribute that connotation to the mark. Nor was there any evidence that GRAVITY HAUS is a catch-phrase or slogan.

The Board concluded that GRAVITY HAUS does not have a distinct meaning independent from its constituent elements.

And so the Board affirmed the disclaimer requirement, and allowed applicant 30 days to submit the required disclaimer.

Read comments and post your comment here.

TTABlogger comment: I side with applicant on this one. BTW: Gravity Haus apparently operates several hotels/ lodges in Colorado under that mark.

Text Copyright John L. Welch 2021.


At 7:29 AM, Blogger Gene Bolmarcich, Esq. said...

This is a perfect example of how narrow-minded the USPTO is on registration issues. Everything is "by the book", or perhaps "mechanical" is the better way of putting it. I have yet to see the TTAB just think slightly out of the box or otherwise take a "consumer eye" view of things. It unfortunately causes me to squash otherwise creative, envelope pushing, ideas of my clients that I would love to see fly. Maybe it's me but I've even seen the descriptive/suggestive line move a lot to the right lately, not to mention the notion of "similarity" being expanded. Heck, I wasn't even allowed to register my trade name "Trademarks A to ®" because you can't have the registration symbol in the trademark...but there it is! So I registered "Trademark A to" (less is more anyway) and when I use the ® with it, presto! becomes my trademark (and it would look silly if I used a double ® anyway, so it sorta worked out). But I digress..Happy Summer All!!


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