TTABlog Test: Must "CATTLE COMPANY" Be Disclaimed in "ROCK CREEK CATTLE COMPANY" for Real Estate Development Services?

The USPTO refused to register the mark ROCK CREEK CATTLE COMPANY, in standard character and design form, for "Real estate development services, namely, development of a private luxury resort property; real estate development," without a disclaimer of CATTLE COMPANY. The Examining Attorney, pointing to the fact that applicant's services are offered on a site that includes an active cattle ranching operation, concluded that CATTLE COMPANY merely describes the services "because CATTLE COMPANY immediately conveys a business that develops real estate featuring nearby domesticated animals." How do you think this appeal came out? In re Rock Creek Cattle Company, Ltd., Serial Nos. 90439051 and 90439338 (October 22, 2024) [not precedential] (Opinion by Judge Christopher C. Larkin).

The Board first pointed out that the Examining Attorney USPTO bears the burden of proving that the words CATTLE COMPANY in applicant’s mark are merely descriptive of at least one of the services identified in the applications. Any doubt regarding mere descriptiveness must be resolved in applicant’s favor. 

Applicant relied in part on its previously issued (now lapsed) registration of the same composite shown above for "real estate development services, namely, development of a private luxury resort property," one of the two services identified in the current applications, with a disclaimer of COMPANY but not CATTLE COMPANY. The Board was unmoved.

We thus do not know why the USPTO required only a disclaimer of COMPANY, and not CATTLE COMPANY, when it issued the ’129 Registration in 2009 for “real estate development services, namely, development of as private luxury resort property.” We conclude that the USPTO’s issuance of the ’129 Registration for those services without a disclaimer of CATTLE COMPANY does not entitle Applicant ipso facto to another registration of the composite mark for those services without a disclaimer of CATTLE COMPANY.

In short, each application must be examined on its own record.

The Examining Attorney relied most heavily on applicant’s own website for proof of the mere descriptiveness of the wording CATTLE COMPANY in the context of the identified services. The Board noted that in mere descriptiveness cases, the USPTO “commonly looks to an applicant’s website when it is made of record for possible evidence of descriptive use of a proposed mark.”

The evidence showed that the services "are currently rendered only at a single 30,000-acre residential community in Deer Lodge, Montana that . . . contains 225 lots and cabin sites that can be developed, as well as several existing features, including a golf course and golf clubhouse and the working cattle ranch."

The record leaves us with doubt that prospective purchasers of the identified “real estate development services, namely, development of a private luxury resort property” and “real estate development” services at the Deer Lodge development would understand the wording CATTLE COMPANY to “immediately convey[ ] a business that develops real estate featuring nearby domesticated animals.” The identified real estate development services are provided with respect to privately owned land located in certain portions of the Deer Lodge development, not with respect to the existing working cattle ranch at the development, and we have difficulty seeing how prospective purchasers of the identified services would understand from the wording CATTLE COMPANY that their privately owned land to be developed (as opposed to the working cattle ranch itself) “featur[es] nearby domesticated animals.”

The Board again acknowledged the "fine line between suggestive marks and descriptive terms." Giving applicant the benefit of the doubt, the Board found the term CATTLE COMPANY to be suggestive rather than descriptive.

And so, the Board reversed the disclaimer requirement in each case.

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TTABlogger comment: Is "Rock Creek" geographically descriptive under Section 2(e)(2)? Doubtful. I thought Rock Creek was in D.C., not Montana. Anyway, what did you think of this refusal? 

Text Copyright John L. Welch 2024.