IP Law Daily TTAB erred in finding DOTBLOG to be descriptive, rather than suggestive, of blog search services
Wednesday, January 4, 2017

TTAB erred in finding DOTBLOG to be descriptive, rather than suggestive, of blog search services

By Cheryl Beise, J.D.

Substantial evidence did not support the Trademark Trial and Appeal Board’s determination that the mark DOTBLOG was not registrable because it was merely descriptive of applicant Driven Innovation’s services consisting of "[p]roviding specific information as requested by customers via the Internet," including information from blogs, the U.S. Court of Appeals for the Federal Circuit has held. The words "dot" and "blog," whether considered separately or in unitary form, did not immediately describe the applicant’s services, but at most suggested that the services related to online blogs. The Board’s precedential decision affirming the refusal to register was reversed and the case remanded (In re Driven Innovations, Inc., January 4, 2017, O’Malley, K.).

In December 2006, Driven Innovations, Inc. applied to register the standard character mark DOTBLOG for "providing specific information as requested by customers via the Internet." After resolving an opposition and receiving a notice of allowance, Driven Innovations filed a statement of use, accompanied by a specimen consisting of screenshots of Driven Innovations’ website displaying the statement, "DotBlog™ is a service in which we use proprietary search techniques to find relevant and current blog posts relating to any given search query and provide you, our customer, with a summary report of what those posts are saying about your particular query."

Based on Driven Innovations’ statement of use, a new examining attorney refused registration under Section 2(e)(1) of the Trademark Act on the ground of mere descriptiveness and under Sections 1, 2, 3, and 45 because the term failed to function as a mark. The Board affirmed the descriptiveness refusal, but held that the failure to function as a mark refusal was inapplicable because the applicant did not offer services in any way related to the operation of the ".blog" generic top level domain.

The Board reasoned that DOTBLOG was descriptive because (1) "blog" refers to an online journal on the internet, and the specimen of use showed that Driven Innovations used the mark in connection with providing information that may be derived from or for blogs; (2) "dot" represents the pronunciation of the punctuation mark that separates different address levels in an internet address; and (3) the mark in its entirety retains the same meaning as its component parts. In the alternative, the Board found that consumers were likely to perceive the mark as "related to information gleaned from the ‘.blog’ domain" because of ICANN’s anticipated activation of the ".blog" gTLD.

The Federal Circuit disagreed with the Board. The definitions of "dot" and "blog" did not provide sufficient support for the Board’s descriptiveness finding under a substantial evidence standard, according to the court. First, "some operation of the imagination" was required to connect the term "dot" to the online nature of Driven Innovations’ services, the court said. Similarly, the word "blog" at most established "some form of relation between the services rendered and blogs generally." Finally, considering DOTBLOG as a single mark, along with the definition evidence and the proposed existence of ".blog" generic top-level domain, "merely shows, at most, that the mark DOTBLOG likely would have some relation to online blogs." Mere relation, however, does not mean that a mark is descriptive, the court explained. In this case, the lack of an "instantaneous mental leap" between the term DOTBLOG and the applicant’s services using proprietary search techniques to find relevant and current blog posts "strongly indicates suggestiveness," rather than direct descriptiveness, the court concluded.

The Board’s reasoning was additionally flawed, according to the court, because it "logically results in the refusal to register any mark that includes the word ‘blog’ whenever the mark’s associated product or service relates in some way to blogs." At oral argument, the PTO backed away from such a broad application in other cases, but urged its adoption in this case. The Federal Circuit declined the invitation, noting that the PTO has not employed this type of relational application in past cases.

The case is No. 2016-1094.

Attorneys: Edward Lee (Law Offices of Edward Y. Lee) for Driven Innovations, Inc. Thomas L. Casagrande, Office of the Solicitor, U.S. Patent and Trademark Office, for Michelle K. Lee.

Companies: Driven Innovations, Inc.

MainStory: TopStory Trademark TechnologyInternet FedCirNews

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