The Federal Circuit recently reversed the TTAB's refusal to register the mark DOTBLOG, which the TTAB had found to be descriptive for Internet blog search services.
On the trademark distinctiveness spectrum, a mark is descriptive if it "immediately conveys knowledge of a quality, feature, function or characteristic of the goods or services with which it is used." Such marks do not function as source indicators and are refused registration unless they can be shown to have obtained secondary meaning in the minds of the consuming public. On the other hand, a mark is suggestive (and does not a require a showing of secondary meaning) if it "requires imagination, thought and perception to reach a conclusion as to the nature of the goods."
Driven Innovations had applied to register the mark DOTBLOG for "[p]roviding specific information as requested by customers via the Internet." Specifically, Driven's statement of use claimed its service uses proprietary search techniques to find relevant and current blog posts related to a user's search query and provides the user with summary reports of what those blog posts say about that particular query. The Examining Attorney refused registration, finding DOTBLOG descriptive of Driven's services because "the applicant is providing specific information to customers with respect to information and key terms on blogs."
On appeal, Driven argued that the refusal was incorrect on the merits because the mark is suggestive. The TTAB affirmed the refusal. The Board pointed to the fact that freedictionary.org defines "blog" as an online journal shared with others on the Internet, and that Driven used the mark in connection with providing information that is derived from blogs. Given that meaning, its use of DOTBLOG immediately described Driven's information services. Similarly, the word "dot" "would be perceived as merely indicating the online nature of Applicant's services." Considered in its entirety, the Board found: (1) each component of DOTBLOG retains its descriptive character; (2) the composite term does not present a new meaning; and (3) consumers would immediately understand that, when used with providing information requested by Internet customers, DOTBLOG describes a website that may feature information for, or related to, blogs. Alternatively, the Board found that when used in association with Driven's services, consumers would likely perceive the mark as relating to searches of sites on the '.blog' domain because of ICANN's activation of the ".blog" gTLD.
The Federal Circuit reversed, finding the mark suggestive. According to the Court, even considering the context of Driven's services, it "requires some operation of the imagination" to connect the term "dot" to the online nature of Driven's services. Similarly, the word "blog" establishes only some relationship between Driven's services and blogs generally, without describing how the services specifically relate to blogs. Considering DOTBLOG as a whole, the definitions and evidence of ".blog" gTLDs show only that the mark would likely have some relation to blogs. The Court stated:
Mere relation, however, does not mean that a mark is descriptive. In this case, there is no instantaneous "mental leap between the word and the [service]'s attribute" of using proprietary search techniques to find relevant and current blog posts related to a given search query from a customer and providing the customer with a summary report of those posts.
Moreover, the Court found the Board's reasoning overly broad and would result in the refusal of any mark that includes the word "blog" if the associated product or service relates in some way to blogs.
The case is In re: Driven Innovations, Inc., Case No. 2016-1094 (Jan. 4, 2017).
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