United States: Connecting The DOTBLOG: Is Your Trademark Descriptive Or Suggestive?

Last Updated: February 3 2017
Article by David A. Kluft and Joshua S. Jarvis

When you see the name DOTBLOG, what does it mean to you? Is it just a blog about DOTS candy? Or about the painter George Seurat? Maybe it indicates a service that will help you punctuate your blog entries? Ok, probably not, but it must have something to do with blogs, right? Or something online, perhaps? If these assumptions are correct, does that make the mark merely descriptive for trademark purposes? The Federal Circuit recently explored these questions in a somewhat strange opinion in In Re: Driven Innovations, Inc.

Merely Descriptive v. Suggestive Marks

A mark is merely descriptive if it conveys an immediate idea of an ingredient, quality, characteristic, feature, function, purpose or use of the goods or services sold under the mark. A mark is suggestive, on the other hand, if it requires some imagination, thought and perception to see the mark and then reach a conclusion as to the nature of the services. For example, the fictional mark SUNSTOP would likely be considered merely descriptive of sun block preparations, while SOLAR GOO is considered suggestive when used for the same type of product.

The distinction creates one of the most important imaginary lines in trademark law, because terms that are merely descriptive can't function as trademarks – or be properly registered or enforced as trademarks – until they are used to a sufficient extent that they acquire distinctiveness (also called "secondary meaning") to the consuming public, which may or may not ever happen. Suggestive marks, on the other hand, are inherently distinctive, and can be protected and registered without a showing of secondary meaning. Fall on the wrong side of this line, and your trademark prospects are much more difficult.

The DOTBLOG Backstory

In 2006, Driven Innovations of Pasadena filed an intent to use application to register the mark DOTBLOG for a service described as "providing specific information as requested by customers over the internet." The application was published and then allowed in 2010. In 2012, Driven Innovations filed a Statement of Use along with a specimen showing pages from its www.dotblog.net website. The DOTBLOG service was advertised with the tagline: "Need to know what the buzz is within the blogosphere?" For a fee, the DOTBLOG service will use Driven Innovations' proprietary technique to conduct a search of blog posts about a particular topic and prepare a summary report of the relevant results.

After receiving the Statement of Use, the USPTO issued an Office Action refusing the mark on the grounds that DOTBLOG was merely descriptive, in other words, that it conveys an immediate idea of an ingredient, quality, characteristic, feature, function, purpose or use of the services. The examiner reasoned that, since the service involved providing information from blogs, the word BLOG was descriptive of those services. Meanwhile, the examiner found that word DOT was the nothing more than the functional equivalent of a period, i.e., the full mark was the equivalent of ".BLOG," and simply adding punctuation to a descriptive mark did not make it non-descriptive.

The TTAB Appeal

On appeal, Driven Innovations argued that the mark was suggestive, not descriptive, because it "required imagination, thought and perception to reach a conclusion as to the nature of the services." However, the TTAB disagreed and affirmed the refusal to register: BLOG was descriptive of the source of the information provided by the services, and DOT merely described the online nature of the service. The TTAB also appeared to share the examiner's concern that consumers might believe that DOTBLOG was a reference to the new .blog generic top level domain ("gTLD"), which at the time was scheduled for introduction in 2013 (and eventually became active in 2016). The TTAB concluded that:

The evidence of record shows that the term DOTBLOG immediately describes a key aspect of Applicant's Internet-based services, namely, that Applicant provides specific information as requested by customers via the Internet after conducting searches of websites, some of which may be blogs (whether or not they ultimately contain the extension .blog at their gTLD) and some of which may not be blogs but contain specific information about blogs. Accordingly, when considered as the coupling of a term ("DOT") that indicates Applicant provides an Internet-based service with a term ("BLOG") that describes places on the Internet, regardless of the domain in which those webpages reside, DOTBLOG is merely descriptive of Applicant's services of "providing specific information as requested by customers via the Internet."

The Federal Circuit Opinion

Driven Innovations appealed again, this time to the Federal Circuit Court of Appeals, which released its opinion on January 4, 2017. The Federal Circuit acknowledged that the line between descriptive and suggestive marks was sometimes difficult to find, but began its analysis by stating that "If the mental leap between the word and the product's attribute is not almost instantaneous, this strongly indicates suggestiveness, not direct descriptiveness."

As to the term DOT, the Federal Circuit held that the term does not immediately convey the online nature of a service, but rather "requires some operation of imagination" and thus only suggests the online nature of the service. As to BLOG, its use may suggest some relationship between the service and blogs generally, but this "mere relation" did not describe how that service related to blogs. With respect to the proposed .blog gTLD, the Federal Circuit found that this evidence merely demonstrated, "at most," that the mark DOTBLOG has some relation to online blogs. In short, since there was no instantaneous mental leap between the word DOTBLOG and the service's attribute (performing searches and providing summary reports), the mark was not descriptive. To hold to the contrary, the Court opined, would "logically result 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."

A Curious Analysis

The DOTBLOG mark does indeed straddle the descriptiveness/suggestiveness line, and this case could have reasonably gone either way. However, the Federal Circuit got there using some surprising reasoning.

It is axiomatic, under Federal Circuit precedent, that the determination of whether a trademark is "merely descriptive" must be made in relation to the goods or services for which registration is sought, and not in the abstract. In re Chamber of Commerce of the U.S., 675 F.3d 1297, 1300 (Fed. Cir. 2012). In other words, mere descriptiveness isn't evaluated in a vacuum where only the mark exists; rather, the question is whether an average consumer, who encounters the mark as it is used on the goods and services, would immediately understand it to convey knowledge of a quality, feature, function, or characteristic of such goods and services.

However, the Federal Circuit's analysis regarding "blog" doesn't appear to apply this test. Rather, the Court determined that the word "blog" itself is suggestive "because it does not immediately convey knowledge of a feature of the services" but "at most establishes some form of relation between the services rendered and blogs generally, without any description as to how the services rendered relate to blogs." This statement is curious, because it is clear that any average customer of the DOTBLOG platform would, immediately and with zero imagination required, understand that the sole function of the DOTBLOG service is to search and report blog posts. A different conclusion could be reached only if the Federal Circuit was temporarily evaluating the term "blog" in a vacuum, and in a fictional word where the customer was required, without any context and based only on the name, to "connect the dots" by guessing at the underlying services. As to the Federal Circuit's concern that the TTAB's reasoning would logically result in the refusal of any mark that included "BLOG" if the associated product or services related to blogs, well, no – that's not how it works. It would certainly render the "BLOG" portions of such marks merely descriptive, but that doesn't mean that those marks in their entireties wouldn't be distinctive and registrable – as we see here.

Does this mark a shift in the Federal Circuit's approach when evaluating mere descriptiveness? Probably not. The Court expressly invoked the Chamber of Commerce analysis, but after that it seems simply to have wandered a bit off the rails. In any event, this curious derailment didn't change the ultimate conclusion: when you combine the term "blog" with the term "dot," which the Court reasonably held does not immediately convey Driven Innovations' services, you are indeed left with a mark (DOTBLOG) that as a whole is suggestive. Thus, while it is worthwhile keeping an eye on the treatment of the issue in the future by the Courts and by the USPTO, we suspect that this will end up being just a blip – or a dot, if you'll indulge us – on the radar.

To view Foley Hoag's Trademark and Copyright Law Blog please click here

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

To print this article, all you need is to be registered on Mondaq.com.

Click to Login as an existing user or Register so you can print this article.

Authors
Events from this Firm
12 Oct 2018, Other, Boston, United States

The New England Electricity Restructuring Roundtable has been meeting bimonthly since 1995 to discuss current topics related to important changes in the electric power industry in Massachusetts and throughout New England.

Similar Articles
Relevancy Powered by MondaqAI
Finnegan, Henderson, Farabow, Garrett & Dunner, LLP
 
In association with
Related Topics
 
Similar Articles
Relevancy Powered by MondaqAI
Finnegan, Henderson, Farabow, Garrett & Dunner, LLP
Related Articles
 
Related Video
Up-coming Events Search
Tools
Print
Font Size:
Translation
Channels
Mondaq on Twitter
 
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).
 
Email Address
Company Name
Password
Confirm Password
Position
Mondaq Topics -- Select your Interests
 Accounting
 Anti-trust
 Commercial
 Compliance
 Consumer
 Criminal
 Employment
 Energy
 Environment
 Family
 Finance
 Government
 Healthcare
 Immigration
 Insolvency
 Insurance
 International
 IP
 Law Performance
 Law Practice
 Litigation
 Media & IT
 Privacy
 Real Estate
 Strategy
 Tax
 Technology
 Transport
 Wealth Mgt
Regions
Africa
Asia
Asia Pacific
Australasia
Canada
Caribbean
Europe
European Union
Latin America
Middle East
U.K.
United States
Worldwide Updates
Registration (you must scroll down to set your data preferences)

Mondaq Ltd requires you to register and provide information that personally identifies you, including your content preferences, for three primary purposes (full details of Mondaq’s use of your personal data can be found in our Privacy and Cookies Notice):

  • To allow you to personalize the Mondaq websites you are visiting to show content ("Content") relevant to your interests.
  • To enable features such as password reminder, news alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our content providers ("Contributors") who contribute Content for free for your use.

Mondaq hopes that our registered users will support us in maintaining our free to view business model by consenting to our use of your personal data as described below.

Mondaq has a "free to view" business model. Our services are paid for by Contributors in exchange for Mondaq providing them with access to information about who accesses their content. Once personal data is transferred to our Contributors they become a data controller of this personal data. They use it to measure the response that their articles are receiving, as a form of market research. They may also use it to provide Mondaq users with information about their products and services.

Details of each Contributor to which your personal data will be transferred is clearly stated within the Content that you access. For full details of how this Contributor will use your personal data, you should review the Contributor’s own Privacy Notice.

Please indicate your preference below:

Yes, I am happy to support Mondaq in maintaining its free to view business model by agreeing to allow Mondaq to share my personal data with Contributors whose Content I access
No, I do not want Mondaq to share my personal data with Contributors

Also please let us know whether you are happy to receive communications promoting products and services offered by Mondaq:

Yes, I am happy to received promotional communications from Mondaq
No, please do not send me promotional communications from Mondaq
Terms & Conditions

Mondaq.com (the Website) is owned and managed by Mondaq Ltd (Mondaq). Mondaq grants you a non-exclusive, revocable licence to access the Website and associated services, such as the Mondaq News Alerts (Services), subject to and in consideration of your compliance with the following terms and conditions of use (Terms). Your use of the Website and/or Services constitutes your agreement to the Terms. Mondaq may terminate your use of the Website and Services if you are in breach of these Terms or if Mondaq decides to terminate the licence granted hereunder for any reason whatsoever.

Use of www.mondaq.com

To Use Mondaq.com you must be: eighteen (18) years old or over; legally capable of entering into binding contracts; and not in any way prohibited by the applicable law to enter into these Terms in the jurisdiction which you are currently located.

You may use the Website as an unregistered user, however, you are required to register as a user if you wish to read the full text of the Content or to receive the Services.

You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these Terms or with the prior written consent of Mondaq. You may not use electronic or other means to extract details or information from the Content. Nor shall you extract information about users or Contributors in order to offer them any services or products.

In your use of the Website and/or Services you shall: comply with all applicable laws, regulations, directives and legislations which apply to your Use of the Website and/or Services in whatever country you are physically located including without limitation any and all consumer law, export control laws and regulations; provide to us true, correct and accurate information and promptly inform us in the event that any information that you have provided to us changes or becomes inaccurate; notify Mondaq immediately of any circumstances where you have reason to believe that any Intellectual Property Rights or any other rights of any third party may have been infringed; co-operate with reasonable security or other checks or requests for information made by Mondaq from time to time; and at all times be fully liable for the breach of any of these Terms by a third party using your login details to access the Website and/or Services

however, you shall not: do anything likely to impair, interfere with or damage or cause harm or distress to any persons, or the network; do anything that will infringe any Intellectual Property Rights or other rights of Mondaq or any third party; or use the Website, Services and/or Content otherwise than in accordance with these Terms; use any trade marks or service marks of Mondaq or the Contributors, or do anything which may be seen to take unfair advantage of the reputation and goodwill of Mondaq or the Contributors, or the Website, Services and/or Content.

Mondaq reserves the right, in its sole discretion, to take any action that it deems necessary and appropriate in the event it considers that there is a breach or threatened breach of the Terms.

Mondaq’s Rights and Obligations

Unless otherwise expressly set out to the contrary, nothing in these Terms shall serve to transfer from Mondaq to you, any Intellectual Property Rights owned by and/or licensed to Mondaq and all rights, title and interest in and to such Intellectual Property Rights will remain exclusively with Mondaq and/or its licensors.

Mondaq shall use its reasonable endeavours to make the Website and Services available to you at all times, but we cannot guarantee an uninterrupted and fault free service.

Mondaq reserves the right to make changes to the services and/or the Website or part thereof, from time to time, and we may add, remove, modify and/or vary any elements of features and functionalities of the Website or the services.

Mondaq also reserves the right from time to time to monitor your Use of the Website and/or services.

Disclaimer

The Content is general information only. It is not intended to constitute legal advice or seek to be the complete and comprehensive statement of the law, nor is it intended to address your specific requirements or provide advice on which reliance should be placed. Mondaq and/or its Contributors and other suppliers make no representations about the suitability of the information contained in the Content for any purpose. All Content provided "as is" without warranty of any kind. Mondaq and/or its Contributors and other suppliers hereby exclude and disclaim all representations, warranties or guarantees with regard to the Content, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. To the maximum extent permitted by law, Mondaq expressly excludes all representations, warranties, obligations, and liabilities arising out of or in connection with all Content. In no event shall Mondaq and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use of the Content or performance of Mondaq’s Services.

General

Mondaq may alter or amend these Terms by amending them on the Website. By continuing to Use the Services and/or the Website after such amendment, you will be deemed to have accepted any amendment to these Terms.

These Terms shall be governed by and construed in accordance with the laws of England and Wales and you irrevocably submit to the exclusive jurisdiction of the courts of England and Wales to settle any dispute which may arise out of or in connection with these Terms. If you live outside the United Kingdom, English law shall apply only to the extent that English law shall not deprive you of any legal protection accorded in accordance with the law of the place where you are habitually resident ("Local Law"). In the event English law deprives you of any legal protection which is accorded to you under Local Law, then these terms shall be governed by Local Law and any dispute or claim arising out of or in connection with these Terms shall be subject to the non-exclusive jurisdiction of the courts where you are habitually resident.

You may print and keep a copy of these Terms, which form the entire agreement between you and Mondaq and supersede any other communications or advertising in respect of the Service and/or the Website.

No delay in exercising or non-exercise by you and/or Mondaq of any of its rights under or in connection with these Terms shall operate as a waiver or release of each of your or Mondaq’s right. Rather, any such waiver or release must be specifically granted in writing signed by the party granting it.

If any part of these Terms is held unenforceable, that part shall be enforced to the maximum extent permissible so as to give effect to the intent of the parties, and the Terms shall continue in full force and effect.

Mondaq shall not incur any liability to you on account of any loss or damage resulting from any delay or failure to perform all or any part of these Terms if such delay or failure is caused, in whole or in part, by events, occurrences, or causes beyond the control of Mondaq. Such events, occurrences or causes will include, without limitation, acts of God, strikes, lockouts, server and network failure, riots, acts of war, earthquakes, fire and explosions.

By clicking Register you state you have read and agree to our Terms and Conditions