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 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
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).
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.
Finnegan partner Jennifer Roscetti will participate in the panel discussion “What You Must Incorporate in Your Patent Claims” at the ninth annual Pharma & Biotech Patent Litigation Conference, hosted by C5 Group.
In Wasica Finance GmbH v. Continental Automotive Systems, Inc., No. 15-2078 (Fed. Cir. 2017), the patentee Wasica Finance discovered, among other things, the importance of using consistent terminology in the patent specification and claims.
While under attack for several years now, the patent infringement defense of laches was dealt a serious, and likely final, blow by the recent Supreme Court case of SCA Hygiene Products AB et al. v. First Quality Baby Products LLC et al.
Mintz, Levin, Cohn, Ferris, Glovsky and Popeo, P.C.
On April 6, 2017, the Federal Circuit reversed-in-part and affirmed-in-part the district court's judgment of infringement and summary judgment for non-infringement of The Medicines Company's ("MedCo") patents-in-suit.
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).