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.