Welch

Trademark Trial and Appeal Board

Aug 20, 2007

No. 78669946 (T.T.A.B. Aug. 20, 2007)

Mailed:
August 20, 2007
jtw

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Welch
________

Serial No. 78669946
_______

John L. Welch Pro Se.

Dannean Hetzel, Trademark Examining Attorney, Law Office
106 (Mary I. Sparrow, Managing Attorney).
_______

Before Seeherman, Kuhlke and Walsh, Administrative
Trademark Judges.

Opinion by Walsh, Administrative Trademark Judge:

On July 13, 2005, John L. Welch (Applicant) applied to
register the mark THE TTABLOG in standard-character form on
the Principal Register for services identified as,
“an online blog featuring commentary and information in the
field of trademarks; an online blog featuring commentary
and information regarding decisions of the Trademark Trial
and Appeal (sic) and the courts relating to trademark law.”
Applicant claims first use anywhere and first use of the
mark in commerce on November 9, 2004.
THIS OPINION
IS NOT A PRECEDENT OF
THE T.T.A.B.
Ser No. 78669946
2
The Examining Attorney refused registration under
Trademark Act Section 2(e)(1), 15 U.S.C. § 1052(e)(1), on
the ground that the mark merely describes the identified
services. Applicant argued against the refusal, and the
Examining Attorney made the refusal final. In a request
for reconsideration Applicant argued against the refusal
again, and in the alternative, presented a claim of
acquired distinctiveness under Section 2(f) of the
Trademark Act, 15 U.S.C. § 1052(f). The Examining Attorney
accepted the claim of acquired distinctiveness. Applicant
appealed.
In this appeal Applicant asks us to reverse the
Examining Attorney’s refusal under Section 2(e)(1) so that
the mark may be registered without the claim of acquired
distinctiveness. If we affirm the refusal, Applicant
states that the application may proceed under his
alternative position, that is, seeking registration under
the provisions of Section 2(f). Therefore, one way or the
other, the application will proceed to publication. The
Board permits applicants to assert alternative positions in
this manner. See Trademark Trial and Appeal Board Manual
of Procedure (TBMP) § 1215 (2d ed. 2004).
The Examining Attorney and Applicant have filed
briefs. We affirm the refusal that the mark is not
Ser No. 78669946
3
inherently distinctive. Therefore, the application will
proceed to publication with the claim of acquired
distinctiveness under Section 2(f).
Applicant admits that his mark, THE TTABLOG, is a
“telescoped” combination of two terms, TTAB and BLOG, each
of which applicant concedes to be merely descriptive.
Applicant argues, “Applicant submits that the unusual
spelling of the word TTABlog and the uncertainty regarding
its proper pronunciation, would cause a consumer to
exercise some imagination, thought, or preception before
reaching any conclusion as to Applicant’s services.”
Applicant’s Brief at 6. Later Applicant adds, “With regard
to the subject mark TTABLOG, the consumer recognizes the
unique, tongue-twisting fusion of the words TTAB and blog.
Even though the consumer in all these instances comprehends
the meaning of the terms as applied to the goods and
services in question, he or she also recognizes that the
mark has a unique and memorable aspect that gives the term
its source-identifying power.” Id. at 8.
On the other hand, the Examining Attorney argues:
The registrability of a mark created by combining only
descriptive words depends on whether a new and
different commercial impression is created or the mark
so created imparts an incongruous meaning as used in
connection with the goods or services. In re Tower
Tech, Inc., 64 USPQ2d 1314 (TTAB 2002). However, the
mere combination of descriptive words to form a
Ser No. 78669946
4
telescoped mark does not automatically create a new
non-descriptive word or phrase. E.g., In re Wells
Fargo & Co., 231 USPQ 95 (TTAB 1986) (EXPRESSERVICE
merely descriptive of banking and trust services); In
re BankAmerica Corp., 229 USPQ 852 (TTAB 1986)
(PERSONALINE is merely descriptive of consumer loan
services in which a personal line of credit is
provided); In re U.S. Steel Corp., 225 USPQ 750 (TTAB
1985) (SUPEROPE merely descriptive of wire rope); In
re Gagliardi Bros., Inc., 218 USPQ 181 (TTAB 1983)
(BEEFLAKES is merely descriptive of thinly sliced
beef).

Examining Attorney’s Brief at 3-4.
The Examining Attorney states further, “No thought
process is required to conclude the subject matter (TTAB)
and nature (blog) of applicant’s services. The combination
of these descriptive words creates no incongruity and no
imagination is required to understand the nature of the
services. Therefore, the mark is merely descriptive under
Section 2(e)(1).” Id. at 4.
Before proceeding further we note that we find little,
if anything, to disagree with in the well presented
arguments of the Examining Attorney. We certainly concur
in her ultimate conclusion, that is, that THE TTABLOG is
nothing more than the sum of its merely descriptive parts
and that it is merely descriptive.
Though there is no disagreement between Applicant and
the Examining Attorney on the point, for the record we
concur in the conclusion that both “TTAB” and “Blog” are
Ser No. 78669946
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merely descriptive terms. The Examining Attorney
identifies the evidence of record to support these
conclusions. See Examining Attorney’s Brief at 4, citing
evidence in February 6, 2006 Office Action. We also concur
in the Examining Attorney’s point, also not in dispute,
that marks which identify the subject matter of blogs are
merely descriptive, as in the case of printed publications.
See, e.g., In re Medical Digest, Inc., 148 USPQ 570 (TTAB
1965) (OB/GYN DIGEST held merely descriptive of magazine).
We note that whether a particular term is merely
descriptive is determined in relation to the services for
which registration is sought and the context in which the
mark is used, not in the abstract. In re Abcor Development
Corp., 588 F.2d 811, 200 USPQ 215, 218 (CCPA 1978); In re
Remacle, 66 USPQ2d 1222, 1224 (TTAB 2002).
Applicant relies on a number of “double-entendre”
cases, for example, In re Colonial Stores Inc., 394 F.2d
549, 157 USPQ 382 (CCPA 1968) (SUGAR & SPICE held not
merely descriptive for bakery goods) and In re National Tea
Co., 186 USPQ 63 (TTAB 1965) (NO BONES ABOUT IT held not
merely descriptive of fresh precooked ham). However,
although Applicant chastises the Examining Attorney for
taking a narrow view of these cases, Applicant admits that
the THE TTABLOG mark possesses no double meaning such as
Ser No. 78669946
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those evident in the cited double-entendre cases. It is
simply Applicant’s argument that his mark possesses an
analogous distinctive characteristic to that in the double-
entendre cases, namely, its “tongue-twisting”
pronunciation.
We reject the proposition that the simple fact that
some individuals allegedly experience uncertainty in
determining how to pronounce Applicant’s mark ipso facto
renders it inherently distinctive. Uncertainty in
pronunciation in no way implies that anyone experiencing
such uncertainty would not percieve the merely descriptive
meaning of the mark. Nor does it imply that those
individuals perceive some nondescriptive commercial
impression.
More importantly, the double-entendre and telescoped-
mark cases are but variations in the field of marks where
terms, here merely descriptive terms, are combined. We
must maintain our focus on the fundamental test: “Whether
a term which is created by combining two or more
unregistrable words may achieve registration depends on
whether, in combination, a new and different commercial
impression is achieved and/or the term so created imparts a
bizarre or incongruous meaning as used in connection with
the goods or services.” In re Associated Theatre Clubs
Ser No. 78669946
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Co., 9 USPQ2d 1660, 1662 (TTAB 1988). See also In re Sun
Microsystems Inc., 59 USPQ2d 1084 (TTAB 2001). In this
case we conclude that relevant consumers will readily
perceive the merely descriptive significance of Applicant’s
mark, THE TTABLOG, that is, a blog concerned with TTAB
matters, and nothing more.
Even if we were to accept Applicant’s argument that
the alleged uncertainty regarding pronunciation here could
suffice to establish that his mark is not merely
descriptive, we find that the record does not support
Applicant’s position.
In his request for reconsideration Applicant provides
evidence that there have been 270,000 visits to his blog.
Request for Reconsideration at 4. Applicant indicates that
27 individuals responded to the inquiry he posted on the
blog asking, “… whether the subject mark has acquired
distinctiveness for Applicant’s services.” Id. In his
reply brief Applicant cites two examples from these 27
responses where individuals comment on the pronunciation
issue:
I find pronouncing TTABlog nearly impossible -- I
stumble over it every time. Christopher Turk; and

I am never quite sure how to pronounce the mark
either. Ryan W. Corrigan.

Ser No. 78669946
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Reply Brief at 3, citing evidence attached to Request for
Reconsideration.
The more typical responsive messages make no mention
of pronunciation, for example:
I recognize “THE TTABLOG” as a specific source of
information and discussion about TTAB practice and
decisions and other trademark-related matters. Assoc.
Professor Rebecca Tushnet, Georgetown University Law
Center;

In my view, your mark is certainly distinctive as a
source indicator for blogging services featuring
information and analysis related to trademarks.
Dennis Griggs, attorney, Griggs Bergen LLP; and

The well known and/or famous TRADEMARK TTABLOG in my
opinion functions as a single source indicator for the
service[s] recited in the application. Leo Stoller,
rentamark.com.

Applicant’s Request for Reconsideration at 4-5, citing
attached evidence. It is evident in many of the messages
Applicant provided that those responding to his request
regarded his mark as merely descriptive, not inherently
distinctive. Applicant’s Request for Reconsideration, Exh.
3. Even Mr. Corrigan, who expressed uncertainty regarding
the pronunciation of the mark, stated that the mark had
acquired distinctiveness, not that it was inherently
distinctive. Id.
As further evidence in support of his position
Applicant also points out that at one time the Duke Law and
Technology Review’s web site referenced his blog as “TTA
Ser No. 78669946
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Blog” in a listing of intellectual-property-related blogs.
Id. The reason for and significance of this usage is
unclear. Thus, the evidence of pronunciation uncertainty
is meager.
On the other hand the Examining Attorney made of
record evidence from several web sites showing references
to Applicant’s blog as the “TTAB Blog” or “John Welch’s
TTAB Blog.” See Examining Attorney’s Brief at 5 citing,
examples attached to the Examining Attorney’s June 13, 2006
Office Action. There are more examples of this usage in
the 27 messages Applicant provided with his request for
reconsideration. See, e.g., the messages from Mr.
Heilbronner (TTABBLOG), Mr. Tambourino (TTABBLOG), and Mr.
Tolpin (TTABBLOG). This evidence tends to show that
relevant consumers perceive the telescoped or misspelled
version of TTAB BLOG (THE TTABLOG) as TTAB BLOG – a merely
descriptive term.
On balance, even if we were to adopt Applicant’s novel
theory that uncertainty regarding pronunciation so alters
the commercial impression of the mark as to render it
inherently distinctive, on this record, we find no factual
support for the position.
We likewise reject Applicant’s argument that his mark
differs from the marks in the cited telescoped-mark cases –
Ser No. 78669946
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EXPRESSERVICE, PERSONALINE, SUPEROPE and BEEFLAKES.
Applicant argues that in the marks in the cited cases the
pronunciation of the mark is unaltered relative to the two
word version, but that in the case of his mark, THE
TTABLOG, the pronunciation of the mark differs from the
pronunciation of TTAB BLOG as two words. Applicant posits
that, because TTAB is an initialism, the “B” in TTAB must
be pronounced with a hard sound, while the “B” in blog is a
soft sound and would be pronounced as such. We see no
meaningful distinction here. Some form of the same
strained argument could be made as to any of the marks in
the cited cases. For example, one might argue that the
BEEFLAKES mark would be seen and pronounced as BEE FLAKES
because one “F” is missing. In the case of the marks in
the cited cases and Applicant’s mark the only reasonable
view is that relevant customers will simply fill in the
missing letter in their pronunciation without thinking. We
find Applicant’s arguments to the contrary unpersuasive.
We have also considered Applicant’s arguments based on
cases, such as, Sperry Rand Corp. v. Sunbeam Corp., 442
F.2d 979, 170 USPQ 37 (CCPA 1971) and find them
unpersuasive.
Accordingly, we conclude that THE TTABLOG is merely
descriptive of “an online blog featuring commentary and
Ser No. 78669946
11
information in the field of trademarks; an online blog
featuring commentary and information regarding decisions of
the Trademark Trial and Appeal (sic) and the courts
relating to trademark law.”
Decision: The refusal to register under Trademark Act
Section 2(e)(1) is affirmed. The mark will proceed to
publication with the claim of acquired distinctiveness
under Trademark Act Section 2(f).