The USPTO refused registration of the mark BAJATUSEGURO.COM, in standard character form, for "insurance brokerage and reinsurance underwriting services offered via a global computer network," deeming the mark merely descriptive under Section 2(e)(1). The examining attorney also required a disclaimer of that term in the word + design mark shown below. The Board, however, found that BAJATUSEGURO.COM is a double entendre, one of the meanings being not descriptive but incongruous, and so it reversed the refusal. In re Salvador Cababie, Serial Nos. 86265910 and 86265949 (April 14, 2016) [not precedential].
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There was no dispute that the words of the marks are in Spanish, or that the ordinary American purchaser would "stop and translate" the foreign term into its English equivalent. The crux of the dispute was the meaning of BAJATUSEGURO to Spanish speakers.
The examining attorney submitted a Translation Statement prepared by the USPTO: "The English translation of the non-English wording in the mark is 'lower your insurance.'" He also submitted several online translations of "baja tu seguro" as "lower your insurance."
Applicant argued that the phrase "baja tu seguro," when combined with the top level domain ".com," takes on the meaning of "download your insurance." He submitted a declaration from his Mexican attorney to support that assertion. One exhibit to her declaration was a definition from a dictionary of Internet terms, stating that "bajar" means to download something from the Internet. A Google search revealed a definition that corroborated that meaning, and another exhibit translated "bajar musica" as "download music."
There was no dispute that "lower your insurance" is descriptive of applicant's services. The Board accepted the USPTO translation of BAJA TU SEGURO as "lower your insurance," and observed that the mark BAJATUSEGURO.COM would have that meaning to many consumers.
On the other hand, the translation submitted by applicant was sufficient for the Board to find that, "at least to an appreciable number of consumers, the mark would have the meaning of "download your insurance."
Therefore, the question was whether BAJATUSEGURO.COM is a double entendre, with one meaning being descriptive and the other not. "Double entendres, of course, are registrable because they are notmerely descriptive."
During examination of the subject applications, the examining attorney did not submit evidence regarding the descriptiveness of "download your insurance," and in fact asserted that the phrase would be an "incongruous interpretation that the average consumer simply will not reach." The Board then concluded:
[B]ecause we have found that the declaration of Ms. Vianey Romo de Vivar shows that one meaning that BAJATUSEGURO.COM would have to consumers is DOWNLOAD YOUR INSURANCE, and because the Office has not shown that this meaning is merely descriptive, this incongruous second meaning qualifies BAJATUSEGURO.COM as a double entendre, such that it is not merely descriptive of the identified services
The Board therefore reversed the Section 2(e)(1) refusal and the disclaimer requirement.
TTABlog comment: The Board noted that a different result might ensue in an inter partes proceeding that included evidence of the descriptiveness of "download your insurance."