The USPTO refused to register the logo mark shown below, for "installation and maintenance of residential and commercial irrigation systems; and lighting installation services" on the ground that Applicant failed to comply with the Examining Attorney's requirement for disclaimer of the word RAINSCAPES. Applicant argued that rainscapes (which preserve and recycle rain water) are used "in lieu of," or are "the complete opposite of" irrigation systems. The Board rendered a split decision. How do you think this came out? In re Rainscapes Construction, Inc., Serial No. 86906294 (January 27, 2017) [not precedential].

Examining Attorney John D. Dalier relied on dictionary definitions of "irrigation" ("the distribution of water over the surface of the ground, in order to promote the growth and productiveness of plants"), and Internet evidence ("[r]ainscapes are landscape enhancements that reduce stormwater runoff from properties ... Rainscapes simulate natural drainage to intercept, capture and absorb rain into the ground") in finding "rainscapes" descriptive of applicant's services.

Applicant's specimen of use revealed "not only that Applicant provides irrigation services, but also that it is committed to water conservation in performing those services." The Board noted that water conservation is a goal of both rainscapes and irrigation

The panel majority had no doubt that "rainscapes" is merely descriptive of applicant's irrigation services, because "rainscapes supply land with water, which is one definition of 'irrigation,' and can support plants’ need for water, which is another."

They majority concluded that "RAINSCAPES immediately conveys knowledge of a quality, feature, function, characteristic or purpose of Applicant’s irrigation services. Customers will understand that Applicant uses “rainscapes” in at least some of its irrigation systems.

Finally, the majority observed, "applicant’s competitors which use rainscapes to irrigate, or in conjunction with irrigation products and services, should, like Applicant, have the opportunity to use the term “rainscapes” or variations thereof to describe their goods and services."

And so the panel majority affirmed the disclaimer requirement.

In dissent, Judge Bergsman contended that the evidence did not show that “Rainscapes” is merely descriptive when used in connection with applicant's recited services. "[N]one of the websites discussing 'Rainscapes' make reference to installing irrigation systems."

Irrigation and rainscaping are distinct but related processes. As noted by the majority, the term “Rainscape” refers to a landscaping technique intended to preserve and recycle rainwater. It is designed to be used in lieu of irrigation whereas irrigation is the application of water to landscape. According to Wikipedia, “[i]rrigation is often studied together with drainage, which is the natural or artificial removal of surface and sub-surface water from a given area.

Therefore, RAINSCAPES need not be disclaimed.