Case Name/Info:

IN RE DRIVEN INNOVATIONS: Jan. 4, 2017. Before Lourie, Mayer, and O’Malley. (nonprecedential)

Takeaway:

  • A mark is suggestive if it requires imagination, thought and perception to reach a conclusion as to the nature of the goods.

Procedural Posture:

Applicant appealed Board’s decision refusing to register proposed mark. CAFC reversed.

Synopsis:

  • Descriptive or Suggestive Trademark: The term DOTBLOG when used in association with the service of searching blog posts via the internet merely suggests the online nature of the services because it requires some operation of the imagination to connect the term “dot” with the online nature of Driven Innovation’s services. A term is descriptive if it immediately conveys knowledge of a quality, feature, function, or characteristic of the goods or services with which it is used. A mark is suggestive if it requires imagination, thought and perception to reach a conclusion as to the nature of the goods. The word “dot” does not immediately convey a meaning of the punctuation mark used in an internet address, nor does it immediately describe the online nature of the services. The word “blog” in the mark is not descriptive because it does not immediately convey knowledge of a feature of the services. The CAFC also disagreed with the Board’s reasoning because it would result in the refusal to register any mark that includes the word “blog” whenever the mark’s associated product or services relate in some way to blogs.