It’s not uncommon for internet-based services to utilize names referencing their online presence, much like it is not uncommon for the monikers of app-based services to refer to their mobile format. But at what point does a suggestive term become merely descriptive to the point that it can be denied trademark registration? The United States Court of Appeals for the Federal Circuit weighed in on that question in a January 4 opinion that overturned the U.S. Patent and Trademark Office’s refusal to register the mark “Dotblog.” According to the Federal Circuit, the earlier refusal was in error because it “incorrectly concluded that the proposed mark is descriptive rather than suggestive,” and offered insight into how courts might determine the category into which a proposed mark should be placed.

At issue in the appeal was Driven Innovations’ application to register “Dotblog” as a trademark. The company described the mark as referring to “a service…us[ing] proprietary search techniques to find relevant and current blog posts relating to any given search query and provide….a summary report of what those posts are saying about” that query.  The USPTO refused registration, finding it merely descriptive, and confirmed the decision on appeal, concluding that (in the words of the Federal Circuit):

(1) “blog” refers to an online journal on the internet, and …Driven Innovations used the mark in connection with providing information that may be derived from or for blogs; (2) “dot” represents the pronunciation of the punctuation mark that separates different address levels in an internet address; and (3) the mark in its entirety retains the same meaning as its component parts.

However, the Federal Circuit disagreed and found that while the “Dotblog” mark was suggestive, it was not impermissibly descriptive. Accordingly, the court reversed the refusal following its de novo review.

Acknowledging that the “line between descriptive and suggestive marks can be difficult to determine,” the court succinctly stated that a descriptive mark is one that “imparts information directly,” while a suggestive mark is one that “requires some operation of the imagination to connect it with the goods.” The court further held that descriptiveness is not analyzed in the abstract and must be evaluated “in relation to the particular goods for which registration is sought, the context in which it is being used, and the possible significance that the term would have to the average purchaser of the goods because of the manner of its use or intended use.” Further, the court indicated that the mark must be considered as a whole rather than in light of its separate components. Analyzing the “Dotblog” mark through the lens of these considerations, the Federal Circuit found it suggestive, not descriptive. Key to the consideration was the lack of an “instantaneous” mental link between the “Dotblog” mark as a whole and the services identified in the application, namely: “[p]roviding specific information as requested by customers via the Internet.” Further, the Federal Circuit observed that “dot” alone did not immediately convey or describe an online service, and “blog” simply indicates a relation between the service and blogs, but doesn’t describe “how the services rendered relate to blogs.” Finally, the Federal Circuit rejected the implicit reasoning of the USPTO, which “logically results 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.”

This decision is instructive with respect to seeking trademark registration of marks including internet- or technology-related terms, such as “dot” or “blog” within the mark, which may be seen as suggestive of, descriptive of, or related to the internet or technology services offered under those marks. Additionally, the contours of the suggestive-descriptive border at play in this case may come into increased focus as services provided online or via mobile apps and subsequent efforts to trademark their names continue to proliferate.