In Re: Driven Innovations, Inc.

NOTE: This disposition is nonprecedential.
United States Court of Appeals
for the Federal Circuit
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IN RE: DRIVEN INNOVATIONS, INC.,
Appellant
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2016-1094
______________________
Appeal from the United States Patent and Trademark
Office, Trademark Trial and Appeal Board in No.
77/073,701.
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Decided: January 4, 2017
______________________
EDWARD LEE, Law Offices of Edward Y. Lee, Los An-
geles, CA, argued for appellant.
THOMAS L. CASAGRANDE, Office of the Solicitor, United
States Patent and Trademark Office, Alexandria, VA,
argued for appellee Michelle K. Lee. Also represented by
THOMAS W. KRAUSE, CHRISTINA HIEBER, MARY BETH
WALKER.
______________________
Before LOURIE, MAYER, and O’MALLEY, Circuit Judges.
O’MALLEY, Circuit Judge.
Driven Innovations, Inc. (“Driven Innovations”) ap-
peals from a final decision of the Trademark Trial and
2 IN RE: DRIVEN INNOVATIONS, INC.
Appeal Board (“the Board”) refusing to register Driven
Innovations’ proposed mark DOTBLOG in standard
character form on the principal register. In re Driven
Innovations, Inc., 115 U.S.P.Q.2d (BNA) 1261 (T.T.A.B.
2015). In its final decision, the Board found the mark
descriptive of the services for which Driven Innovations
proposed to use the mark, namely, “[p]roviding specific
information as requested by customers via the Internet.”
Id. at 1267–68. Because the Board incorrectly concluded
that the proposed mark is descriptive rather than sugges-
tive, we reverse.
BACKGROUND
On December 29, 2006, Driven Innovations filed a
trademark application to register DOTBLOG in standard
character form. Driven Innovations stated that it intend-
ed to use the mark in commerce related to services that
involve “[p]roviding specific information as requested by
customers via the Internet.” J.A. 25. In August 2007, the
trademark examining attorney issued a notice of publica-
tion for the mark.
After resolving an opposition and receiving a notice of
allowance, Driven Innovations filed a Statement of Use
with an accompanying specimen of use—screenshots of
Driven Innovations’ website at dotblog.net. The specimen
of use provided additional details regarding Driven Inno-
vations’ use of the mark DOTBLOG, including the follow-
ing description:
DotBlog™ is a service in which we use proprietary
search techniques to find relevant and current
blog posts relating to any given search query and
provide you, our customer, with a summary report
of what those posts are saying about your particu-
lar query.
J.A. 181.
IN RE: DRIVEN INNOVATIONS, INC. 3
On October 5, 2012, a new examining attorney re-
viewed the Statement of Use and issued an Office Action
refusing registration under § 2(e)(1) and §§ 1, 2, 3 and 45
of the Lanham Act. In light of Driven Innovations’ stated
intent to use the mark in relation to services that involve
“[p]roviding specific information as requested by custom-
ers via the Internet,” the examining attorney found
DOTBLOG descriptive of such services because “the
applicant is providing specific information to customers
with respect to information and key terms on blogs.” J.A.
204. Driven Innovations argued that the refusal was
procedurally improper because an earlier examining
attorney had approved the mark for publication and the
new examining attorney misapplied the clear error stand-
ard. Driven Innovations also argued that the refusal was
incorrect on the merits because the mark is suggestive.
On April 25, 2013, the examining attorney issued a sec-
ond Office Action maintaining the refusals. Driven Inno-
vations filed a response to the second Office Action
repeating its arguments, and the examining attorney
issued a final Office Action refusing issuance of the mark
in November 2013.
On appeal, the Board affirmed the new examining at-
torney’s refusal on procedural grounds and affirmed in
part the descriptiveness refusal on its merits. In re
Driven Innovations, 115 U.S.P.Q.2d at 1263–68. The
Board found DOTBLOG descriptive because (1) “blog”
refers to an online journal on the internet, and the speci-
men of use showed that 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. Id. The Board concluded that the
examining attorney’s reliance on §§ 1, 2, 3, and 45 to
refuse registration on a failure to function ground was in
4 IN RE: DRIVEN INNOVATIONS, INC.
error, but the Board instead considered these arguments
as further support for refusal under § 2(e)(1). Id. at 1265–
66.
Driven Innovations timely appealed to this court. We
have jurisdiction pursuant to 15 U.S.C. § 1071(a) and 28
U.S.C. § 1295(a)(4)(B).
DISCUSSION
We first note that Driven Innovations no longer pur-
sues its procedural argument challenging the examining
attorney’s application of the clear error standard when
rejecting the earlier-approved mark. Driven Innovations
acknowledged at oral argument that it was relying on this
court as a “safeguard” against any procedural irregulari-
ty, rather than pursuing a formal procedural challenge.
Oral Arg. at 1:05–1:57, available at
http://oralarguments.cafc.uscourts.gov/default.aspx?fl=20
16-1094.mp3. We therefore address only the merits of
Driven Innovations’ challenge that its mark DOTBLOG is
suggestive rather than descriptive of the services provided
by Driven Innovations.
We review the Board’s factual findings for substantial
evidence and review the Board’s legal conclusions de novo.
See, e.g., In re La. Fish Fry Prods., Ltd., 797 F.3d 1332,
1335 (Fed. Cir. 2015). “The Board’s determination that a
mark is merely descriptive is a factual finding that is
reviewed for support by substantial evidence.” In re
TriVita, Inc., 783 F.3d 872, 874 (Fed. Cir. 2015).
The line between descriptive and suggestive marks
can be difficult to determine. Nautilus Grp., Inc. v. ICON
Health & Fitness, Inc., 372 F.3d 1330, 1340 (Fed. Cir.
2004). 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.” In re
Chamber of Commerce, 675 F.3d 1297, 1300 (Fed. Cir.
2012) (quoting In re Bayer Aktiengesellschaft, 488 F.3d
IN RE: DRIVEN INNOVATIONS, INC. 5
960, 964 (Fed. Cir. 2007)). A mark is suggestive if it
“requires imagination, thought and perception to reach a
conclusion as to the nature of the goods.” In re Abcor Dev.
Corp., 588 F.2d 811, 814 (C.C.P.A. 1978). Generally, a
mark is descriptive if it “imparts information directly”; a
mark is suggestive if it “requires some operation of the
imagination to connect it with the goods.” Id. “If the
mental leap between the word and the product’s attribute
is not almost instantaneous, this strongly indicates sug-
gestiveness, not direct descriptiveness.” Nautilus, 372
F.3d at 1340.
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.” Chamber of
Commerce, 675 F.3d at 1300 (quoting Bayer, 488 F.3d at
964). Evidence that a mark is descriptive can come from
“any competent source, such as dictionaries, newspapers,
or surveys.” Bayer, 488 F.3d at 964. And a mark need
only describe a “single feature or attribute” of the goods or
services in order to be descriptive. Chamber of Commerce,
675 F.3d at 1300 (citing In re Dial-A-Mattress Operating
Corp., 240 F.3d 1341, 1346 (Fed. Cir. 2001)). A descrip-
tiveness refusal is therefore proper “if the mark is de-
scriptive of any of the [services] for which registration is
sought.” Id. (alteration in original) (quoting In re Stereo-
taxis Inc., 429 F.3d 1039, 1041 (Fed. Cir. 2005)).
Driven Innovations argues that DOTBLOG is sugges-
tive of its services and that there is insufficient evidence
to support the Board’s refusal to register the mark based
on a descriptiveness finding. The Board’s opinion noted
that freedictionary.org defines “blog” as an online journal
shared with others on the internet. In re Driven Innova-
tions, 115 U.S.P.Q.2d at 1266. The Board explained that
the Statement of Use showed that Driven Innovations
6 IN RE: DRIVEN INNOVATIONS, INC.
used the mark in connection with providing information
that may be derived from or used for blogs. Id. at 1266–
67. The Board then reasoned that, “given the meaning of
the word BLOG, its use in the applied-for mark immedi-
ately describes Applicant’s information services.” Id. at
1267. Turning to the meaning of “dot,” the Board noted
that it represents the standard pronunciation of the
punctuation mark that separates different address levels
in an internet address. Id. The Board found that, “as
used in the mark, [‘dot’] would be perceived as merely
indicating the online nature of Applicant’s services.” Id.
When considering the applied-for mark in its entirety,
the Board found that “each component has retained its
character as merely descriptive or without trademark
significance in relation to the services, and that the
composite term does not present a new meaning that is
not itself merely descriptive.” Id. The Board continued
by reasoning that “[c]onsumers will immediately under-
stand the term DOTBLOG, when used in association with
Applicant’s services of ‘providing specific information as
requested by customers via the Internet,’ as describing a
website that may feature information for blogs, or be
related to blogs, regardless of the domain in which the
blogs reside.” Id. at 1268.
In the alternative, the Board found that consumers
are likely to perceive the mark as “related to information
gleaned from the ‘.blog’ domain” because of ICANN’s
activation of the .blog generic top-level domain. Id. The
Board then found that, when used in association with
Driven Innovations’ services, the mark considered in its
full form would be “merely descriptive because consumers
would perceive the mark as conveying the impression of
‘providing specific information’ from searches of sites on
the ‘.blog’ domain.” Id. Based on these reasons, the
Board refused registration of the mark. Id.
IN RE: DRIVEN INNOVATIONS, INC. 7
The Patent and Trademark Office (“PTO”) defends the
Board’s reasoning and argues that substantial evidence
supports the Board’s finding of descriptiveness. The PTO
argues that the Board, and the examiner before it, made
out a prima facie case of descriptiveness by providing a
“reasonable factual predicate” for the conclusion that the
mark is merely descriptive. According to the PTO, the
Board’s finding is supported by (1) the definitions of “blog”
and “dot,” (2) the forthcoming availability of a “.blog”
generic top-level domain, and (3) Driven Innovations’
Statement of Use showing that its service collects infor-
mation from blogs as requested by customers.
We disagree. Even when considering the mark in the
context of the services rendered, the definitions of “dot”
and “blog” do not provide sufficient support for the
Board’s finding under a substantial evidence standard.
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 Driven
Innovations’ services. See Chamber of Commerce, 675
F.3d at 1300. Instead, it merely suggests the online
nature of Driven Innovations’ services because it “requires
some operation of the imagination” to connect the term
“dot” to the online nature of Driven Innovations’ services.
Abcor Dev. Corp., 588 F.2d at 814. Similarly, the word
“blog” at most establishes some form of relation between
the services rendered and blogs generally, without any
description as to how the services rendered relate to blogs.
The use of “blog” in the mark is not descriptive because it
does not immediately convey knowledge of a feature of the
services. See Chamber of Commerce, 675 F.3d at 1300.
Although it can be helpful for the court to consider the
public’s understanding of individual words in a mark with
compound terms as a first step in the analysis, we must
also consider the mark as a whole. See Princeton Van-
guard, LLC v. Frito-Lay North Am., Inc., 786 F.3d 960,
967 (Fed. Cir. 2015). Considering DOTBLOG as a single
8 IN RE: DRIVEN INNOVATIONS, INC.
mark, the evidence of the definitions and the proposed
existence of “.blog” generic top-level domains merely
shows, at most, that the mark DOTBLOG likely would
have some relation to online blogs. Mere relation, howev-
er, does not mean that a mark is descriptive. In this case,
there is no instantaneous “mental leap between the word
and the [service]’s attribute” of using proprietary search
techniques to find relevant and current blog posts relating
to a given search query from a customer and providing the
customer with a summary report of those posts. Nautilus,
372 F.3d at 1340. The lack of this instantaneous mental
leap “strongly indicates suggestiveness, not direct descrip-
tiveness.” Id.We also disagree with the Board’s reasoning because
it 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. The PTO
confirmed this fact when it explained that “the service is
directed to blogs, and the mark has ‘blog’ in it, so the
connection is direct and instantaneous: this concerns
blogs.” Oral Arg. at 16:15–16:40. Though the PTO backed
away from this broad reasoning when faced with the need
to apply it to other cases, Oral Arg. at 16:40–17:09, it still
urged our reliance on it. We reject the invitation to sweep
so broadly in our reading of “blog” in this mark. Indeed, it
appears that the PTO has not employed this reasoning in
past cases, as demonstrated by the various marks the
PTO has approved that use the word “blog” in relation to
products or services having some relation to blogs. 1 See,
1 As the PTO correctly noted, the court has cau-
tioned against the use of comparisons to other marks
because suggestiveness or descriptiveness in any particu-
lar case will depend largely on a variety of factors, such as
context of use. See, e.g., In re Nett Designs, Inc., 236 F.3d
1339, 1342 (Fed. Cir. 2001). Each case must be decided
IN RE: DRIVEN INNOVATIONS, INC. 9
e.g., J.A. 1632–44 (providing information regarding the
mark WALLETBLOG in standard character format for a
website or blog that would “[p]rovid[e] information, news
and commentary in the field of current events relating to
finance and business”).
CONCLUSION
For the foregoing reasons, we find that substantial ev-
idence does not support the Board’s refusal to register
Driven Innovations’ DOTBLOG mark on grounds that it
is descriptive of the services rendered in connection
therewith. When considering DOTBLOG within the
context of Driven Innovations’ proffered services, we find
the mark merely suggestive of those services. We there-
fore reverse the Board’s order and remand for further
proceedings.
REVERSED AND REMANDED
COSTS
No costs.
on its own merits. Id. We use this comparison only as an
example of the impractical nature of the Board’s broad
reasoning.