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Trademark Applicants Not Entitled to Challenge a "Clear Error" Refusal: TTAB
Practical Law Legal Update 4-617-2451 (Approx. 3 pages)
Trademark Applicants Not Entitled to Challenge a "Clear Error" Refusal: TTAB
by Practical Law Intellectual Property & Technology
| Published on 14 Jul 2015 • USA (National/Federal) |
In In re Driven Innovations, Inc., the Trademark Trial and Appeal Board (TTAB) affirmed the examining attorney's refusal to register the applicant's mark after approving the mark for publication and issuing a notice of allowance. The TTAB reasoned that when an examining attorney finds an applied-for mark merely descriptive and determines that he erred in approving the mark in the initial examination, the applicant may not challenge that determination without appealing the merits of the refusal.
On June 30, 2015, the Trademark Trial and Appeal Board (TTAB or Board) issued a precedential opinion in In re Driven Innovations, Inc., holding that a trademark applicant may not challenge an examining attorney's determination, during an examination of the applicant's statement of use, of the attorney's own clear error in issuing a notice of allowance of registration based on the initial examination of the application (Serial No. 77073701 (T.T.A.B. June 30, 2015)). Instead, the TTAB held that an applicant must challenge the merits of the later refusal by appealing to the TTAB.
At issue in this case was a trademark registration application for DOTBLOG submitted by Driven Innovations, Inc. (DI) for providing information via the Internet. The examining attorney had initially approved registration of the desired mark and issued a notice of allowance. However, when DI filed its statement of use, the examining attorney refused registration on the grounds that:
- Under Section 2(e)(1) of the Lanham Act, the applied-for DOTBLOG mark merely described the subject matter of DI's services (15 U.S.C. § 1052(e)(1)).
- Under Sections 1, 2, 3 and 45 of the Lanham Act, the sought-after term failed to function as a service mark identifying and distinguishing or indicating the source of DI's services (15 U.S.C. §§ 1051- 53, 1127).
After the refusal was made final, DI appealed and filed a request for reconsideration. The examining attorney denied the request for reconsideration, and the appeal ensued. In the appeal, DI requested that the Board review the refusal and determine whether the failure to issue the refusal during initial examination was clear error.
Focusing first on the procedural aspect of DI's appeal, the TTAB sought to clarify the application of the "clear error" standard during prosecution. The TTAB noted that:
- Section 1109.08 of the Trademark Manual of Examining Procedure (TMEP) provides that examination of the statement of use is generally limited to issues related to the statement of use.
- However, a refusal unrelated to the statement of use may be still be made during examination of the statement of use if either:
- the failure to issue the refusal at an earlier stage was clear error; or
- evidence supporting a new refusal has become newly available.
Therefore, if the examining attorney determines it was clear error to approve an application during its initial examination, rather than issuing a registration in violation of the Trademark Act or applicable rules, the attorney must issue any refusals or requirements needed to avoid this result even if they could or should have been raised during the initial examination (see TMEP § 706.01).
DI disputed that the examining attorney's failure to refuse registration at the initial examination was clear error, arguing:
- A descriptiveness refusal is not issued until examination of the statement of use.
- When a descriptiveness refusal is not issued until examination of the statement of use, the evidence of mere descriptiveness must be substantial and unequivocal.
- Clear error does not exist when reasonable minds could differ as to the propriety of the refusal.
The TTAB rejected this argument, reasoning that:
- The current version of the TMEP (January 2015) explicitly states that deciding whether to issue a refusal is within the discretion of the USPTO.
- The standard of clear error is solely an internal guideline and, as such, is not subject to an applicant's request for review.
- The TMEP no longer requires that a ruling of clear error in issuing a notice of allowance be supported by a finding either that:
- there is substantial and unequivocal evidence of descriptiveness; or
- reasonable minds could not differ as to the propriety of refusal.
Citing this reasoning, the TTAB:
- Held that DI, as applicant, may not challenge, either by petition to the Director or on appeal to the Board, the examining attorney's determination of clear error.
- Ruled, however, that an applicant may appeal to the TTAB an examining attorney's refusal of registration made during an examination of the applicant's statement of use based on a challenge to the substantive merits of the refusal.
- Overruled two earlier TTAB decisions that, in keeping with the TMEP as then constituted, suggested that an applicant could petition the Director for discretionary review of a clear error determination, because the current TMEP and trademark office practice does not allow such petitions.
- Affirmed, on the merits, the examining attorney's refusal to register DI's applied-for mark under Section 2(e)(1), finding that when the composite term is considered as a whole, the meaning is merely descriptive.