think tank forum

SECTION 2(e)(1) REFUSAL – MERELY DESCRIPTIVE
Registration is refused because the applied-for mark merely describes the purpose of applicant’s goods and/or services. Trademark Act Section 2(e)(1), 15 U.S.C. §1052(e)(1); see TMEP §§1209.01(b), 1209.03 et seq.

A mark is merely descriptive if it describes an ingredient, quality, characteristic, function, feature, purpose or use of the specified goods and/or services. TMEP §1209.01(b); see In re Steelbuilding.com, 415 F.3d 1293, 1297, 75 USPQ2d 1420, 1421 (Fed. Cir. 2005); In re Gyulay, 820 F.2d 1216, 1217-18, 3 USPQ2d 1009, 1010 (Fed. Cir. 1987). Moreover, a mark that identifies a group of users to whom an applicant directs its goods and/or services is also merely descriptive. TMEP §1209.03(i); see In re Planalytics, Inc., 70 USPQ2d 1453, 1454 (TTAB 2004).

The determination of whether a mark is merely descriptive is considered in relation to the identified goods and/or services, not in the abstract. In re Abcor Dev. Corp., 588 F.2d 811, 814, 200 USPQ 215, 218 (C.C.P.A. 1978); TMEP §1209.01(b); see, e.g., In re Polo Int’l Inc., 51 USPQ2d 1061 (TTAB 1999) (finding DOC in DOC-CONTROL would be understood to refer to the “documents” managed by applicant’s software, not “doctor” as shown in dictionary definition); In re Digital Research Inc., 4 USPQ2d 1242 (TTAB 1987) (finding CONCURRENT PC-DOS merely descriptive of “computer programs recorded on disk” where relevant trade used the denomination “concurrent” as a descriptor of a particular type of operating system). “Whether consumers could guess what the product is from consideration of the mark alone is not the test.” In re Am. Greetings Corp., 226 USPQ 365, 366 (TTAB 1985).

In the instant case, applicant seeks registration of “THINK TANK FORUM” for providing on-line forums for transmission of messages among computer users. The term “think tank” is defined as “a committee of experts that undertakes research or gives advice, especially to a government” and the term “forum” is defined as “place to express yourself: a medium in which the public may debate an issue or express opinions, e.g. a magazine or newspaper.” See the attached from Encarta World English Dictionary, North American Ed., 2004. Please also see the attached Internet evidence showing that a “THINK TANK FORUM” is a place for groups to discuss various topics.

It follows, as evidenced by the specimen of record, that the applicant is providing an online place in which a group of users can discuss a topic or give advice. Therefore, the proposed mark appears to merely describe the purpose of the applicant’s services and registration on the Principal Register must be refused under Trademark Act Section 2(e)(1).

Although the examining attorney has refused registration, the applicant may respond to the refusal by submitting evidence and arguments in support of registration.

The applicant should note the following additional ground for refusal.

Specimen Unacceptable
The mark on the specimen disagrees with the mark on the drawing. In this case, the specimen displays the mark as THINK TANK FORUMS; and the drawing shows the mark as THINK TANK FORUM.

An application based on Trademark Act Section 1(a) must include a specimen showing the applied-for mark in use in commerce for each class of goods and/or services. Trademark Act Sections 1 and 45, 15 U.S.C. §§1051, 1127; 37 C.F.R. §§2.34(a)(1)(iv), 2.56(a); TMEP §§904, 904.07(a). The mark on the drawing must be a substantially exact representation of the mark on the specimen. 37 C.F.R. §2.51(a); TMEP §807.12(a); see 37 C.F.R. §2.72(a)(1). In addition, the drawing of the mark can be amended only if the amendment does not materially alter the mark as originally filed. 37 C.F.R. §2.72(a)(2); see TMEP §§807.12(a), 807.14 et seq.

Therefore, applicant must submit one of the following:

(1) A new drawing of the mark that agrees with the mark on the specimen but does not materially alter the original mark. See 37 C.F.R. §2.72(a)(2); TMEP §§807.12(a), 807.14 et seq. Amending the drawing to agree with the specimen would not be considered a material alteration of the mark in this case.; or

(2) A substitute specimen showing use in commerce of the mark on the drawing, and the
following statement, verified with an affidavit or signed declaration under 37 C.F.R. §2.20: “The
substitute specimen was in use in commerce at least as early as the filing date of the application.” See 37 C.F.R. §§2.59(a), 2.193(e)(1); TMEP §§807.12(a), 904.05. If submitting a
specimen requires an amendment to the dates of use, applicant must also verify the amended dates. 37 C.F.R. §2.71(c); TMEP §904.05.

If applicant cannot satisfy one of the above requirements, applicant may amend the application from a use in commerce basis under Trademark Act Section 1(a) to an intent to use basis under Section 1(b), for which no specimen is required. See TMEP §806.03(c). However, if applicant amends the basis to Section 1(b), registration will not be granted until applicant later amends the application back to use in commerce by filing an acceptable allegation of use with a proper specimen. See 15 U.S.C. §1051(c)-(d); 37 C.F.R. §§2.76, 2.88; TMEP §1103.

To amend to Section 1(b), applicant must submit the following statement, verified with an affidavit or signed declaration under 37 C.F.R. §2.20: “Applicant has had a bona fide intention to use the mark in commerce on or in connection with the goods and/or services listed in the application as of the filing date of the application.” 37 C.F.R. §2.34(a)(2); TMEP §806.01(b); see 15 U.S.C. §1051(b); 37 C.F.R. §§2.35(b)(1), 2.193(e)(1).

Pending receipt of a proper response, registration is refused because the specimen does not show the applied-for mark in use in commerce as a trademark and/or service mark. Trademark Act Sections 1 and 45, 15 U.S.C. §§1051, 1127; 37 C.F.R. §§2.34(a)(1)(iv), 2.56(a); TMEP §§904, 904.07(a).

RESPONSE: MERELY DESCRIPTIVE

The USPTO office response offered two definitions of some relevance, "think tank" defined as "a committee of experts that undertakes research or gives advice, especially to a government" and "forum" defined as a "place to express yourself: a medium in which the public may debate an issue or express opinions, e.g. a magazine or newspaper." Many reasons exist why juxtaposition of these terms as used in the mark "Think Tank Forum" is not merely descriptive.

First, the deconstructed term is contradictory, thus it logically cannot describe anything. The term "think tank" specifies "a committee of experts," however, the term "forum" specifies "a medium in which the public may debate." A committee, by definition, is a chosen group or an entrusted group (please see attached evidence, also from Encarta World English Dictionary, North American Ed., 2004). The public, by definition, includes everyone (ibid.). Thus, a "Think Tank Forum" cannot be used as a descriptive term, as it implies both a chosen group and everyone, which are contradictory.

[[Attached: Encarta pages for "committee" and "public."]]

Second, "think tank" as defined does not describe our services. We do not offer services to a selected group of experts. Rather, we offer means by which the public may communicate on the Internet. Our mark is therefore arbitrary. While the "forum" component of the mark is descriptive of the services rendered, the "think tank" component is arbitrary--it is used contrary to the dictionary definition. Because the mark is largely arbitrary, it may be offered protection.

Third, "think tank," as previously defined, shows that the term refers to a committee of experts who offer advice, especially to a government. Upon being presented with the mark "Think Tank Forum," the typical consumer with no information on our services will also conclude that it is a service rendered to governments. As previously outlined, this is untrue, use of "think tank" for our service establishes an arbitrary name, and the typical consumer cannot accurately determine our services from the mark alone. As a result, we have an arbitrary, distinctive mark.

[[Write more on existing people using the term "Think Tank Forum" as evidenced.]]

RESPONSE: SPECIMEN UNACCEPTABLE

First, "Think Tank Forum" is both confusingly similar and substantially the same as "Think Tank Forums." A single forum may be segmented into numerous forums without any loss in meaning or intent. Therefore, these terms are substantially exact.

Second, as the applicant, I did and do have a bona fide intention to use the mark with the specified service as of the filing date of the application. An electronic message is attached to document this intent.

[[Attach evidence of intent to rename TTF to "Think Tank Forum."]]

RESPONSE: MERELY DESCRIPTIVE

The office response offered the two following definitions of some relevance: "think tank" defined as "a committee of experts that undertakes research or gives advice, especially to a government," and "forum" defined as a "place to express yourself: a medium in which the public may debate an issue or express opinions, e.g. a magazine or newspaper." Many reasons exist why the juxtaposition of these terms as used in the mark "Think Tank Forum" is not merely descriptive.

First, the deconstructed term is contradictory, thus it logically cannot describe anything. The term "think tank" specifies "a committee of experts." However, the term "forum" specifies "a medium in which the public may debate." A committee, by definition, is a chosen group or an entrusted group (please see attached evidence, also from Encarta World English Dictionary, North American Ed., 2004). The public, by definition, includes everyone (please see attached evidence, ibid.). Thus, "Think Tank Forum" cannot be used as a descriptive term, as it implies both a chosen group and everyone, which are contradictory.

Second, "think tank" as defined does not describe our services. We do not offer services to a selected group of experts, nor do we offer services as a selected group of experts. Rather, we offer means by which the public may communicate on the Internet. Anyone may use our website for communication. Individuals may use our website to communicate anything. They need not be experts. They need not engage in research. They need not give advice. Our mark is therefore arbitrary. While the "forum" component of the mark is descriptive of the services rendered, the "think tank" component is arbitrary--it is used contrary to the dictionary definition. Because the mark is largely arbitrary, it may be offered protection.

Third, let us consider if consumers may correctly guess the services rendered from the mark alone. "Think tank," as previously defined, refers to a committee of experts who offer advice, especially to a government. Upon being presented with the mark "Think Tank Forum," the typical consumer with no information on our services will also conclude that we offer research and advice as a committee of experts, largely to governments. As previously outlined, this is untrue; use of "think tank" for our service establishes an arbitrary name, and the typical consumer cannot accurately determine our services from the mark alone. As a result of these three arguments, we have an arbitrary, distinctive mark.

As evidenced by the office action, the phrase "think tank forum" can be found on the Internet. However, in none of the examples evidenced does the phrase illustrate "a place for groups to discuss various topics." Further, these instances of this phrase certainly do not constitute "on-line forums for transmission of messages among computer users."

In the case of the "Atheist Think Tank Forum," the group is called the Atheist Think Tank, and this group is inviting the public to participate in their forum. Accordingly, the website says that the visitor is welcome to read and discuss "at the Atheist Think Tank forum." This web page is referencing the Atheist Think Tank’s forum. The group is called the Atheist Think Tank, and the medium is the forum. In this case, "think tank forum" has no meaning or relevance. Dissecting the sentence structure in this manner does not produce anything meaningful.

The same logic applies to what is evidenced as the "Detroit Film Think Tank Forum." The group is the Detroit Film Think Tank, and this particular think tank organization is holding a forum for public feedback. In this case, dissecting out the phrase "think tank forum" conveys no meaning. The headline is simply referring to a forum held by the Detroit Film Think Tank. Reading the entirety of the article makes this apparent.

The next piece of evidence supplied by the office refers to the Center for Black Business History, Entrepreneurship and Technology. In this example, their "think tank forum" indeed relates to a group of experts providing research and advice to influence public policy. The evidenced page states that the "think tank forum" will include humanists, social scientists, and businesspeople, in addition to lawyers, commentators, and public policy analysts. Thus, the group is indeed referring to a group of experts. The page states that the group will "consider the future implications of research addressed." This demonstrates that the group is engaging in research. Further, in latter description on the web page, they refer to only a "think tank," not suffixed with "forum." The phrase "think tank forum" in this case only refers to a think tank's forum. Clearly this is simply an example of a typical think tank, as defined previously. This think tank is holding a discussion of research. The phrase "think tank forum" in this use is completely unrelated to the applicant’s services.

Finally, the last evidenced use also illustrates a common example of a think tank. In this case, the group is called Notre Europe, and this group is holding a public forum (i.e., a meeting of interested individuals) to discuss public policy issues. Notre Europe is a think tank itself. Accordingly, they are calling this event a "think tank forum." Once again, the phrase “think tank forum” in this use is completely unrelated to the applicant's services.

In conclusion, this evidence is comprised entirely of think tanks (adherent to the dictionary definition) or groups which use "think tank" as part of their name. These groups hold forums. The phrase "think tank forum" itself does not convey any particular meaning.

RESPONSE: SPECIMEN UNACCEPTABLE

First, "Think Tank Forum" is both confusingly similar and substantially the same as "Think Tank Forums." A single forum may be segmented into numerous forums without any loss in meaning or intent. Therefore, these terms are substantially exact.

Second, I had a bona fide intention to use the mark with the specified service as of the filing date of the application. To simplify this response, I am going to change the basis of this filing to an intent-to-use basis.

DESCRIPTION OF EVIDENCE

Definitions of "committee" and "public" from Encarta World English Dictionary, North American Ed., 2004.

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... I took your Business Law course a few years ago. I'm now an adjunct instructor in Economics here at MSU.

I have a question for you, if you don't mind. I filed with the USPTO to register a service mark. They offered some definitions from Encarta and their argument for refusal of registration depended on those definitions. I showed that the mark is eligible for registration based on those Encarta definitions. So then they cited different definitions from Webster, argued for refusal based on those different definitions, and this was the final action.

Is a change of definitions allowed in a legal proceeding? I'm only allowed one rebuttal during the mark registration process, so a definition change seems extremely unfair.

I appreciate your time and any advice you can give...

HI, Lucas!! Yikes! I am not much of a trademark expert. For instance, what is the difference between a trademark and a service mark?---I am not sure that one can describe the registry process as a legal proceeding, but certainly changing definitions seems unfair, wherever it occurs, but particularly if you only have one chance to object. On the other hand, a court is likely to get to the merits---which set of definitions make the most sense. There must be a remedy, although it may be a court remedy, which would get expensive. I do not know any trademark, copyright type lawyers. You could call the State Bar of Montana, 406-442-7660 (I think) and ask for a referral, then try to see if there is something to do, by calling the lawyer---before you incur a consultation fee. Otherwise, I don’t have any great ideas.

In my response, I accepted definitions used by the USPTO (herein "The Office"), and I proved that the mark under consideration is not merely descriptive based on those definitions provided by The Office.

In the final action of The Office, The Office presented new definitions and used these new definitions in arguments. This is extremely unfair, because I do not have an opportunity to refute your arguments based on those new definitions. No new evidence or definitions should be presented in a final rebuttal, because they gain unfair advantage.

Please reconsider the office action using the definitions initially suggested by The Office, which were also accepted and used by the applicant.

Thank you for your consideration.