In re Phoenix Intangibles Holding Company, Serial No. 85849629 (November 7, 2014) [not precedential]

The Trademark Trial & Appeal Board delivered their opinion affirming an Examining Attorney’s refusal of applicant’s mark CURBSIDE EXPRESS for “retail and on-line grocery store services featuring home delivery” on the grounds that the mark was “merely descriptive.” Under Section 2(e)(1) of the Lanham Act, a mark is “merely descriptive” if it conveys an “immediate idea of an ingredient, quality, characteristic, feature,

function, purpose or use of the goods or services” in the context of the Applicant’s goods and services.

The applicant Phoenix Intangible Holding Company argued that “it would take some imagination to associate … [CURBSIDE] with delivery services….” The Trademark Examiner, however, successfully argued that the phrase “curbside delivery” was a term of art in the delivery industry and that CURBSIDE EXPRESS merely described Phoenix’s goods. The Examiner presented evidence showing descriptions of several companies “curbside” delivery, showing that “curbside is a term of art in the delivery industry meaning delivering goods to a customer’s home, but not bringing them inside the home for the customer.”

The TTAB also agreed with the Examiner that the inclusion of the word EXPRESS to Phoenix’s mark did not make the mark distinctive.  The Examiner provided evidence of third-party registrations where EXPRESS was disclaimer (or else had acquired distinctiveness,) including ENVIO EXPRESS, ALL STATE EXPRESS, and UPS EXPRESS. The Board held that “EXPRESS,” in the world of delivery, simply means that the goods will be delivered quickly.

Having agreed with the Examiner’s argument that both CURBSIDE and EXPRESS were descriptive, the Board analyzed whether the mark, as a whole, merely described the service. The Board held that, when looking at the mark “from the standpoint of the average prospective purchaser,” there was “no doubt” that the mark would immediately indicate that that Applicant’s service provided quick delivery to a customer’s home.

The Board affirmed the Examining Attorney’s refusal.

Conclusions

Other marks denied by the TTAB for being “terms of art” include DYNAMIC RECOGNITION for software designed to recognize data on an as needed basis (i.e., dynamically) in payment processing (Refusal to Register Affirmed); COOKIE DOUGH for food flavorings (Refusal to Register Affirmed); and VISUAL DESIGNER for “computer programs for controlling the acquisition of data from measurement devices for the purposes of analysis, display, testing and automatic control.” However, the TTAB reversed a refusal against the mark SWING COEFFICIENT for “services in the area of fitting golf clubs for individuals” holding that, “even if a numerical measure of computation is made in relation to various aspects of golfing . . . there [was] no evidence that consumers would readily understand a connection between SWING COEFFICIENT and the services of fitting golf clubs for individuals.”

Based on the broad nature of the applicant’s goods and services, the Board decision in this proceeding was sound. However, the term “curbside,” as pointed out by the Board in this case, actually means “delivery to the curb for the customers to pick-up.” Could the Applicant have narrowed its registration to explicitly include “in-home” delivery in order to overcome this refusal? Regardless, EXPRESS would still need to be
disclaimed.

3take

ONE. A “term of art,” or jargon, is not always immediately identifiable as descriptive on its face to those outside of the industry. For example, a person who does not know a lot about computers might not know that a “firewall” is a device used to filter out traffic on a network. Like all 2(e)(1) analyses, a mark must be looked at in the context of the application’s goods and services, not in the abstract.

TWO. Evidence that a term has been disclaimed in other third-party registrations is strong evidence that the term is descriptive of goods and services.

THREE. Always analyze the mark in “as a whole” and through the eyes of the average prospective services of the goods and services.