N OTE : This disposition is nonprecedential. 

# United States **Court of Appeals**  **for the Federal Circuit**

______________________ 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

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E DWARD L EE , Law Offices of Edward Y. Lee, Los A ngeles, CA, argued for appellant.

T HOMAS L. C ASAGRANDE , Office of the Solicitor, United States Patent and Trademark Office, Alexandria, VA, argued for appellee Michelle K. Lee. Also represented by T HOMAS W. K RAUSE , C HRI STINA H IEBER , M ARY B ETH W ALKER

.

______________________

Before L OURIE , M AYER , and O’M ALLEY , Circuit Judges.

O’M ALLEY , Circuit Judge

. Driven Innovations, Inc. (“Driven Innovations ”) a ppeals from a final decision of the Trademark Trial andIN RE : DRIVEN INNOVATIONS , INC

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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 fo und 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 sugge stive, we reverse

. B ACKGROUND On December 29, 2006, Driven Innovations filed a trademark application to register DOTBLOG in standard character form

. Driven Innovations stated that it inten ded to use the mark in comm erce 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 public ation 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 regard ing Driven Inn ovations’ use of the mark DOTBLOG, including the follo wing description:
DotBlogTM 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 custom er, with a summary report of what those posts are saying about your partic ular query.

J.A. 181.IN RE : DRIVEN INNOVATIONS , INC

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On October 5, 2012, a new examining attorney r eviewed the Statement of Use and issued an Office Action refusing registration under § 2(e)(1) and §§ 1, 2, 3 and 4 5 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 custo mers via the Internet,” the examining attorney found DOTBLOG descriptive of suc h 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 stan dard. Driven Innovations also argued that the refusal was incorrect on the merits because the mark is suggestive. On April 25, 2013, the examining attorney i ssued a se cond Office Action maintaining the refusals. Driven Inn ovations 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 appe al, the Board affirmed the new examining a ttorney’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 126 3– 68. The Board found DOTBLOG descriptive because (1) “blog” refers to an online journal on the internet, and the spec imen 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 inIN RE : DRIVEN INNOVATIONS , INC

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error, but t he 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 hav e jurisdiction pursuant to 15 U.S.C. § 1071(a) and 28 U.S.C. § 1295(a)(4)(B).

D ISCUSSION

We first n ote that Driven Innovations no longer pu rsues its procedural argument challenging the examining attorney’s application of the clear error standard when rejec ting the earlier- approved mark

. Driven Innovations acknowledged at oral argument that it was relying on this court as a “safeguard” against any procedural irregular ity
, rather than pursu ing 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 L a. Fish Fry Prod s. , Ltd. , 797 F.3d 1332, 1335 (Fed. Cir. 2015). “The Board’s determination that a mark is merely descripti ve 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. I CON Health & F itness, 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.3dIN RE : DRIVEN INNOVATIONS , INC

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960, 96 4 (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 su ggestiveness, 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 fo r 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 (q uoting 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 descri ptiveness refusal is therefore proper “if the mark is d escriptive of any of the [services] for which registration is sought.” Id. (alteration in original) (quoting In re Stere otaxis Inc. , 429 F.3d 1039, 1041 (Fed. Cir. 2005)).
Driven Innovations argues that DOTBLOG is sugge stive of its services and that there is insufficient evidence
to support the Board ’s refus al 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 ot hers on the i nternet. In re Driven Innov ations , 115 U.S.P.Q.2d at 1266. The Board explained that the Statement of Use showed that Driven InnovationsIN RE : DRIVEN INNOVATIONS , INC

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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 immed iately 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 m ark 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 descript ive.” Id. The Board continued by reasoning that “[c]onsumers will immediately unde rstand 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 be cause 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

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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 “re asonable factual predicate” for the conclusion that the mark is merely descriptive. According to the PTO, the Boar d’s finding is supported by (1) the definitions of “blog” and “dot,” (2) the forthcoming availability of a “.blog”

ge neric top

- level domain, and (3) Driven Innovations’ Statement of Use showing that its service collects info rmation 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 n ot 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

so me 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 understand ing 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 Va nguard, LLC v. Frito

- Lay North Am., Inc. , 786 F.3d 960, 967 (Fed. Cir. 2015)

. Considering DOTBLOG as a singleIN RE : DRIVEN INNOVATIONS , INC

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mark, the evidence of the definitions and the proposed existence of “.blog” generic top

- level domains merely show s , at most, that the mark DOTBLOG likely would have some relation to online blogs. Mere relation, howe ver, do es 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 fr om 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 descri ptiveness.” 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 relate s in some way to blogs. The PTO confirmed this fact when it explained that “t he service is dir ected 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

. T hough t he PTO backed away from this broad reasoning when faced with the need to apply it to other cases

, O ral A rg. 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 note d , the court has ca utioned against the use of comparisons to other marks because suggestiveness or descriptiveness in any partic ular 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 ca se must be decidedIN RE : DRIVEN INNOVATIONS , INC

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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”)

. C ONCLUSION For the foregoing reasons, w e find that substantial e vidence does not support the Board’s refusal to register Driven Innovations’ DOT BLOG 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 ther efore reverse the Board ’s order and remand for further proceedings.

REVERSED AND REMANDE D

C OSTS

No costs.

on its own merits

. Id. We use this compari son only as an example of the impractical nature of the Board’s broad reasoning

.