NOTE: This disposition is nonprecedential.

United States Court of Appeals 

for the Federal Circuit ______________________ 

IN RE: DRIVEN INNOVATIONS, INC.,

Appellant

______________________ 

2016-1094

______________________ 

Appeal from the United States Patent and Trademark 

Office, Trademark Trial and Appeal Board in No. 

77/073,701.

______________________ 

Decided: January 4, 2017

______________________ 

EDWARD LEE, Law Offices of Edward Y. Lee, Los Angeles, 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”) appeals 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 suggestive, 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 intended 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 publication 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 Innovations’ use of the mark DOTBLOG, including the following 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 customer, with a summary report 

of what those posts are saying about your particular query.

J.A. 181.
IN RE: DRIVEN INNOVATIONS, INC. 3

On October 5, 2012, a new examining attorney reviewed 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 customers 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 standard. 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 second Office Action maintaining the refusals. Driven Innovations 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 attorney’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 specimen 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 pursues 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 irregularity, 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 suggestiveness, 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 descriptiveness refusal is therefore proper “if the mark is descriptive of any of the [services] for which registration is 

sought.” Id. (alteration in original) (quoting In re Stereotaxis Inc., 429 F.3d 1039, 1041 (Fed. Cir. 2005)).

Driven Innovations argues that DOTBLOG is suggestive 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 Innovations, 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 immediately 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 understand 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 information 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 Vanguard, 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, however, 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 descriptiveness.” 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 cautioned against the use of comparisons to other marks 

because suggestiveness or descriptiveness in any particular 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 evidence 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 therefore 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.