[This is a guest post by Natali De Corso, a rising 2-L at Boston College Law School, and a summer associate at Wolf, Greenfield & Sacks, P.C.]. The Board affirmed a Section 2(e)(1) refusal of registration of the mark BUYER ENGINE, finding it merely descriptive of real estate marketing services in International Class 35. In re Cutting, Serial No. 87109861 (June 26, 2018) [not precedential] (Opinion by Judge Christopher C. Larkin).

Examining Attorney April A. Hesik first argued “that the record show[ed] that a feature of the services identified in the application as ‘real estate marketing services’ is the use of ‘search engines pertaining to information about real estate buyers.’” In fact, the Applicant had provided information that his “unique” services would “include a search engine and the search engine [would] pertain to information about real estate buyers.” The Board therefore agreed with the Examining Attorney.

The Examining Attorney further argued that both “BUYER” and “ENGINE” are “descriptive of search engines that feature information pertaining to potential buyers of real estate.” Based on the dictionary definitions of the words and third-party registrations of marks for similar services where “buyer” or “engine” is disclaimed, the Board again agreed.

Lastly, the Examining Attorney asserted that the words BUYER and ENGINE together constitute a “composite mark that is itself merely descriptive.” She explained that “consumers are accustomed to encountering the words ‘BUYER’ and ‘ENGINE’ in proximity to describe search engines pertaining to potential buyers of real estate,” citing internet evidence showing that search engines – such as Realtor.com, Trulia, and Zillow – are commonly used in real estate marketing. Consequently, she contended, BUYER ENGINE is “not incongruous” in the context of Applicant’s search engines that provide information relating to buyers.

Applicant, however, insisted that the combination of BUYER and ENGINE is “incongruous and unique” and that it “requires imagination, thought, mental, pause, and perception” to determine the meaning of the words. If the mark were REAL ESTATE BUYER SEARCH ENGINE, Applicant argued, a consumer would easily understand the meaning of the mark – but without the extra words, a consumer is left “puzzled and guessing.” This argument, the Board explained, “reflects a fundamental misunderstanding of the test for mere descriptiveness.” The important question is whether a consumer “who knows the goods and services will understand the mark to convey information about them.” Unsurprisingly then, the Board agreed with the Examining Attorney that the composite mark is merely descriptive of real estate marketing services.

The Board also found “unavailing” Applicant’s argument that the “fact that the examiner’s search revealed no similar or conflicting marks . . . further demonstrates that BUYER and ENGINE are not a common or natural pairing . . . .” The Examining Attorney, the Board explained, has no obligation to prove that others have used, or need to use, the mark. A term is not rendered distinctive simply because the Applicant may be the first or only user of the term. A term is descriptive as long as it meets the standard for descriptiveness in In re GyulayIn re Chamber of Commerce, and DuoProSS. The Board held that the Examining Attorney showed that BUYER ENGINE met the descriptiveness standard.

Finally, Applicant cited three cases involving marks –“FRANKWURST” for wieners, “TINT TONE” for hair coloring, and “DRI-FOOT for anti-perspirant deodorant for feet – that were not found merely descriptive. The Board pointed out, first, that neither the Board nor the Attorney is bound by prior determinations of the Patent and Trademark Office “in cases involving different marks, different goods and services, and different records.” Second, BUYER ENGINE is distinguishable from these cases because the mark “does not refer in an incongruous manner to the desired end-result of applicant’s services.” Instead, the mark refers “to a significant feature of the services themselves, and in a manner that is not incongruous when applied to search engines featuring potential buyers of real estate.”

The Board therefore found that the record “clearly” demonstrated that BUYER ENGINE was merely descriptive of the services, and it affirmed the refusal to register.

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TTABlog comment: Is this a WYHA?