The USPTO refused registration of BRAND THERAPY for “Consulting in the field of graphic design; Graphic design,” deeming the mark merely descriptive of, or generic for, the recited services. The Examining Attorney maintained that BRAND THERAPY “is a general term used to refer to the process of creating or re-creating graphic designs for use as brand images including consultation related to the graphic designs.”Applicant Rachel Dunham argued that the phrase is merely suggestive, given the incongruity of a brand going into therapy. How do you think this came out? In re Dunham, Serial No. 86941745 (April 6, 2018) [not precedential] (Opinion by Judge Anthony R. Masiello).

 

We have considered all of the Examining Attorney’s usage examples carefully. Among the various users there does not appear to be agreement as to the meaning (if any) of BRAND THERAPY. No user employs the term to refer to graphic design, and different users apply it variously in the contexts of consultation regarding business development, communications, and public relations. It is also apparent that, in these examples, BRAND THERAPY is used to refer to a number of different things.

Contrary to the Examining Attorney’s position, “the context of these uses of BRAND THERAPY strongly suggests that the users are attempting to express themselves in a novel, clever, or interesting way rather than simply employing the terminology or jargon of their fields.”

Agreeing with applicant, the Board concluded that “[t]here is a degree of incongruity in the concept of subjecting a brand to therapy. Thought or imagination is required to leap past the incongruity in order to discern a descriptive quality of the mark.”

The Board therefore found that BRAND THERAPY is not merely descriptive of applicant’s services. Since genericness is the “ultimate in descriptiveness,” the phrase, a fortiori, cannot be generic for those services.

And so the Board reversed the refusals to register.