December 10, 2015 - Inside Counsel

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If you're inclined to think a simulated pregnancy might at least entail walking around with a heavy pillow strapped around your stomach, having sleepless nights and swollen feet, feeling hungry and tired and sick, and even being a little fearful, think again.

Now you can have the simulated experience of pregnancy, an applicant to the U.S. Patent and Trademark Office argues, simply by having your day interrupted by text messages on your mobile phone that invite you to consider how demanding a pregnancy can be. Ding! "Baby's crying! Needs milk!" Ding! "Diaper duty!" Yikes!

But in presenting its conception to the USPTO's Trademark Trial and Appeal Board, the company Do Something Inc. failed to deliver. The company applied to register the mark pregnancy text for "education and entertainment services, namely, providing audio, video, and prose presentations featuring a simulated pregnancy experience in mobile wireless form in both SMS and MMS formats." But its argument failed to persuade the TTAB that the applied-for mark was more than solely descriptive.

A trademark is considered descriptive if it immediately conveys knowledge of a quality, characteristic, function, feature, purpose, or use of the services with which it is used. Whether a particular term is merely descriptive must be determined not in the abstract, but in relation to the applied-for services, the context in which the term is used, and the possible significance of the term to the average prospective purchaser encountering the services in the marketplace.

In other words, the question is not whether someone presented with only the mark could guess what the services are. It is whether someone who knows what the services are will understand the mark to convey information about them.

The USPTO's examiner refused Do Something!'s registration, feeling that the mark was merely descriptive of a feature, purpose, and/or function of the applicant's services. In support of the refusal, the USPTO's examiner submitted dictionary definitions of the word text, which include one meaning as text message—"a short message that is sent electronically to a cell phone or other device." The examiner argued that the applicant's services encompasses sending texts, or text messages, because it clearly states that the applicant is "sending messages . . . in mobile wireless form," which is the very nature of a text message.

The examiner then argued that the word pregnancy in the Do Something!'s mark immediately conveys to consumers that its text messages are about pregnancy, noting the identification of services and the applicant's own specimens, which state that Do Something! is sending text messages regarding pregnancy. Thus, the examiner contended, when consumers view the wording pregnancy text in connection with the service of "sending messages to provide a simulated pregnancy experience in mobile wireless form," they will immediately understand the word pregnancy to refer to the subject matter of the services and text to refer to the type of messages being sent, because these exact words are also used to describe the nature and subject matter of the services. Thus, held the examiner, no imagination, thought, or perception is necessary to reach a conclusion as to the nature of the services provided under the pregnancy text mark.

In response, Do Something! raised a rare argument for registrability: that its mark created a double entendre—a suspect strategy in itself, as the very meaning of double entendre is something Do Something might have preferred it not be—that is, a sexual connotation! But Do Something pressed the argument that the services provided under the pregnancy text mark constitute a simulated pregnancy experience in mobile form.

The applicant explained how it provides a "phone baby" that helps to show teens that becoming parents can change their lives, with the intent to educate and entertain teens regarding the significance of pregnancy by sending teens text messages relating to feeding, changing, and dealing with a crying "phone baby" (i.e., a simulated "baby"). Ding! Ding! Ding!

As set forth in the application and confirmed by the specimen, Do Something's services do not relate to any actual pregnancy. Nor are they in the nature of providing information to pregnant or possibly pregnant women, or health care services. The applicant's services are not, of course, a pregnancy test, as that term has a conventional meaning of biologically determining pregnancy. A real pregnancy test is a physiological test to determine whether or not an individual has conceived, not a psychological test to determine if a teen is prepared for the condition of pregnancy. The applicant argued, however, that its services do serve by analogy as a test, in challenging adolescent users to consider whether they are ready for pregnancy.

Then the applicant's argument got particularly creative, arguing that the evidence shows that the phrase pregnancy text evokes the phrase pregnancy test. In support of this position, the applicant cited to the Google search engine response for pregnancy text, which returned a page that at its head includes the question, "Did you mean pregnancy test?" (emphasis in original). The applicant argued that in addition to the obvious near identity between pregnancy text and pregnancy test, this search result further shows that the two phrases are treated similarly, with pregnancy test being the expected one.

Based on these arguments, the applicant argued that its mark creates a double entendre or pun, which in turn creates an incongruity showing that pregnancy text is not merely descriptive. The applicant argued that its services are not a pregnancy test because they do not determine if anyone is pregnant, and neither are they used in connection with a pregnancy test or otherwise descriptive of a pregnancy test. The applicant maintained that its services do, however, have a suggestive connotation in connection with the phrase pregnancy test. A teenager—the applicant's ostensible target for its texts, may as she receives the applicant's texts "gather insight as to the effect of teenage parenthood on [her] life … and consider whether parenthood is appropriate at that stage of life."

In that sense, by analogy, the applicant argues its "services could be said to ‘test' whether intended users of the services are prepared for pregnancy. Of course, that usage is not what the term ‘Pregnancy Test' actually means; it is merely a suggestive analogy and pun." Because the phrase pregnancy text is capable of more than one interpretation, according to applicant, consumers and the public will readily associate that phrase with pregnancy test. And, according to the applicant, pregnancy test is at most suggestive of Applicant's services which do not in fact determine, or help anyone determine, if a female is pregnant.

If this feels to the reader like sophistry, it will come as some assurance that the Board didn't buy it. In a non-precedential ruling in In re Do Something!, Inc., Serial No. 85/696,594 (Oct. 29, 2015), the Board explained that the descriptive meanings of the individual words pregnancy and text with respect to Do Something!'s services are established by the evidence.

However, the point did note that combinations of merely descriptive terms are registerable if their combination results in a new and different commercial impression and/or the term created imparts a unique, incongruous or otherwise non-descriptive separate meaning as used in connection with the goods or services. In In re Colonial Stores, Inc., 394 F.2d 549, (C.C.P.A. 1968) the court held that Sugar & Spice was registrable because it should be considered a double entendre for bakery products.

In a similar vein, Do Something! argued that its pregnancy text mark was not a common term or expression. Because of its uncommonness, the applicant argued that that the public will more likely appreciate it as a double entendre and pun than if pregnancy text was a common expression that the public is accustomed to perceiving. The applicant concluded that the uncommon expression pregnancy text is nearly identical to the extremely common expression pregnancy test and would be perceived as a double entendre or pun in connection with the applicant's services. Thus, Do Something! concluded its unique argument by stating that pregnancy text should not be considered merely descriptive of the applicant's services, but rather it should be allowed to register because it creates an incongruous twist of the actual meaning of pregnancy test.

To successfully argue this, Do Something! had to prove that the double entendre created by its mark would be an association that the public would make fairly easily, and it has to be readily apparent from the mark itself. For example, in In re RiseSmart Inc., 104 U.S.P.Q.2d 1931, 1934 (T.T.A.B. 2012), the Board held that Talent Assurance did not present as a double entendre such that "the merely descriptive significance of the term talent would be lost in the mark as a whole." In In re National Tea Co., 144 U.S.P.Q. 286 (T.T.A.B. 1965), however, the Board held that No Bones About It should be considered a unitary double entendre for the purposes of registering that mark for use in connection with fresh pre-cooked ham.

In this case, the examiner pointed out that pregnancy text and pregnancy test are distinct phrases that have entirely different meanings. The word text is commonly used and understood by the public. When this term is used in connection with the service of sending text messages, consumers, including teenagers, are more likely to understand the basic meaning of the word "text" in determining the connotation of the applied-for mark. The Board agreed that it was highly unlikely that consumers would ignore the meaning of the word text and replace it with the meaning of the word test when it is clear from the applicant's website that the applicant's services include sending text messages.

To be a double-entendre, the actual words in the mark pregnancy text should have an alternate meaning and, as noted above, that meaning must be readily apparent to purchasers from the mark itself. However, there is no alternate meaning or connotation; the phrase means exactly what it says, that is, a text message about pregnancy-related matters, including new born babies.

Possibly testing the Board's patience, Do Something! tried to talk its way out of this tricky corner. It argued that its services do not send a text message related to anyone's pregnancy or even about pregnancy in general, but one related to a "simulated pregnancy experience," that is essentially a form of a video game that relies upon "phone babies." It argued that it is incorrect to equate a "simulated pregnancy experience" (i.e., phone babies) with information about an actual pregnancy. Instead the applicant argued that it requires imagination, perception, and thought to equate a "phone baby" to an actual baby and to equate the experience of receiving phone texts to simulate certain aspects of having a baby to an actual pregnancy.

While the Board agreed that a "simulated pregnancy experience" is not the same thing as an actual pregnancy, both deal with the subject of "pregnancy" and are therefore appropriately described by the word "pregnancy" in the term pregnancy text. Thus, if each component of a mark retains its descriptive significance in relation to the services, the combination results in a composite that is itself descriptive.

This is where things went south for Do Something!. The Board explained that based on the definitions of the terms used in the applied-for mark and the fact that the applicant had described its services as "featuring a simulated pregnancy experience in mobile wireless form," consumers would understand that the applied-for mark describes the purpose and/or a feature of the services, that is, that text messages are sent that relate to the subject of pregnancy. Thus, when used in combination, the combined terms do not evoke any new or unique commercial impression. Because the terms retain their merely descriptive significance in relation to the services, the combination results in a composite that is itself merely descriptive. The Board reiterated the definition I referenced above: that a term need not immediately convey an idea of each and every specific feature of the applicant's services to be considered merely descriptive; it is enough that the term describes one significant attribute, function or property of the services. With that, the Board upheld the descriptiveness refusal.

I have spent more time reviewing Do Something!'s services than I am sure most consumers would. Despite this, I am not sure I understand exactly what services the applicant is providing under its mark even after reading the case, and I'm still not sure how descriptive the applicant's services are. That said, the main takeaway from this case is that if you are an applicant and you want to rely on arguing your mark is a double entendre, plan on that from the outset of your case—not in response to a descriptiveness refusal. Otherwise you'll be able to Do Nothing.

Put another way: Ding! "Not at this Court, baby!"

Reprinted with permission from the December 10, 2015 edition of Inside Counsel© 2015 ALM Media Properties, LLC. All rights reserved. Further duplication without permission is prohibited, contact 877-257-3382 or reprints@alm.com.