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Blame it on the rain? A Tennessee irrigation company might well sing that tune after the rejection of its recent trademark application on a term found to be descriptive. And if it doesn't know what song, there's always Wikipedia.

In a nonprecedential decision in In re Rainscapes Construction, Inc., Serial No. 86906294 (January 27, 2017) that curiously depended on the panel's parsing a definition from Wikipedia, of all sources, the Trademark Trial and Appeal Board (TTAB) refused to register Rainscapes The Irrigation Professionals and a rain design logo for use in connection with "installation and maintenance of residential and commercial irrigation systems; and lighting installation services" on the ground that applicant had failed to comply with the U.S. Patent and Trademark Office examining attorney's requirement for a disclaimer of the word rainscapes.

A disclaimer is a statement on the trademark record that the applicant does not claim exclusive rights in the disclaimed term because it is descriptive of the services applied for. The USPTO's objective in not protecting descriptive marks is to maintain the freedom of the public to use the language involved, thus avoiding the possibility of harassing infringement suits by the registrant against others who use the mark when advertising or describing their own products.

In attempting to overcome the disclaimer requirement, Rainscapes Construction argued that rainscapes, which preserve and recycle rain water, are used "in lieu of," or are "the complete opposite of" irrigation systems, and thus the term should not be considered descriptive.

To support his argument that "rainscapes" was descriptive of Rainscapes Construction's services and that a disclaimer was required, the examiner relied on dictionary definitions (irrigation is "the distribution of water over the surface of the ground, in order to promote the growth and productiveness of plants") and evidence from Wikipedia and other Internet sources ("[r]ainscapes are landscape enhancements that reduce storm water runoff from properties ... Rainscapes simulate natural drainage to intercept, capture and absorb rain into the ground").

Rainscapes Construction's own specimen of use did the company no favors: It revealed not only that Rainscapes Construction provides irrigation services, but also that it is committed to water conservation in performing those services. This allowed the board to take judicial notice of the fact that water conservation is a goal of both rainscapes and irrigation.

Thus, the majority of the board had no doubt that the word "rainscapes" was merely descriptive of Rainscapes Construction's irrigation services, because "rainscapes supply land with water, which is one definition of ‘irrigation,' and can support plants' need for water, which is another." The majority quickly concluded that rainscapes "immediately conveys knowledge of a quality, feature, function, characteristic or purpose of Applicant's irrigation services" and that customers would understand that Rainscapes Construction uses rainscapes in at least some of its irrigation systems.

Finally, the majority observed that Rainscapes Construction's competitors who use rainscapes to irrigate, or in conjunction with irrigation products and services, should have the opportunity to use the term "rainscapes" or variations thereof to describe their goods and services. And so the majority affirmed the disclaimer requirement.

In his dissent, Judge Bergsman contended that the evidence did not show that "rainscapes" was merely descriptive when used in connection with Rainscape Construction's recited services, because he found that none of the websites discussing rainscapes made reference to installing irrigation systems.

Judge Bergsman explained that irrigation and rainscaping are distinct but related processes. As noted by the majority, he wrote, the term "rainscape" refers to a landscaping technique intended to preserve and recycle rainwater. But, Judge Bergsman argued, while irrigation is the application of water to landscape, rainscaping is designed to be used in lieu of irrigation. He noted that according to Wikipedia, "[i]rrigation is often studied together with drainage, which is the natural or artificial removal of surface and sub-surface water from a given area." Therefore, to Judge Bergsman's mind, "rainscapes" need not be disclaimed.

This case demonstrates the fine line an applicant has to walk, especially in disclaimer requirement cases, between arguing that a term is not descriptive and yet not going so far as to make the term deceptive. Logic suggests that if rainscapes are part of Rainscape Construction's service, the term is merely descriptive and should be disclaimed. Conversely, if rainscapes are not part of Rainscape Construction's services, the term would be deceptive and should be rejected, for it is illogical to trademark a term that's the opposite of a service an applicant provides.

And let's not overlook the board's reliance on Wikipedia. Consulting Wikipedia to understand the public perception of a term is one thing; in this case, the board went so far as to parse the language of the Wikipedia entry for "irrigation" (e.g., "rainwater harvesting is usually not considered a form of irrigation" does not mean "is never") to determine whether the term "rainscape" is descriptive.

Given the unreliable nature of an open-source encyclopedia—just look up "criticism of Wikipedia" on Wikipedia!—it seems risky to allow an entry that much weight. I don't suggest that it happened here, but if anyone with a Wikipedia account can offer a cogent addition to an entry in the online encyclopedia, what's to prevent a careful plaintiff or defendant in a trademark from editing entries that might be referred to for their probity by the TTAB's judges? I suspect that losers would be blaming that on the rain as well—or that winners would be singing in it.

Reprinted with permission from the February 24, 2017 edition of Corporate Counsel© 2017 ALM Media Properties, LLC. All rights reserved. Further duplication without permission is prohibited, contact 877-257-3382 or reprints@alm.com.

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