The record included dictionary definitions of "arcade" and "web," but the Examining Attorney did not submit any evidence showing use of the term "arcadeweb" or "arcade web" in connection with services like those of Applicant. She did submit a copy of Applicant’s prior Supplemental Registration for the mark ARCADEWEB in standard character form for identical services, but only in the context of requesting that Applicant acknowledge ownership thereof. However, in her final brief, the examining for the first time asserted that, by obtaining this Supplemental Registration, Applicant had impliedly admitted that ARCADEWEB is merely descriptive.
The Board noted that an examining attorney need not limit the arguments in her brief to those raised in the various Office actions in support of the disclaimer requirement. See TBMP 1203.02(b) ("an examining attorney need not request remand in order to make a new argument or change the rationale for a refusal or requirement, as that is not considered to be a new refusal or requirement"). However, the Board found it unfair for the Examining Attorney to use this evidence "for an argument that is totally different from the purpose for which the registration was submitted, and not even hinted at in the Office actions...."
[A]lthough we do not say that the examining attorney cannot use the evidence of the Supplemental Registration in support of her disclaimer requirement, or that we cannot consider the argument relying on that registration raised for the first time in her brief, we view the examining attorney’s actions as poor examination practice and strongly urge that such a practice not be followed in the future.
That "poor examination practice" had its effect on the substantive issue of mere descriptiveness.
The Examining Attorney maintained that "arcade" and "web" merely describe a feature of the services because Applicant provides an "online arcade web site;" i.e., "it disseminates advertising and promotes goods and services of others by means of arcade games on the web."
The Board pointed out that registration on the Supplemental Register is prima facie evidence that, at least at the time of registration, that registered mark was merely descriptive. However, the Board was troubled by the fact that "the examining attorney never put applicant on notice that the examining attorney was treating the Supplemental Registration as evidence in support of her position, or that applicant had options to address the prima facie evidence of the Supplemental Registration (i.e., to file evidence of acquired distinctiveness under Section 2(f) or submit rebuttal evidence)."
Applicant did submit some evidence, in the form of a dictionary definition, that “arcade” is not merely descriptive of applicant’s services, but it might have submitted more had it been on timely notice of the PTO's position:
We acknowledge that this evidence is quite limited for rebutting the prima facie evidence of mere descriptiveness of a Supplemental Register registration. [Is the "registration" merely descriptive, or is it the registered mark? - ed.] However, we must also recognize that the circumstances in this case are very unusual, and that the cause for this limited evidence was the examining attorney’s raising the argument of mere descriptiveness based on that registration at a point where prosecution and examination had long closed. Because of this and because the examining attorney has not submitted any evidence going directly to the mere descriptiveness of ARCADEWEB, in this case these points outweigh any prima facie evidence of mere descriptiveness from the Supplemental Register registration.And so the Board reversed the refusal.
TTABlog comment: Couldn't the Board have remanded the case for the re-opening of prosecution? Applicant attempted, in its reply brief, to submit evidence of acquired distinctiveness, but of course that evidence was rejected as untimely. Couldn't the Board have considered that submission as a request for remand and reconsideration, and tossed the case back to the PTO. It does seem that the mere descriptiveness claim has some merit. So maybe the PTO gets embarrassed here, but what about the effect on third parties who might want to use the term "arcade web" or "web arcade." Shouldn't they have been considered?
Text Copyright John L. Welch 2012.
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