Monday, November 04, 2013

"PRESERVATION CLOUD" Merely Descriptive of Data Preservation Services, Says TTAB

The Board sustained an opposition to registration of the mark PRESERVATION CLOUD, finding it to be merely descriptive of "electronic data storage" (class 39) and of "providing temporary use of a web-based software application for use in grid computing capacity for litigation support services and graphical presentation services ..." (class 42) [CLOUD disclaimed]. Opposer's lack-of-bona-fide-intent claims, however, went up in smoke. CaseCentral, Inc. v. NextPoint, Inc., Opposition No. 91198858 (October 29, 2013) [not precedential].

Section 2(e)(1) mere descriptiveness: Opposer CaseCentral relied on applicant NextPoint's own use of the terms "cloud" and "preserve" or "preservation," the testimony of NextPoint's CEO and its Director of Marketing, its marketing material, and third-party uses of "preservation cloud" in a descriptive manner. Of course, NextPoint's disclaimer of CLOUD constituted a "tacit admission by applicant of its descriptive value."

NextPoint submitted evidence to show that the meaning of "cloud" in the technical world is cloudy. The Board, however, found it clear that "although it may not be completely agreed upon what exactly the 'cloud' means, and certainly not everyone may understand what the technology does or means, it is widely understood as referring to online computing."

NextPoint next pointed to third-party registrations of marks containing the word CLOUD for similar services, without disclaimer of CLOUD, but the Board found the evidence unpersuasive. Of the seven registrations submitted, four were for unitary terms (INVESTCLOUD, EVENTCLOUD, CLOUDPASSAGE, and LABCLOUD), two reside on the Supplemental Register (INVOICE CLOUD and IMAGECLOUD), and the sixth issued under Section 2(f). Only one (CLOUD FOR COURTS) resided on the Principal Register, but that was not enough to support a finding that the PTO has a policy that "cloud" in this context is suggestive rather than descriptive.

The Board had no doubt that PRESERVATION CLOUD directly conveys information regarding applicant's services, and so it sustained the opposition on the Section 2(e)(1) ground.

Lack of Bona Fide Intent: Opposer claimed that, when NextPoint applied for the opposed mark, it lacked a bona fide intent to use PRESERVATION CLOUD because NextPoint set up a service under the mark CLOUD PRESERVATION. NextPoint's witnesses, however, strenuously denied the allegation, and brochures and website pages that pre-dated the filing date referred to PRESERVATION CLOUD services. This constituted sufficient documentary evidence to support NextPoint's assertion of a bona fide intent to use the mark, and so the Board dismissed this claim.  

Read comments and post your comment here.

TTABlog note: Do you find the PTO's disclaimer policy to be somewhat cloudy? Is this a WYHEA? Would You Have Even Applied?

Text Copyright John L. Welch 2013.


At 11:35 AM, Anonymous Anonymous said...

I think one of the most interesting aspects of this decision is the Board's approach to "unitary marks." Obviously, the disclaimer didn't do Nextpoint's argument any favors. But I'm not sure I see what makes INVESTCLOUD and EVENTCLOUD unitary and PRESERVATION CLOUD conceptually severable.


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