Michael J. Foycik Jr., Esq.

This decision on Appeal of a “merely descriptive” rejection on the mark ARCADEWEB before the TTAB (Trademark Trial and Appeal Board) is indicated as precedential, which means it is significant.  Several interesting points were raised by the TTAB in reversing the refusal to register, as follows.

The TTAB was presented with newly-introduced arguments by both sides, meaning those arguments had not been presented during the prosecution phase before the trademark examining attorney.  This included arguments by the examining attorney that a prior Supplemental Registration for the same mark should mean that the mark is admitted to be descriptive, and also presenting dictionary definitions of the terms “arcade” and “web”.  The Applicant, on the other hand, presented new arguments based on related marks by others.  After vigorous condemnation of such practices by both sides, the TTAB nonetheless considered at least some of the new arguments by both sides, and refusing to consider other arguments.  The TTAB did not deem the prior Supplemental Registration as being an admission against the Applicant, and also threw out the disclaimer of the term “web” because the mark is not separated into different words. 

Interestingly, the TTAB rendered a decision on the merits by holding that the mark is “suggestive” rather than descriptive, because the goods/services are not immediately apparent from inspection of the mark but rather takes at least some further mental step to discern the connection between the mark and the goods/services.

It is apparent that this type of distinction is a fine one.  Even so, the evidentiary considerations in this case are of great interest, and this writer can therefore recommend reading this TTAB decision in its entirety.