TTAB holds that SMS number is not merely descriptive
The Trademark Trial and Appeal Board (TTAB) has held on summary judgment in ChaCha Search Inc v Grape Technology Group Inc (Opposition 91195901, December 27 2012, precedential) that the numbers 242242 were not merely descriptive of search engine services rendered via text messaging.
ChaCha Search Inc had commenced a combined cancellation and opposition proceeding against Grape Technology Group Inc, and Grape had counterclaimed to cancel ChaCha’s pleaded registration. When Grape voluntarily withdrew the application and registration that were the subject of ChaCha’s filings, the only issue that remained was the counterclaim against ChaCha’s registration. ChaCha’s registration in issue covered the numerical designation 242242, which corresponds on a phone keypad to the letters C-H-A-C-H-A.
Grape’s original counterclaim alleged that 242242 was merely descriptive of the search services provided via text because the numbers comprised by the trademark corresponded to ChaCha’s name and thus merely informed consumers how to contact ChaCha for its service. The original counterclaim also alleged that 242242 had not acquired distinctiveness. Grape also tried to amend its pleadings to assert that 242242 did not function as a trademark, but the TTAB denied Grape’s motion to add such a counterclaim as untimely. Significant to the TTAB’s denial of the motion to amend was the fact that all of the information relied upon by Grape to support the additional ground for the counterclaim was known to Grape early on in the proceeding, but Grape did not move to add this particular ground until near the end of the proceeding, nearly 15 months after the filing of its original counterclaim.
Thus, the TTAB addressed only ChaCha’s motion for summary judgment that 242242 was not merely descriptive of its services. ChaCha supported its motion with third-party registrations covering numerical marks, numerical and alphanumerical phone number marks and domain name marks. Grape’s evidence in opposition consisted of a copy of ChaCha’s use specimen and a declaration from the company’s technical team leader regarding how the numbers are used for sending SMS messages.
The TTAB granted summary judgment to ChaCha that its 242242 mark was not merely descriptive of its search services. The TTAB acknowledged precedent finding that some phone numbers are descriptive, by citing the case in which 1-888-M-A-T-R-E-S-S was found to immediately convey the impression of a service relating to mattresses. But the TTAB was quick to note that not all phone numbers are descriptive and, instead, applied the definition of mere descriptiveness to ChaCha’s 242242 mark. Under the TTAB’s analysis, even though 242242 corresponds to ChaCha’s name, 242242 does not immediately tell consumers anything about “an ingredient, quality, characteristic, function, feature, purpose or use of the specified services”. The TTAB agreed with ChaCha that to find otherwise would mean that “no telephone number or domain name would be registrable without reliance upon Trademark Action Section 2(f)” for a claim of acquired distinctiveness.
It would have been interesting to see the TTAB address the potentially more difficult case of whether 242242 functioned as a trademark. Thus, the practice point that arises from this case is that, even given the TTAB’s lenience in granting motions to amend, claims should be brought as soon as they are known (or reasonably should have been known).
Karin Segall, Leason Ellis LLP, White Plains
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