TTAB refuses to register blue WHITEHOUSE

In In re Parisi the Trademark Trial and Appeal Board (TTAB) has refused to allow Dan Parisi, the owner of pornographic website 'whitehouse.com', to register WHITEHOUSE as a mark for "printed publications, namely, magazines featuring adult entertainment" and as a service mark for "providing entertainment featuring adult subject matter via a multi-user global computer information network".

An examiner at the US Patent and Trademark Office (USPTO) had rejected the application as:

• creating a false association with a branch of the US government;
  
  
• descriptive or deceptively misdescriptive; and
  
  
• having insufficient evidence of acquired distinctiveness to merit registration under Section 2(f) of the Lanham Act.

On appeal, the TTAB reversed the refusal of registration on false association grounds, and affirmed on the remaining grounds.

In reversing the refusal on false association grounds, the TTAB acknowledged that the term 'The White House' was recognized as referring to the upper levels of the executive branch of the US government. However, because there was evidence sufficient to prove that the term also referred to other things, such as the name of a Russian government building, a trademark for fruit products, a surname and a business name, the TTAB found that the term was not associated exclusively with the US government.

The TTAB held that although Parisi had acquired the domain name 'whitehouse.com' for a political parody site precisely because it would conjure up thoughts of The White House, it was unreasonable to conclude that prospective visitors to his pornographic site would believe that it was sponsored or authorized by the US government. The fact that some internet users seeking the official site for The White House mistakenly visited Parisi's website was insufficient to show that he intended to cause such users to believe his site was sponsored or authorized by The White House. The TTAB applied the same reasoning to the refusal of registration with respect to Parisi's application to register the mark for adult magazines.

In affirming the refusal of registration on descriptiveness grounds, the TTAB first considered the subject matter of Parisi's magazine and website. Much of their content was a spoof of The White House of the Clinton administration. Considering the mark WHITEHOUSE in this context, the TTAB had no trouble (i) finding it descriptive of both Parisi's magazine and website, and (ii) rejecting Parisi's claim that the term was rendered arbitrary because the website offered "adult subject matter".

The TTAB also upheld the USPTO's reasoning that the mark had not acquired sufficient distinctiveness to allow registration, despite evidence (i) that the domain name 'whitehouse.com' had been in use for five years, and (ii) of unsolicited media coverage of Parisi's website. The TTAB noted that a large proportion of the media coverage distinguished Parisi's site from various other White House sites. In the eyes of the TTAB, this meant that the mark had not established secondary meaning.

Susan Progoff, Fish & Neave, New York