What do you know? No one can own “pro bono” — regardless of how it’s spelled. John Welch:
The USPTO refused registration of the mark PROBOKNOW, in standard character form, deeming it merely descriptive of “Operating an online marketplace for providers and consumers of free and affordable legal services.” The PTO maintained that the mark is the phonetic equivalent of “pro bono.”Applicant argued that PROBOKNOW will not be recognized as “pro bono,” but rather as a merely suggestive portmanteau of the terms “pro bono” and “knowledge.” Moreover, said applicant, the mark is a double entendre. How do you think this came out? In re Proboknow, LLC., Serial No. 86790769 (September 14, 2016) [not precedential].
John’s post, of course, gives you what you need to know about this decision. The only real novelty here was the argument based on the “Pro bono” and “knowledge” melding, which the applicant argued amounted to a clever double-entendre entitled to protection. Nope:
[A]pplicant’s argument that PROBOKNOW would be perceived as a melding of “pro bono” and “knowledge,” [but] there was no evidence to support that theory, nor is such an interpretation evident from applicant’s manner of use of the mark. Moreover, even if consumers perceive the mark as applicant asserts, the mark would still be descriptive of applicant’s services.
That part is a bit of shame, because it may be that the applicant could have or could develop such evidence. On the other hand, if it does, it can apply and try its luck again.
On a more general note, however, the opinion sets out a couple of fundamental points of trademark law that are frequently overlooked by non-specialists.
- Unusual or funny spelling has its place in trademarks, but neither of them can make a silk purse out of a sow’s ear. The sow here is descriptiveness. “The novel spelling of a mark that is the phonetic equivalent of a merely descriptive word or term is also merely descriptive if purchasers would perceive the different spelling as the equivalent of the descriptive word or term.”
- Similarly, neither originality nor even exclusivity will make a flawed trademark better than it is. “[E]ven if applicant is the first and only user of the term PROBOKNOW, it is still merely descriptive of the services, because it immediately describes an essential function, feature or characteristic of the identified services.”
Hope that was useful to you. And yes, it was no charge. But as it says at right (or above this paragraph on your mobile), it wasn’t legal advice.