A divided Board panel reversed a Section 2(e)(1) refusal to register the mark LEDGERDOMAIN, in standard character form, finding it to be not merely descriptive of software and services in the field of "blockchains, distributed ledgers and peer-to-peer transaction and payment networks." Applicant argued that the word "domain" is too imprecise to describe its good and services, and furthermore that the mark is a double entendre, a play on the word "legerdemain." The panel majority agreed with the latter argument. In re LedgerDomain LLC, Serial No. 87159899 (March 6, 2020) [not precedential] (Opinion by Judge David K. Heasley; dissenting opinion by Judge Michael B. Adlin).
The Examining Attorney relied on dictionary definitions of "ledger" and "domain" (a sphere of activity, influence, or knowledge), and on Internet evidence of third-party use of the words together, in maintaining that: "As Applicant's software is for use in the sphere of activity of distributed ledgers, the individual components [LEDGER and DOMAIN] and the composite result [LEDGERDOMAIN] are descriptive of the field of use of Applicant's goods and services, and thus a feature and characteristic of them."
Applicant argued that "domain" has too broad a meaning to describe a feature of its goods and services, and has many disparate meanings in the general field of computers and information. Therefore LEDGERDOMAIN does not immediately convey information concerning a feature or characteristic of Applicant's software goods and services.
Applicant further argued that LEDGERDOMAIN is a double entendre, a play on the word "legerdemain," which means sleight of hand performed by a magician, and suggests skill or adroitness. The Examining Attorney asserted that "legerdemain" has a negative connotation with regard to financial matters, and therefore would not come to the mind of consumers when confronting the neutral or positive meaning of LEDGERDOMAIN.
The panel majority, assuming without deciding that the word DOMAIN has a descriptive significance, found that "when LEDGER and DOMAIN are combined, the term LEDGERDOMAIN lends itself to more than one interpretation: as a double entendre." Moreover, the record included evidence of use of the term "legerdemain" in connection with financial matters.
LEDGERDOMAIN readily conjures an association with "legerdemain." The two terms are visually similar, differing only in two letters. The two terms are also aurally similar―almost phonetic equivalents. See In re Priefert, 222 USPQ at 733 (HAY DOLLY phonetically equivalent to the expression "Hey Dolly"). "Legerdemain" is a familiar word that has long been a part of the English lexicon.
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Moreover, even if LEDGERDOMAIN evokes a negative connotation among some members of the relevant public, that alternative connotation is still being evoked; that is to say, the customer must 'get' the alternative connotation "legerdemain" in order to attach a positive or negative significance thereto.
The panel majority observed that "[a] true double entendre is a rarity—an uncommon creative exception to the general run of applied-for marks." Finding that LEGERDOMAIN qualified as a double entendre, the Board reversed the refusal.
Judge Adlin, in dissent, pointing out that the Board "must consider the mark as a whole and do so in the context of the goods or services at issue." [Emphasis by Judge Adlin]. He opined that the panel majority did not fully account for the "context" of Applicant's goods and services.
Judge Adlin found the dictionary and Internet evidence persuasive of the mark's descriptiveness, and he disagreed with the majority's finding that the second meaning would be apparent "because it is inconsistent with one of blockchain technology's main functions: security and verification of transactions."
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