In honor of Valentine’s Day, the Trademark Trial and Appeal Board has offered us honey. You know, that stuff with which you catch more flies.
The lines between descriptive and suggestive marks has never been easy to define. Bitvoyant, a Virginia-based software company, found that out this week. Bitvoyant applied to register the mark HONEYFILE in connection with the following:
Computer software platforms for use in the field of computer network security that assist in the tracking of data exfiltration and network intelligence in Class 9; and
Computer security consultancy; Computer security service, namely, restricting access to and by computer networks to and of undesired web sites, media and individuals and facilities; Computer security services, namely, enforcing, restricting and controlling access privileges of users of computing resources for cloud, mobile or network resources based on assigned credentials; Computer virus protection services; Design and development of electronic data security systems; Platform as a service (PAAS) featuring computer software platforms for use in the field of computer network security that assist in the tracking of data exfiltration and network intellegence in Class 42.
The Examining Attorney found the mark descriptive, based on evidence that the cybersecurity industry used the term to denote files that would attract hackers and then alert the user that unauthorized access had occurred. The Trademark Trial and Appeal Board affirmed last week. In so doing, the TTAB gave great weight to the evidence of use within the cybersecurity industry. It also correctly laid out the test for determining whether a mark is descriptive, namely, whether “it immediately conveys knowledge of a quality, feature, function, or characteristic of the goods or services with which it is used.” The Board even re-stated the Trademark Manual of Examining Procedure 1209.01(b), saying that the analysis “requires consideration of the context in which the mark is used or intended to be used in connection with those goods/services, and the possible significance that the mark would have to the . . . purchaser of the goods or services in the marketplace” (my emphasis). The Board, however, then goes on to make the extraordinary statement that “In light of the use of the term by third parties in the cybersecurity industry, it would be perceived by consumers as identifying or describing the same or similar features of the Applicant’s software platform and computer services.”
Bitvoyant appears to be a B2B cybersecurity company. It is certainly possible that its clients who have cybersecurity concerns have heard the term HONEYFILE before, but is the fact that the term appears to be batted around by software geeks really indicative that consumers of the software would perceive the mark as descriptive? I know I didn’t. And even if after some use of imagination I recognized a connection between “honey” and attracting hackers, I certainly didn’t realize it was a term of art. And I’m guessing that the percentage of Bitvoyant customers who are cybersecurity experts themselves is rather small – why would they need Bitvoyant? Even the TMEP, in its (albeit non-exhaustive) list of factors that are often considered in determining descriptiveness, conspicuously does not list unregistered third party uses as one of the considerations. The Ninth Circuit has suggested that “Extensive use of a mark by third parties might indicate that the mark is merely descriptive of a given class of products,” but at best it is a factor in determining of whether a purchaser would recognize the term immediately. And the evidence the Examiner provided didn’t seem to rise to the level of “extensive.” I think the chasm the Board tried to leap here was just too wide.
Of course, the applicant didn’t help themselves with their specimens or their application. They didn’t use the mark as an adjective to describe the goods and products; in fact they essentially used the definition of a honeyfile that was later used against them by the Examiner. I’m not sure that trademark counsel would have advised them that the mark would be found to be descriptive (unless the trademark lawyer was also a cybersecurity expert), but she could have helped them use their mark better and file an application with a less fatal description.
Sadly, it appears that Bitvoyant has stopped using its mark altogether. I wish they wouldn’t – I thought it was kind of sweet.