A double meaning

Can make trademark distinctive:

11th Circuit

By H. G. Wells - Wells, H. G. (1920). The Outline of History. p.199. Garden City, New York: Garden City Publishing Co., Inc.., Public Domain, https://commons.wikimedia.org/w/index.php?curid=2211967The Eleventh Circuit has ruled that a double meaning can make a proposed trademark sufficiently distinctive to entitle it to federal trademark protection.

Engineered Tax Servs., Inc. v. Scarpello Consulting, Inc. involved a dispute between two tax services companies. Engineered Tax Services (ETS) accused Scarpello Consulting of using its name to steal business.

In 2015, ETS filed an application to register the service mark “Engineered Tax Services,” which it had been using since 2006. The US Patent and Trademark Office (USPTO) registered the mark in 2016.

As the court noted, in 2016 ETS discovered that in 2014

Scarpello began a Google AdWords marketing campaign using “engineered tax services”—among other terms—as a keyword. In an AdWords campaign, an advertiser pays Google to display its website as the first result when a user performs a search using one of the advertiser’s handpicked keywords. During Scarpello’s campaign, therefore, Googling “engineered tax services” returned Scarpello’s website as the first result. ETS’s site—an unsponsored search result—appeared second.

ETS sued for infringement of its mark.

Scarpello denied it had infringed ETS’s mark, and also argued that the mark was invalid because it lacked the requisite distinctiveness.

The court found:

Here, the fact that the undeniably descriptive term “tax services” was modified by the adjective “engineered” is particularly significant because tax services aren’t the sort of thing that ordinarily calls for engineering. Inferring the nature of ETS’s services from its mark, therefore, is more likely to require imagination than would a more natural pairing of words.

The court concluded:

…what makes ETS’s mark at least plausibly imaginative—and thus suggestive, and thus inherently distinctive—is that the term “engineered” can be understood two ways, and that when combined with the phrase “tax services” to form the mark, “Engineered Tax Services” entails a clever double meaning, referring to tax services that are performed both (1) skillfully and scientifically and (2) by actual engineers. A potential customer could—without any imagination—understand the mark to communicate either the involvement of actual engineers or a skillful and scientific approach to providing tax services. But to grasp both simultaneously requires (or so a reasonable jury could conclude) at least a measure of imagination. And that is sufficient.


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