General Rules For Determining If A Trademark is Merely Descriptive

(extracted from USPTO Office Actions)

A mark is merely descriptive under Trademark Act Section 2(e)(1), (15 U.S.C. 1052(e)(1)), if it describes an ingredient, quality, characteristic, function, feature, purpose or use of the relevant services. In re Gyulay, 820 F.2d 1216, 3 USPQ2d 1009 (Fed. Cir. 1987); In re Bed & Breakfast Registry, 791 F.2d 157, 229 USPQ 818 (Fed. Cir. 1986); In re MetPath Inc., 223 USPQ 88 (TTAB 1984); In re Bright-Crest, Ltd., 204 USPQ 591 (TTAB 1979); TMEP section 1209.01(b).

For the purpose of a Section 2(e)(1) analysis, a term need not describe all of the purposes, functions, characteristics or features of the goods and/or services to be merely descriptive.  In re Dial-a-Mattress Operating Corp., 240 F.3d 1341, 1346, 57 U.S.P.Q.2d 1807 (Fed. Cir. 2001).  It is enough if the term describes only one significant function, attribute or property.  In re Oppedahl & Larson LLP, 373 F.3d 1171, 1173, 71 USPQ2d 1370, 1371 (Fed. Cir. 2004) (“[A] mark may be merely descriptive even if it does not describe the ‘full scope and extent’ of the applicant’s goods or services.”) (quoting In re Dial-A-Mattress Operating Corp., 240 F.3d 1341, 1346, 57 USPQ2d 1807, 1812 (Fed. Cir. 2001)).

A mark that describes an intended user of a product or service is also merely descriptive within the meaning of Section 2(e)(1). Hunter Publishing Co. v. Caulfield Publishing Ltd., 1 USPQ2d 1996 (TTAB 1986); In re Camel Mfg. Co., Inc., 222 USPQ 1031 (TTAB 1984); In re Gentex Corp., 151 USPQ 435 (TTAB 1966).

When descriptive terms are combined, the determination of whether the composite mark also has a descriptive significance turns upon the question of whether the combination of terms evokes a new and unique commercial impression.  If each component retains its descriptive significance in relation to the goods or services, the combination results in a composite that is itself descriptive.  In re Oppedahl & Larson LLP, 373 F.3d 1171, 71 USPQ2d1370 (Fed. Cir. 2004); In re Gould Paper Corp., 834 F.2d 1017, 5 USPQ2d 1110, 1111-1112 (Fed. Cir. 1987); In re Tower Tech, Inc., 64 USPQ2d 1314 (TTAB 2002); In re Sun Microsystems Inc., 59 USPQ2d 1084 (TTAB 2001); In re Putman Publishing Co., 39 USPQ2d 2021 (TTAB 1996); In re Copytele Inc., 31 USPQ2d 1540 (TTAB 1994); In re Entenmann's Inc., 15 USPQ2d 1750 (TTAB 1990), aff'd per curiam, 928 F.2d 411 (Fed. Cir. 1991); In re Serv-A-Portion Inc., 1 USPQ2d 1915 (TTAB 1986); In re Wells Fargo & Co., 231 USPQ 95 (TTAB 1986); In re Uniroyal, Inc., 215 USPQ 716 (TTAB 1982); In re Bright-Crest, Ltd., 204 USPQ 591 (TTAB 1979).  TMEP §1209.03(d).

Terms such as “Corporation,” “Inc.” and “Ltd.” must be disclaimed because they merely specify applicant’s entity type and do not function as a trademark or service mark to indicate source.  TMEP §1213.03(d); see, e.g., In re Patent & Trademark Servs., Inc., 49 USPQ2d 1537, 1539-40 (TTAB 1998); In re The Paint Prods. Co., 8 USPQ2d 1863, 1866 (TTAB 1988).

The determination of whether a mark is merely descriptive is considered in relation to the identified goods, not in the abstract. In re Abcor Dev. Corp., 588 F.2d 811, 814, 200 USPQ 215, 218 (C.C.P.A. 1978); TMEP §1209.01(b).

For information on marks that are generic, see NotGeneric.com.

 



Sources of Evidence for USPTO Merely Descriptive Refusals

 (extracted from USPTO Office Actions)

Internet: Material obtained from the Internet is generally accepted as competent evidence in examination and ex parte proceedings.  See In re Rodale Inc., 80 USPQ2d 1696, 1700 (TTAB 2006) (Internet evidence accepted by the Board to show genericness); In re White, 80 USPQ2d 1654, 1662 (TTAB 2006) (Internet evidence accepted by the Board to show false connection); In re Joint-Stock Co. “Baik”, 80 USPQ2d 1305, 1308-09 (TTAB 2006) (Internet evidence accepted by the Board to show geographic significance); Fram Trak Indus. v. WireTracks LLC, 77 USPQ2d 2000, 2006 (TTAB 2006) (Internet evidence accepted by the Board to show relatedness of goods); In re Consol. Specialty Rest. Inc., 71 USPQ2d 1921, 1927-29 (TTAB 2004) (Internet evidence accepted by the Board to show that geographic location is well-known for particular goods); In re Gregory, 70 USPQ2d 1792, 1793 (TTAB 2004) (Internet evidence accepted by the Board to show surname significance); In re Fitch IBCA Inc., 64 USPQ2d 1058, 1060 (Internet evidence accepted by the Board to show descriptiveness); TBMP §1208.03; TMEP §710.01(b).

 

Text-search databases: Material obtained from computerized text-search databases, such as LEXISNEXIS®, is generally accepted as competent evidence in examination and ex parte proceedings.  See In re Boulevard Entm’t Inc., 334 F.3d 1336, 1342-43, 67 USPQ2d 1475, 1479 (Fed. Cir. 2003) (LEXISNEXIS® evidence accepted by the Court to show the offensive nature of a term); In re Giger, 78 USPQ2d 1405, 1407 (TTAB 2006) (LEXISNEXIS® evidence accepted by the Board to show surname significance); In re Lamb-Weston Inc., 54 USPQ2d 1190, 1192 (TTAB 2000) (LEXISNEXIS® evidence accepted by the Board to show descriptiveness); In re Wada, 48 USPQ2d 1689, 1690 (TTAB 1998) (LEXISNEXIS® evidence accepted by the Board to show that geographic location is well-known for particular goods); In re Decombe, 9 USPQ2d 1812, 1815 (TTAB 1988) (LEXISNEXIS® evidence accepted by the Board to show relatedness of goods in a likelihood of confusion determination); TBMP §1208.01; TMEP §710.01(a).


Third-party registrations: Third-party registrations featuring the same or similar goods and/or services as applicant’s goods and/or services are probative evidence on the issue of descriptiveness where the relevant word or term is disclaimed, registered under Trademark Act Section 2(f) based on a showing of acquired distinctiveness, or registered on the Supplemental Register.  See Sweats Fashions, Inc. v. Pannill Knitting Co., 833 F.2d 1560, 1564-65, 4 USPQ2d 1793, 1797 (Fed. Cir. 1987); In re Box Solutions Corp., 79 USPQ2d 1953, 1955 (TTAB 2006); In re Finisar Corp., 78 USPQ2d 1618, 1621 (TTAB 2006).  


Examples of Merely Descriptive Trademarks

Trademark or Service Mark found to be Merely Descriptive

Case citation

THEATL the equivalent of THE ATL, a common nickname for the city of Atlanta, merely descriptive of publications featuring news and information about Atlanta

In re Cox Enterprises Inc., 82 USPQ2d 1040, 1043 (TTAB 2007)


CONCURRENT PC-DOS merely descriptive of “computer programs recorded on disk” where relevant trade used the denomination “concurrent” as a descriptor of a particular type of operating system

In re Digital Research Inc., 4 USPQ2d 1242 (TTAB 1987)


DOC in DOC-CONTROL would be understood to refer to the “documents” managed by applicant’s software, not “doctor” as shown in dictionary definition

In re Polo Int’l Inc., 51 USPQ2d 1061 (TTAB 1999)

SMARTTOWER merely descriptive of highly automated cooling towers

In re Tower Tech, Inc., 64 USPQ2d 1314, 1317-18 (TTAB 2002)

OATNUT merely descriptive of bread containing oats and hazelnuts

In re Entenmann’s, Inc., 15 USPQ2d 1750, 1751 (TTAB 1990)

Where the applied-for mark shows the descriptive wording in stylized lettering BUT where the degree of stylization is not sufficiently striking, unique or distinctive so as to create a commercial impression separate and apart from the unregistrable components of the mark.  

In re Sambado & Son Inc., 45 USPQ2d 1312 (TTAB 1997); In re Bonni Keller Collections Ltd., 6 USPQ2d 1224 (TTAB 1987).


E-AUTODIAGNOSTICS merely descriptive of an electronic engine analysis system comprised of a hand-held computer and related computer software

In re SPX Corp., 63 USPQ2d 1592 (TTAB 2002)

E FASHION merely descriptive of software for consumer use in shopping via a global computer network and of electronic retailing services

 In re Styleclick.com Inc., 57 USPQ2d 1445 (TTAB 2000)

PATENTS.COM merely descriptive a feature of the goods for computer software for managing a database of records and for tracking the status of the records by means of the Internet.

In re Oppedahl & Larson LLP, 373 F.3d 1171, 1173, 71 USPQ2d 1370, 1371 (Fed. Cir. 2004)

ASPIRINA is sufficiently similar to generic term "aspirin" in appearance and meaning to be merely descriptive of analgesic products

In re Bayer Aktiengesellschaft, 82 USPQ2d 1828 (Fed. Cir. 2007)

1-888-M-A-T-R-E-S-S mark is merely descriptive of telephone shop-at-home mattress retail services

In re Dial-A-Mattress Operating Corp., 57 USPQ2d 1807 (Fed. Cir. 2001)

BATTLECAM mark is merely descriptive of computer game software

In re Petroglyph Games Inc., 91 USPQ2d 1332 (TTAB 2009)

URBANHOUZING mark is merely descriptive of real estate services

In re Carlson, 91 USPQ2d 1198 (TTAB 2009)

DEC mark is merely descriptive of batteries deriving power from nuclear decay processes, and related services, since record demonstrates that "DEC" is routinely used as abbreviation for term "direct energy conversion,"and that term describes power source and efficient way of transforming power into electricity

 In re BetaBatt Inc., 89 USPQ2d 1152 (TTAB 2008)

GRAND CANYON WEST is merely descriptive, and geographically descriptive, of transportation and tourist services on west rim of Grand Canyon

Grand Canyon West Ranch LLC v. Hualapai Tribe, 88 USPQ2d 1501 (TTAB 2008

REDUCER is generic for flow meters for measuring flow through pipes and vortex flow meters

In re Rosemount Inc., 86 USPQ2d 1436 (TTAB 2008)

The Flavor of food products has been found to be merely descriptive

CREME DE MENTHE merely descriptive of laminated chocolate mint

In re Andes Candies Inc., 178 USPQ 156 (C.C.P.A. 1973)

CHOCOLATE FUDGE generic for chocolate fudge flavored diet soda


A. J. Canfield Co. v. Honickman, 808 F.2d 291 USPQ2d 1364 (3d Cir.1986)

CHUNKY CHEESE merely descriptive of cheese-flavored salad dressing


In re Int’l Salt Co., 171 USPQ 832 (TTAB 1971)

Examples of NOT Merely Descriptive Trademarks


THE FARMACY is not merely descriptive of retail store services featuring natural herbs and organic products, and integrated health services provided at retail locations

In re Tea and Sympathy Inc., 88 USPQ2d 1062 (TTAB 2008)

SUGAR NO. 14, SUGAR NO. 11 and COTTON NO. 2 are not merely descriptive of commodity futures exchange and related commodity trading services, since there is no evidence that numerical elements "11," "14,"or "2" in marks have any particular meaning other than to identify futures contracts uniquely associated with applicant's exchange

In re ICE Futures U.S. Inc., 85 USPQ2d 1664 (TTAB 2008)


Answering Office Actions

There are no canned answers on how to answer office actions because many refusals are not ‘typical’ refusals. Registration of a mark is specific to the facts involved. Some refusals are dependent not only on the trademark being proposed (very fact specific) but also on how the application is filled out, especially the specimens submitted (Many specimens do not show the proposed trademark to Function As A Mark.) . Sometimes just a better specimen is all it takes. Sometimes a better identification of goods and services. Sometimes parts of the trademark must be disclaimed. Sometimes the applicable law must be examined and arguments made that are very specific to the actual words and designs being proposed.  Sometimes the only choice is amending to the Supplemental Register. It depends on what is being rejected and why.


Not every office action has an answer, some proposed trademark applications just do not comply with U.S. Trademark Law and do not qualify for common law protection because they  are conflicting marks, lack distinctiveness or lack acquired secondary meaning or the capability of acquiring secondary meaning. Sometimes a new application can solve the problem, sometimes the mark must be incorporated with other elements to add distinctiveness.


If your trademark has value and you want to preserve the trade identity rights that you have already invested and secure more rights through federal registration, it may be best to hire a legal representative to answer your office action as prescribed within the USPTO Trademark Rules and Procedures. See Why Should I Have A Trademark Attorney Answer My Office Action if you have already applied and been refused.




Federal USPTO Trademark Registration

There are many statutory advantages of Federal Registration for trademarks on the Principal Register above and beyond those provided by common law including:

A few of these advantages apply for marks on the Supplemental Register as well. See Comparison of Principal Register with Supplemental Register for more information.



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