Descriptiveness is One of the Most Common Refusals
The two major reasons that courts have found for not protecting descriptive marks are: (1) to prevent the owner of a mark from inhibiting competition in the sale of particular goods or services; and (2) to avoid the possibility of costly infringement suits brought by the registrant. This enables businesses and competitors to have the freedom to use common descriptive language when merely describing their own goods or services to the public in advertising and marketing materials.
TMEP 1209 Refusal on Basis of Descriptiveness
Trademark Manual of Examining Procedure (TMEP)
October 2018
TMEP 1209 Refusal on Basis of Descriptiveness
15 U.S.C. §1052 (Extract)
No trademark by which the goods of the applicant may be distinguished from the goods of others shall be refused registration on the principal register on account of its nature unless it . . . (e) Consists of a mark which, (1) when used on or in connection with the goods of the applicant is merely descriptive or deceptively misdescriptive of them . . . .
Matter that "merely describes" the goods or services on or in connection with which it is used is not registrable on the Principal Register. As noted in In re Abcor Dev. Corp., 588 F.2d 811, 813, 200 USPQ 215, 217 (C.C.P.A. 1978) :
The major reasons for not protecting such marks are: (1) to prevent the owner of a mark from inhibiting competition in the sale of particular goods; and (2) to maintain freedom of the public to use the language involved, thus avoiding the possibility of harassing infringement suits by the registrant against others who use the mark when advertising or describing their own products.
TMEP 1209.01 Distinctiveness/Descriptiveness Continuum
With regard to trademark significance, matter may be categorized along a continuum, ranging from marks that are highly distinctive to matter that is a generic name for the goods or services. The degree of distinctiveness – or, on the other hand, descriptiveness – of a designation can be determined only by considering it in relation to the specific goods or services. Remington Products, Inc. v. N. Am. Philips Corp., 892 F.2d 1576, 1580, 13 USPQ2d 1444, 1448 (Fed. Cir. 1990) (the mark must be considered in context, i.e. , in connection with the goods).
At one extreme are marks that, when used in relation to the goods or services, are completely arbitrary or fanciful. Next on the continuum are suggestive marks, followed by merely descriptive matter. Finally, generic terms for the goods or services are at the opposite end of the continuum from arbitrary or fanciful marks. As stated in H. Marvin Ginn Corp. v. Int'l Ass'n of Fire Chiefs, Inc., 782 F.2d 987, 989, 228 USPQ 528, 530 (Fed. Cir. 1986), quoting Weiss Noodle Co. v. Golden Cracknel & Specialty Co., 290 F.2d 845, 847, 129 USPQ 411, 413 (C.C.P.A. 1961), "[t]he name of a thing is in fact the ultimate in descriptiveness."
Fanciful, arbitrary, and suggestive marks, often referred to as "inherently distinctive" marks, are registrable on the Principal Register without proof of acquired distinctiveness. See TMEP §1209.01(a).
Marks that are merely descriptive of the goods or services may not be registered on the Principal Register absent a showing of acquired distinctiveness under 15 U.S.C. §1052(f). See TMEP §1209.01(b) regarding merely descriptive marks, and TMEP §§1212–1212.10 regarding acquired distinctiveness. Merely descriptive marks may be registrable on the Supplemental Register in applications under §1 or §44 of the Trademark Act. 15 U.S.C. §1091.
Matter that is generic for the goods or services is not registrable on either the Principal or the Supplemental Register under any circumstances. See TMEP §§1209.01(c)–(c)(iii).
TMEP 1209.01(a) Fanciful, Arbitrary, and Suggestive Marks
Fanciful marks comprise terms that have been invented for the sole purpose of functioning as a trademark or service mark. Such marks comprise words that are either unknown in the language (e.g., PEPSI, KODAK, and EXXON) or are completely out of common usage (e.g., FLIVVER).
Arbitrary marks comprise words that are in common linguistic use but, when used to identify particular goods or services, do not suggest or describe a significant ingredient, quality, or characteristic of the goods or services (e.g., APPLE for computers; OLD CROW for whiskey). See , e.g., Palm Bay Imports, Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 1372, 73 USPQ2d 1689, 1692 (Fed. Cir. 2005) (VEUVE – meaning WIDOW in English – held to be "an arbitrary term as applied to champagne and sparkling wine, and thus conceptually strong as a trademark"); Nautilus Grp., Inc. v. Icon Health & Fitness, Inc., 372 F.3d 1330, 1340, 71 USPQ2d 1173, 1180 (Fed. Cir. 2004) (defining an arbitrary mark as "a known word used in an unexpected or uncommon way").
Suggestive marks are those that, when applied to the goods or services at issue, require imagination, thought, or perception to reach a conclusion as to the nature of those goods or services. Thus, a suggestive term differs from a descriptive term, which immediately tells something about the goods or services. See In re George Weston Ltd., 228 USPQ 57 (TTAB 1985) (SPEEDI BAKE for frozen dough found to fall within the category of suggestive marks because it only vaguely suggests a desirable characteristic of frozen dough, namely, that it quickly and easily may be baked into bread); In re The Noble Co., 225 USPQ 749 (TTAB 1985) (NOBURST for liquid antifreeze and rust inhibitor for hot-
Incongruity is a strong indication that a mark is suggestive rather than merely descriptive. In re Tennis in the Round Inc., 199 USPQ 496, 498 (TTAB 1978) (TENNIS IN THE ROUND held not merely descriptive for providing tennis facilities, the Board finding that the association of applicant's marks with the phrase "theater-
Suggestive marks, like fanciful and arbitrary marks, are registrable on the Principal Register without proof of secondary meaning. See Nautilus Grp., Inc. v. Icon Health & Fitness, Inc., 372 F.3d 1330, 1340, 71 USPQ2d 1173, 1180 (Fed. Cir. 2004). Therefore, a designation does not have to be devoid of all meaning in relation to the goods/services to be registrable. If, after conducting independent research, it is unclear to the examining attorney whether a term in a mark has meaning in the relevant industry, the examining attorney must make an inquiry of the applicant, pursuant to 37 C.F.R. §2.61(b). If the examining attorney determines that the term is arbitrary or fanciful, the examining attorney may enter a Note to the File in the record indicating that research was conducted regarding the meaning of the term in the relevant industry, without stating any legal opinions or conclusions.
TMEP 1209.01(b) Merely Descriptive Marks
To be refused registration on the Principal Register under §2(e)(1) of the Trademark Act, 15 U.S.C. §1052(e)(1), a mark must be merely descriptive or deceptively misdescriptive of the goods or services to which it relates. A mark is considered merely descriptive if it describes an ingredient, quality, characteristic, function, feature, purpose, or use of the specified goods or services. See In re TriVita, Inc., 783 F.3d 872, 114 USPQ2d 1574 (Fed. Cir. 2015) (NOPALEA held descriptive of dietary and nutritional supplements); In re Gyulay, 820 F.2d 1216, 3 USPQ2d 1009 (Fed. Cir. 1987) (APPLE PIE held merely descriptive of potpourri); In re Bed & Breakfast Registry, 791 F.2d 157, 229 USPQ 818 (Fed. Cir. 1986) (BED & BREAKFAST REGISTRY held merely descriptive of lodging reservations services); In re MetPath Inc., 223 USPQ 88 (TTAB 1984) (MALE-
The examining attorney is not required to prove that others have used the mark at issue or that they need to use it; the correct test is whether the mark conveys an immediate idea of an ingredient, quality, characteristic, feature, function, purpose or use of the goods. In re Fat Boys Water Sports LLC, 118 USPQ2d 1511, 1514 (TTAB 2016); see also In re Walker Mfg. Co., 359 F. 2d 474, 149 USPQ 528 (CCPA 1966); ("The question . . . is not whether the Board or others may or would utilize ‘CHAMBERED PIPE’ to describe applicant's goods, but whether this designation does, in fact, describe such goods. That there are other words which others may employ to describe or define applicant's goods does not, in any way, lessen the descriptive character of the words ‘CHAMBERED PIPE.’ …") (quoting Board decision with approval); KP Permanent Make-
The determination of whether a mark is merely descriptive must be made in relation to the goods or services for which registration is sought, not in the abstract. In re Chamber of Commerce, 675 F.3d at 1300, 102 USPQ2d at 1219; In re Bayer, 488 F.3d at 964, 82 USPQ2d at 1831. This 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 average purchaser of the goods or services in the marketplace. See In re Chamber of Commerce, 675 F.3d at 1300, 102 USPQ2d at 1219; In re Bayer, 488 F.3d at 964, 82 USPQ2d at 1831; In re Nett Designs, Inc., 236 F.3d 1339, 1342 (Fed. Cir. 2001); In re Omaha Nat’l Corp., 819 F.2d 1117, 2 USPQ2d 1859 (Fed. Cir. 1987); In re Abcor Dev. Corp., 588 F.2d 811, 200 USPQ 215 (C.C.P.A. 1978); In re Datapipe, Inc., 111 USPQ2d 1330 (TTAB 2014) . Sources for considering the context in which the mark is or may be used include websites, publications, labels, packages, advertising material, and explanatory text on specimens for the goods and services. See In re N. C. Lottery, 866 F.3d 1363, 123 USPQ2d 1707, 1710 (Fed. Cir. 2017); In re Nett Designs, Inc., 236 F.3d at 1342; In re Abcor Dev. Corp., 588 F.2d 811 at 814.
It is not necessary that a term describe all of the purposes, functions, characteristics, or features of a product to be considered merely descriptive; it is enough if the term describes one significant function, attribute, or property. In re Chamber of Commerce, 675 F.3d at 1300, 102 USPQ2d at 1219. Similarly, the mark need not describe all the goods and services identified, as long as it merely describes one of them. See In re Stereotaxis Inc., 429 F.3d 1039, 1041, 77 USPQ2d 1087, 1089 (Fed. Cir. 2005) ("[T]he Trademark Office may require a disclaimer as a condition of registration if the mark is merely descriptive for at least one of the products or services involved."); 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," citing In re Dial-
A term also may be considered merely descriptive if the identified services fall within a subset of services indicated by the term. See In re Amer. Soc’y of Clinical Pathologists, Inc., 442 F.2d 1404, 1406-
The great variation in facts from case to case prevents the formulation of specific rules for specific fact situations. Each case must be decided on its own merits. See In re Ampco Foods, Inc., 227 USPQ 331 (TTAB 1985) ; In re Venturi, Inc.,197 USPQ 714 (TTAB 1977).
See TMEP §§1209.03–1209.03(u) regarding factors that often arise in determining whether a mark is merely descriptive or generic.
See also TMEP §§1213–1213.11 concerning disclaimer of merely descriptive matter within a mark.
TMEP 1209.01(c) Generic Terms
Generic terms are terms that the relevant purchasing public understands primarily as the common or class name for the goods or services. In re Dial-
Generic terms are refused registration on the Principal Register under Trademark Act §§1, 2, and 45, for trademarks, and §§1, 2, 3, and 45, for service marks. See 15 U.S.C. §§1051, 1052, 1053, 1127. The statutory basis for refusal on the Supplemental Register is §§ 23(c) and 45. See 15 U.S.C. §§1091(c), 1127.
When a mark is comprised entirely of generic wording and some or all of the wording in the mark is the phonetic equivalent of the generic wording, the entire mark may not be disclaimed, even in the proper spelling, and approved for registration on the Supplemental Register. A disclaimer does not render an otherwise unregistrable generic mark registrable. See TMEP §§1213.06 and 1213.08(c).
TMEP 1209.01(c)(i) Test
A mark is generic if its primary significance to the relevant public is the class or category of goods or services on or in connection with which it is used. See H. Marvin Ginn Corp. v. Int’l Ass’n of Fire Chiefs, Inc., 782 F.2d 987, 989-
(1) What is the genus of goods or services at issue?
(2) Does the relevant public understand the designation primarily to refer to that genus of goods or services?
H. Marvin Ginn Corp. v. Int'l Ass’n of Fire Chiefs, Inc., 782 F.2d at 990, 228 USPQ at 530.
It is not necessary to show that the relevant public uses the term to refer to the genus. The correct inquiry is whether the relevant public would understand the term to be generic. In re 1800Mattress.com IP LLC, 586 F.3d 1359, 92 USPQ2d 1682, 1685 (Fed. Cir. 2009).
The genus of the goods and/or services may be defined by an applicant’s identification of goods and/or services. See In re Cordua Rests., Inc., 823 F.3d 594, 602, 118 USPQ2d 1632, 1636 (Fed. Cir. 2016) (characterizing as the "correct approach" the Board’s conclusion that the genus of the services at issue was adequately defined by the wording "restaurant services" in applicant’s identification of services). The relevant public for a genericness determination refers to the purchasing or consuming public for the identified goods and/or services. Sheetz of Del., Inc. v. Doctor’s Assocs. Inc., 108 USPQ2d 1341, 1351 (TTAB 2013) (citing Magic Wand Inc. v. RDB Inc., 940 F.2d 638, 641, 19 USPQ2d 1551, 1553 Fed. Cir. 1991)).
The examining attorney has the burden of proving that a term is generic by clear evidence. In re Nordic Naturals, Inc., 755 F.3d 1340, 1344, 111 USPQ2d 1495, 1498 (Fed. Cir. 2014) (finding the evidence reflected use of CHILDREN’S DHA in a generic manner rather than as third-
There can be more than one generic term for a particular genus of goods or services. Any term that the relevant public understands to refer to the genus is generic. In re 1800Mattress.com IP LLC, 586 F.3d 1359, 92 USPQ2d 1682, 1685 (Fed. Cir. 2009); see also In re Meridian Rack & Pinion, 114 USPQ2d 1462 (TTAB 2015) (holding BUYAUTOPARTS.COM generic for on-
The test for genericness is the same whether the mark is a compound term or a phrase, and the examining attorney should include, if available, evidence showing use of the mark as a whole in the record. See Princeton Vanguard, LLC v. Frito-
However, the Court of Appeals for the Federal Circuit has expressly limited the holding in Gould to "compound terms formed by the union of words" where the public understands the individual terms to be generic for a genus of goods or services, and the joining of the individual terms into one compound word lends "no additional meaning to the term." In re Dial-
In Dial-
With respect to Internet domain names, as with other marks, even if the evidence shows that the individual components that make up the proposed mark are generic, one must determine whether joining the individual terms creates a composite that is itself generic. In very rare instances, the addition of a top-
The Court also criticized the Board for relying only on evidence that the separate terms "steel building" or "steel buildings" are generic, where the terms were joined together in the subject mark:
The record does not contain any examination of dictionary definitions or other sources that might have indicated that joining the separate words "steel" and "building" would create a word that, in context, would be generic. The Board merely cited evidence that showed that when customers or competitors talked about a steel building, they used the phrase "steel building." That evidence shows that "steel building" is generic, but does not address directly the composite term STEELBUILDING.
415 F.3d at 1298–99, 75 USPQ2d at 1423.
Thus, to establish that a proposed mark is generic, the examining attorney must show that the relevant public would understand the mark as a whole to have generic significance. See 1800Mattress.com, 586 F.3d at 1363, 92 USPQ2d at 1684 (affirming Board’s conclusion that MATTRESS.COM was generic for "online retail store services in the field of mattresses, beds, and bedding," where the Board considered each of the constituent words, "mattress" and ".com" and determined that they were both generic, then considered the mark as a whole and determined that the combination added no new meaning, relying on the prevalence of the term "mattress.com" in the website addresses of several online mattress retailers who provide the same services as the applicant); In re Hotels.com, L.P., 573 F.3d 1300, 91 USPQ2d 1532 (Fed. Cir. 2009) (HOTELS.COM is generic for "providing information for others about temporary lodging; [and] travel agency services, namely, making reservations and bookings for temporary lodging for others by means of telephone and the global computer network," based on various definitions of "hotel," printouts from hotel reservation search websites showing "hotels" as the equivalent of or included within "temporary lodging," as well as evidence from applicant’s website); In re DNI Holdings Ltd., 77 USPQ2d 1435 (TTAB 2005) (SPORTSBETTING.COM held generic for "provision of casino games on and through a global computer network wherein there are no actual monetary wagers; provision of contests and sweepstakes on and through a global computer network; providing a website on and through a global computer network featuring information in the fields of gaming, athletic competition and entertainment . . .," where the record included multiple examples of use of the terms "sports betting" as well as the joined terms "sportsbetting" by both applicant and its competitors to refer to both sports wagering and providing information about sports wagering, and there was no indication of a realistic alternative connotation of the compound term. See also TMEP §§1209.03(m) and 1215.05 regarding domain names comprising generic matter.)
TMEP 1209.01(c)(ii) Terminology
As specifically amended by the Trademark Law Revision Act of 1988, §14 of the Trademark Act provides for the cancellation of a registration of a mark at any time if the mark "becomes the generic name for the goods or services, or a portion thereof, for which it is registered . . . ." 15 U.S.C. §1064(3). Previously, that provision had pertained to a mark that "becomes the common descriptive name of an article or substance . . . ." Cases previously distinguished between generic names and "apt or common descriptive names," which referred to matter that, while not characterized as "generic," had become so associated with the product that it was recognized in the applicable trade as another name for the product, serving as a term of art for all goods of that description offered by different manufacturers rather than identifying the goods of any one producer. See Questor Corp. v. Dan Robbins & Assocs., Inc., 199 USPQ 358, 364 (TTAB 1978) , aff’d, 599 F.2d 1009, 202 USPQ 100 (C.C.P.A. 1979). In addition, the Trademark Law Revision Act of 1988 amended §15 of the Trademark Act to adopt the term "generic name" to refer to generic designations.15 U.S.C. §1065(4). In view of the amendment of §§14 and 15, a distinction between "generic" names and "apt or common descriptive" names is inappropriate. Rather, the terminology of the Act must be consistently used, e.g., in refusals to register matter that is a generic name for the goods or services, or a portion thereof. See In re K-
Similarly, cases have distinguished between "generic" terms and terms that were deemed "so highly descriptive as to be incapable of exclusive appropriation as a trademark." See In re Harcourt Brace Jovanovich, Inc., 222 USPQ 820 (TTAB 1984) (LAW & BUSINESS held so highly descriptive as to be incapable of distinguishing applicant’s services of arranging and conducting seminars in the field of business law); In re Industrial Relations Counselors, Inc., 224 USPQ 309 (TTAB 1984) (INDUSTRIAL RELATIONS COUNSELORS, INC. held an apt name or so highly descriptive of educational services in the industrial relations field that it is incapable of exclusive appropriation and registration, notwithstanding de facto source recognition capacity). Regarding the terminology used in refusing registration of such matter, the Trademark Trial and Appeal Board noted as follows in In re Women’s Publ'g Co. Inc., 23 USPQ2d 1876, 1877 n.2 (TTAB 1992):
The Examining Attorney’s refusal that applicant’s mark is "so highly descriptive that it is incapable of acting as a trademark" is not technically a statutory ground of refusal. Where an applicant seeks registration on the Principal Register, the Examining Attorney may refuse registration . . . on the basis that the mark sought to be registered is generic.
In essence, the Board was merely emphasizing the need to use precise statutory language in stating grounds for refusal. While the decision does not explicitly bar the use of the terminology "so highly descriptive that it is incapable of acting as a trademark" under all circumstances, the case illustrates that the use of this terminology may lead to confusion and should be avoided. It is particularly important in this context to use the precise statutory language to avoid doctrinal confusion. See generally Linda McLeod, The Status of So Highly Descriptive and Acquired Distinctiveness, 82 Trademark Rep. 607 (1992). Therefore, examining attorneys must not state that a mark is "so highly descriptive that it is incapable of acting as a trademark" in issuing refusals. Rather, in view of the amendments of the Trademark Act noted above, the terminology "generic name for the goods or services" must be used in appropriate refusals, and use of the terminology "so highly descriptive" must be discontinued when referring to incapable matter.
This does not mean that designations that might formerly have been categorized as "so highly descriptive" should not be regarded as incapable. The Court of Appeals for the Federal Circuit has specifically stated that "a phrase or slogan can be so highly laudatory and descriptive as to be incapable of acquiring distinctiveness as a trademark." In re Boston Beer Co. L.P., 198 F.3d 1370, 1373, 53 USPQ2d 1056, 1058 (Fed. Cir. 1999) (THE BEST BEER IN AMERICA for beer and ale held to be "so highly laudatory and descriptive of the qualities of [applicant’s] product that the slogan does not and could not function as a trademark to distinguish Boston Beer’s goods and serve as an indication of origin").
The Court of Appeals for the Federal Circuit has also stated that "[t]he critical issue in genericness cases is whether members of the relevant public primarily use or understand the term sought to be registered to refer to the genus of goods or services in question." H. Marvin Ginn Corp. v. Int'l Ass’n of Fire Chiefs, Inc., 782 F.2d 987, 989–90, 228 USPQ 528, 530 (Fed. Cir. 1986). Also, note that it is entirely appropriate to consider whether a particular designation is "highly descriptive" in evaluating registrability under §2(f), or in similar circumstances.
The expression "generic name for the goods or services" is not limited to noun forms but also includes "generic adjectives," that is, adjectives that refer to a genus, species, category, or class of goods or services. In re Serial Podcast, LLC, 126 USPQ2d 1061, 1067 (TTAB 2018) (holding SERIAL generic for an ongoing audio program featuring investigative reporting, interviews, and documentary storytelling); See Sheetz of Del., Inc. v. Doctor’s Assocs. Inc., 108 USPQ2d 1341 (TTAB 2013) (holding FOOTLONG generic for sandwiches, excluding hot dogs); In re Reckitt & Colman, N. Am. Inc., 18 USPQ2d 1389 (TTAB 1991) (holding PERMA PRESS generic for soil and stain removers for use on permanent press products). Similarly, evidence showing that a term in singular form is generic typically will suffice to show that the plural also is generic. See In re Cordua Rests., Inc., 823 F.3d 594, 603, 118 USPQ2d 1632, 1637 (Fed. Cir. 2016) ("While each trademark must always be evaluated individually, pluralization commonly does not alter the meaning of a mark."); In re Hotels.com, L.P., 573 F.3d 1300, 91 USPQ2d 1532, 1535 (Fed. Cir. 2009) (dictionary and other evidence of meaning of "hotel" sufficed to show that the plural form in HOTELS.COM was generic for the information and reservation services at issue).
TMEP 1209.01(c)(iii) Generic Matter: Case References
Marks Held Generic
In the following cases, the matter sought to be registered was found generic: In re Cordua Rests., Inc., 823 F.3d 594, 118 USPQ2d 1632 (Fed. Cir. 2016) (CHURRASCOS generic for restaurant services); In re Nordic Naturals, Inc., 755 F.3d 1340, 111 USPQ2d 1495 (Fed. Cir. 2014) (CHILDREN’S DHA generic for "nutritional supplements containing DHA"); In re 1800Mattress.com IP, LLC, 586 F.3d 1359, 92 USPQ2d 1682 (Fed. Cir. 2009) (MATTRESS.COM generic for "online retail store services in the field of mattresses, beds, and bedding"); In re Hotels.com, L.P., 573 F.3d 1300, 91 USPQ2d 1532 (Fed. Cir. 2009) (HOTELS.COM generic for "providing information for others about temporary lodging; [and] travel agency services, namely, making reservations and bookings for temporary lodging for others by means of telephone and the global computer network"); In re Reed Elsevier Properties Inc., 482 F.3d 1376, 82 USPQ2d 1378 (Fed. Cir. 2007) (LAWYERS.COM generic for "providing an online interactive database featuring information exchange in the fields of law, legal news and legal services"); In re Boston Beer Co. L.P., 198 F.3d 1370, 53 USPQ2d 1056, 1058 (Fed. Cir. 1999) (holding THE BEST BEER IN AMERICA for beer and ale to be "so highly laudatory and descriptive of the qualities of [applicant’s] product that the slogan does not and could not function as a trademark to distinguish Boston Beer’s goods and serve as an indication of origin"); In re Gould Paper Corp., 834 F.2d 1017, 5 USPQ2d 1110 (Fed. Cir. 1987) (SCREENWIPE generic as applied to premoistened antistatic cloths for cleaning computer and television screens); In re Northland Aluminum Products, Inc., 777 F.2d 1556, 227 USPQ 961 (Fed. Cir. 1985) (BUNDT, a term that designates a type of cake, generic for ring cake mix); Frito-
Marks Held Not Generic
In the following cases, the matter sought to be registered was found not to be generic: In re Steelbuilding.com, 415 F.3d 1293, 75 USPQ2d 1420 (Fed. Cir. 2005) (STEELBUILDING.COM not generic for "computerized on line retail services in the field of pre-
TMEP 1209.02 Procedure for Descriptiveness and/or Genericness Refusal
The examining attorney must consider the evidence of record to determine whether a mark is merely descriptive or whether it is suggestive or arbitrary. See In re Noble Co., 225 USPQ 749, 750 (TTAB 1985) . The examining attorney may request that the applicant submit additional explanation or materials to clarify the meaning of the mark or the nature of the goods or services. 37 C.F.R. §2.61(b); TMEP §814; see In re AOP LLC, 107 USPQ2d 1644, 1650-
In all cases, the examining attorney should try to make the Office action as complete as possible, so that the applicant may respond appropriately.
TMEP 1209.02(a) Descriptive Marks – Advisory Statement That Mark Appears to Be Generic
A designation that is merely descriptive must be refused registration under §2(e)(1) of the Trademark Act, 15 U.S.C. §1052(e)(1). The examining attorney must not initially issue a refusal in an application for registration on the Principal Register on the ground that a mark is a generic name for the goods or services, unless the applicant asserts that the mark has acquired distinctiveness under §2(f) in the application itself. See TMEP §1209.02(b). Even if it appears that the mark is generic, the proper basis for the initial refusal is §2(e)(1) descriptiveness. If there is strong evidence that the proposed mark is generic, a statement that the subject matter appears to be a generic name for the goods or services should be included in conjunction with the refusal on the ground that the matter is merely descriptive. It has been said that a generic term is "the ultimate in descriptiveness." H. Marvin Ginn Corp. v. Int'l Ass’n of Fire Chiefs, Inc., 782 F.2d 987, 989, 228 USPQ 528, 530 (Fed. Cir. 1986), quoting Weiss Noodle Co. v. Golden Cracknel & Specialty Co., 290 F.2d 845, 847, 129 USPQ 411, 413 (C.C.P.A. 1961).
If, on the other hand, the mark appears to be capable, the examining attorney should provide appropriate advice concerning a possible amendment to the Supplemental Register or assertion of a claim of acquired distinctiveness. See TMEP §1102.03 concerning ineligibility of the proposed mark in a §1(b) application for the Supplemental Register prior to filing an acceptable amendment to allege use under 15 U.S.C. §1051(c) or statement of use under 15 U.S.C. §1051(d). The examining attorney should also advise the applicant regarding any incapable portion of the mark for which a disclaimer would be required in connection with an amendment to the Supplemental Register or assertion of a claim of acquired distinctiveness. If the applicant responds by amending to the Supplemental Register or asserting acquired distinctiveness, but does not submit the disclaimer, the examining attorney must issue a nonfinal Office action. Prior to the applicant’s amendment, information regarding the disclaimer requirement is merely advisory. Failure to submit the disclaimer thus would constitute a new issue requiring a nonfinal Office action.
If the record is unclear as to whether the designation is capable of functioning as a mark, the examining attorney must refrain from giving any advisory statement. In general, the examining attorney should make every effort to apprise applicants as early as possible of the prospects for registration through appropriate amendments, if feasible. NOTE: A mark in a §66(a) application cannot be registered on the Supplemental Register under any circumstances. 15 U.S.C. §1141h(a)(4); 37 C.F.R. §§2.47(c) and 2.75(c).
If, in response to a first-
TMEP 1209.02(a)(i) Amendment to Supplemental Register in Response to Office Action
If the applicant responds to a §2(e)(1) descriptiveness refusal by amending its application to the Supplemental Register, this amendment presents a new issue requiring consideration by the examining attorney (unless the amendment is irrelevant to the outstanding refusal). See TMEP §714.05(a)(i). If the examining attorney determines that the designation is a generic name for the applicant’s goods or services, the examining attorney must then issue a nonfinal action refusing registration on the Supplemental Register. The statutory basis for such a refusal is §§23(c) and 45 of the Trademark Act. See 15 U.S.C. §§1091(c), 1127.
See TMEP §§815–816.05 concerning applications for registration on the Supplemental Register.
TMEP 1209.02(a)(ii) Assertion of §2(f) in Response to Office Action
If the applicant responds to a §2(e)(1) descriptiveness refusal by amending its application to assert acquired distinctiveness under §2(f), this also raises a new issue. See TMEP §§714.05(a)(i) and 1212.02(h). If the examining attorney determines that the designation is a generic name for the applicant’s goods or services, the examining attorney must issue a new nonfinal action refusing registration under §§1, 2, and 45 (§§1, 2, 3, and 45 for service marks) on the basis that the mark is generic and stating that the claim of acquired distinctiveness is insufficient to overcome the refusal. The examining attorney must also maintain and continue, in the alternative, the refusal under §2(e)(1) that the mark is merely descriptive and must separately explain why the showing of acquired distinctiveness is insufficient to overcome the descriptiveness refusal even if the mark is ultimately deemed not to be generic. As the Trademark Trial and Appeal Board noted in In re Women’s Publ'g Co. Inc., 23 USPQ2d 1876, 1877 n.2 (TTAB 1992) :
The Examining Attorney’s refusal that applicant’s mark is "so highly descriptive that it is incapable of acting as a trademark" is not technically a statutory ground of refusal. Where an applicant seeks registration on the Principal Register, the Examining Attorney may refuse registration under Section 2(e)(1) of the Act, 15 USC 1052(e)(1), on the basis that the mark sought to be registered is generic. See , e.g., In re Northland Aluminum Products Inc., 777 F.2d 1556, 227 USPQ 961, 962 (Fed. Cir. 1985), Weiss Noodle Co. v. Golden Cracknel & Specialty Co., 290 F.2d 845, 129 USPQ 411, 413 (C.C.P.A. 1961), In re Deutsche Airbus GmbH, 224 USPQ 611 (TTAB 1984) and Conde Nast Publ'ns Inc. v. Redbook Publ'g Co., 217 USPQ 356, 360 (TTAB 1983). Alternatively, an Examining Attorney may refuse registration under the same section if he or she believes that the mark is merely descriptive and that applicant’s showing of acquired distinctiveness is unpersuasive of registrability.
If the examining attorney fails to separately address the sufficiency of the §2(f) evidence, this may be treated as a concession that the evidence would be sufficient to establish distinctiveness if the mark is ultimately found not to be generic. See In re Country Music Ass’n, 100 USPQ2d 1824, 1834 (TTAB 2011) (interpreting the examining attorney’s silence on the sufficiency of the evidence submitted in support of applicant’s claim of acquired distinctiveness "as a concession that, if the term is not generic, the record evidence is sufficient to show acquired distinctiveness under Section 2(f)"). Compare In re Dietrich,91 USPQ2d 1622, 1625 (TTAB 2009), in which the Board held that an examining attorney had "effectively conceded that, assuming the mark is not functional, applicant’s evidence is sufficient to establish that the mark had acquired distinctiveness," where the examining attorney rejected the applicant’s §2(f) claim on the ground that applicant’s bicycle wheel configuration was functional and thus unregistrable even under §2(f), but did not specifically address the sufficiency of the §2(f) evidence or the question of whether the mark would be registrable under §2(f) if it were ultimately found to be nonfunctional.
Therefore, the descriptiveness refusal must be maintained, in the alternative, in the event that the mark is ultimately determined not to be generic. See TMEP §§1212–1212.10 regarding distinctiveness under §2(f), and TMEP §1212.02(i) regarding assertion of §2(f) claims with respect to generic matter. See , e.g., In re Candy Bouquet Int’l Inc., 73 USPQ2d 1883 (TTAB 2004); In re Am. Acad. of Facial Plastic & Reconstructive Surgery, 64 USPQ2d 1748 (TTAB 2002); In re A La Vieille Russie Inc., 60 USPQ2d 1895 (TTAB 2001) .
TMEP 1209.02(b) Descriptive and Possibly Generic Marks – Assertion of §2(f) in Application
If the applicant asserts acquired distinctiveness under §2(f) in the original application and the examining attorney determines that the applied-
If the examining attorney ultimately issues a final refusal under §§1, 2, and 45, or §§1, 2, 3, and 45, on the ground that the mark is generic, the descriptiveness refusal under §2(e)(1), including an explanation of the insufficiency of any §2(f) evidence, must also be made final, in the alternative, in case the mark is ultimately determined not to be generic. See , e.g., In re Candy Bouquet Int’l, 73 USPQ2d 1883 (TTAB 2004); In re Am. Acad. of Facial Plastic & Reconstructive Surgery, 64 USPQ2d 1748 (TTAB 2002); In re A La Vieille Russie Inc., 60 USPQ2d 1895 (TTAB 2001).
If the examining attorney fails to separately address the sufficiency of the §2(f) evidence, this may be treated as a concession that the evidence would be sufficient to establish distinctiveness if the mark is ultimately found not to be generic. See In re Country Music Ass’n, 100 USPQ2d 1824, 1834 (TTAB 2011) (interpreting the examining attorney’s silence on the sufficiency of the evidence submitted in support of applicant’s claim of acquired distinctiveness "as a concession that, if the term is not generic, the record evidence is sufficient to show acquired distinctiveness under Section 2(f)"). Compare In re Dietrich, 91 USPQ2d 1622, 1625 (TTAB 2009) , in which the Board held that an examining attorney had "effectively conceded that, assuming the mark is not functional, applicant’s evidence is sufficient to establish that the mark had acquired distinctiveness," where the examining attorney rejected the applicant’s §2(f) claim on the ground that applicant’s bicycle wheel configuration was functional and thus unregistrable even under §2(f), but did not specifically address the sufficiency of the §2(f) evidence or the question of whether the mark would be registrable under §2(f) if it were ultimately found to be nonfunctional.
See TMEP §§1212–1212.10 regarding distinctiveness under §2(f), and TMEP §1212.02(i) regarding assertion of §2(f) claims with respect to generic matter.
TMEP 1209.03 Considerations Relevant to Determination of Descriptiveness or Genericness
The following sections discuss factors and situations that often arise during a determination of whether a mark is descriptive or generic.
TMEP 1209.03(a) Third-
Third-
TMEP 1209.03(b) Dictionary Listing
The fact that a term is not found in a dictionary is not controlling on the question of registrability if the examining attorney can show that the term has a well understood and recognized meaning. See In re Orleans Wines, Ltd., 196 USPQ 516 (TTAB 1977) (BREADSPRED held merely descriptive of jellies and jams); see also In re Gen’l Permanent Wave Corp., 118 F.2d 1020, 49 USPQ 184, 186 (C.C.P.A. 1941) ("Because appellant has combined two common English words, which in combination are not found in the dictionaries, is wholly immaterial.") (citation omitted).
Moreover, in terms of establishing a term’s likely meaning to consumers, evidence of the current usage may carry more weight than an older dictionary meaning. See In re Well Living Lab Inc., 122 USPQ2d 1777, 1781 (TTAB 2017) (finding modern-
TMEP 1209.03(c) First or Only User
The fact that an applicant may be the first and only user of a merely descriptive designation does not justify registration if the only significance conveyed by the term is merely descriptive. See In re Fat Boys Water Sports LLC, 118 USPQ2d 1511, 1514 (TTAB 2016) In re Nat'l Shooting Sports Found., Inc., 219 USPQ 1018, 1020 (TTAB 1983); see also KP Permanent Make-
TMEP 1209.03(d) Combined Terms
When two 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. Duopross Meditech Corp. v. Inviro Medical Devices, Ltd., 695 F.3d 1247, 103 USPQ2d 1753 (Fed. Cir. 2012) (SNAP SIMPLY SAFER merely descriptive for "medical devices, namely, cannulae; medical, hypodermic, aspiration and injection needles; medical, hypodermic, aspiration and injection syringes"); In re Oppedahl & Larson LLP, 373 F.3d 1171, 71 USPQ2d 1370 (Fed. Cir. 2004) (PATENTS.COM merely descriptive of computer software for managing a database of records that could include patents and for tracking the status of the records by means of the Internet); In re Gould Paper Corp., 834 F.2d 1017, 1018, 5 USPQ2d 1110, 1111–1112 (Fed. Cir. 1987) (SCREENWIPE held generic as applied to premoistened antistatic cloths for cleaning computer and television screens); In re Mecca Grade Growers, LLC, 125 USPQ2d 1950, 1955 (TTAB 2018) (MECHANICALLY FLOOR-
However, a mark comprising a combination of merely descriptive components is registrable if the combination of terms creates a unitary mark with a unique, nondescriptive meaning, or if the composite has a bizarre or incongruous meaning as applied to the goods. See In re Colonial Stores Inc., 394 F.2d 549, 157 USPQ 382 (C.C.P.A. 1968) (SUGAR & SPICE held not merely descriptive of bakery products); In re Shutts,217 USPQ 363 (TTAB 1983) (SNO-
When there is evidence that the composite mark itself has been used together to form a phrase that is descriptive of the goods or services, it is unnecessary to engage in an analysis of each individual component. In re Shiva Corp., 48 USPQ2d 1957, 1958 (TTAB 1998) (TARIFF MANAGEMENT merely descriptive of computer hardware and computer programs to control, reduce, and render more efficient wide area network usage).
The Trademark Trial and Appeal Board has held that the addition of the prefix "e" does not change the merely descriptive significance of a term in relation to goods or services sold or rendered electronically, where the record showed that the "e" prefix has become commonly recognized as a designation for goods or services sold or delivered electronically. In re Int’l Bus. Machs. Corp., 81 USPQ2d 1677, 1679 (TTAB 2006) ("We see no difference in the meaning or connotation of ‘e-
The addition of an entity designator (e.g., Corporation, Corp., Co., Inc., Ltd., etc.) to a descriptive term does not alter the term’s descriptive significance, because an entity designation has no source-
TMEP 1209.03(e) More Than One Meaning
Descriptiveness must be determined in relation to the goods or services for which registration is sought. Therefore, the fact that a term may have a different meaning(s) in a different context is not controlling. See In re RiseSmart Inc., 104 USPQ2d 1931, 1933 (TTAB 2012) ; In re Chopper Indus., 222 USPQ 258, 259 (TTAB 1984) ; In re Bright-
See TMEP §1213.05(c) regarding wording that constitutes a "double entendre."
TMEP 1209.03(f) Picture or Illustration
A visual representation that consists merely of an illustration of the goods, or of an article that is an important feature or characteristic of the goods or services, is merely descriptive under §2(e)(1) of the Trademark Act, just as a merely descriptive word would be. See In re Underwater Connections, Inc., 221 USPQ 95, 95 (TTAB 1983) (pictorial representation of a compressed air gas tank held merely descriptive of travel-
Similarly, when a mark is comprised of wording that is descriptive under §2(e)(1) and a design element that is a pictorial representation of the goods, or that reinforces the descriptive meaning of the wording, the entire mark is merely descriptive. See DuoProSS Meditech Corp. v. Inviro Med. Devices Ltd., 695 F3d 1247,1255, 103 USPQ2d 1753, 1758 (Fed. Cir. 2012) (finding that the combination of the term SNAP and the design of a broken exclamation point, viewed as a whole, would be perceived as depicting the snapping of a syringe plunger); In re Swatch Grp. Mgmt. Servs. AG, 110 USPQ2d 1751, 1762 (TTAB 2014) aff’d per curiam, 599 Fed. Appx. 959 (Fed. Cir. 2015) (finding that the design element depicting a tourbillon -
TMEP 1209.03(g) Foreign Equivalents
The foreign equivalent of a merely descriptive English word is no more registrable than the English word itself. "[A] word taken from a well-
Although words from modern languages are generally translated into English, the doctrine of foreign equivalents is not an absolute rule, but merely a guideline. The doctrine should be applied only when it is likely that the ordinary American purchaser would stop and translate the foreign word into its English equivalent. See Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee en 1772, 396 F.3d 1369, 1377, 73 USPQ2d 1689, 1696 (Fed. Cir. 2005); see also In re Highlights for Children, Inc., 118 USPQ2d 1268, 1271 (TTAB 2016) (noting that the doctrine of foreign equivalents applies even when the foreign wording in the mark will appear with its English equivalent, because ordinary purchasers will still recognize the terms as equivalents due to the provided translation ). Thus, an examining attorney will generally apply the doctrine when the relevant English translation is literal and direct, the term comes from a common, modern language, and there is no contradictory evidence of another relevant meaning. See In re Sadoruo Grp. Ltd., 105 USPQ2d 1484, 1485 TTAB 2012) . "The 'ordinary American purchaser' in this context refers to the ordinary American purchaser who is knowledgeable in the foreign language. . . . [Defining "ordinary American purchaser" as the "average American buyer"] would write the doctrine out of existence." In re Thomas, 79 USPQ2d 1021, 1024 (TTAB 2006) . The "ordinary American purchaser" includes "all American purchasers, including those proficient in a non-
While foreign words are generally translated into English for purposes of determining descriptiveness, foreign words from dead or obscure languages may be so unfamiliar to the American buying public that they should not be translated into English for descriptiveness purposes. See Enrique Bernat F. S.A. v. Guadalajara Inc., 210 F.3d 439, 443, 54 USPQ2d 1497, 1499 (5th Cir. 2000), reh’g denied 218 F.3d 745 (2000); cf. Gen. Cigar Co. v. G.D.M. Inc., 988 F. Supp. 647, 45 USPQ2d 1481 (S.D.N.Y. 1997). The determination of whether a language is "dead" must be made on a case-
Example: Latin is generally considered a dead language. However, if evidence exists that the relevant purchasing public still uses a Latin term (e.g. , if the term appears in current dictionaries or news articles), then that Latin term is not considered dead. The same analysis should be applied to other uncommon languages.
Note that marks comprised of a term from a foreign language used with an English term may be found registrable if the commercial impression created by the combination differs from that which would be created by two English words. See In re Johanna Farms Inc., 8 USPQ2d 1408 (TTAB 1988) (LA YOGURT for yogurt registrable on Principal Register with a disclaimer of "YOGURT"); In re Sweet Victory, Inc., 228 USPQ 959 (TTAB 1986) (GLACE LITE held not descriptive for ice creams, sherbets, frozen yogurts, and nondairy frozen desserts); In re Universal Package Corp., 222 USPQ 344 (TTAB 1984) (LE CASE not merely descriptive of jewelry boxes and gift boxes and, therefore, registrable with a disclaimer of "CASE").
See TMEP §§809–809.03 for information regarding how to determine the meaning of non-
TMEP 1209.03(h) Acronyms
As a general rule, an acronym or initialism cannot be considered descriptive unless the wording it stands for is merely descriptive of the goods or services, and the acronym or initialism is readily understood by relevant purchasers to be "substantially synonymous" with the merely descriptive wording it represents. See Modern Optics Inc. v. The Univis Lens Co., 234 F. 2d 504, 506, 110 USPQ 293, 295 (C.C.P.A. 1956); Baroness Small Estates, Inc. v. Am. Wine Trade, Inc., 104 USPQ2d 1224, 1230-
TMEP 1209.03(i) Intended Users
A term that identifies a group to whom the applicant directs its goods or services is merely descriptive. See In re Planalytics, Inc., 70 USPQ2d 1453 (TTAB 2004) (GASBUYER merely descriptive of risk management services in the field of pricing and purchasing natural gas); Hunter Publ'g Co. v. Caulfield Publ'g Ltd., 1 USPQ2d 1996 (TTAB 1986) (SYSTEMS USER found merely descriptive of a trade journal directed toward users of large data processing systems; evidence sufficient to establish distinctiveness under §2(f)); In re Camel Mfg. Co., Inc.,222 USPQ 1031 (TTAB 1984) (MOUNTAIN CAMPER held merely descriptive of retail mail-
TMEP 1209.03(j) Phonetic Equivalent
A slight misspelling of a word will not turn a descriptive or generic word into a non-
TMEP 1209.03(k) Laudatory Terms
Laudatory terms, those that attribute quality or excellence to goods or services, are merely descriptive under §2(e)(1). See Duopross Meditech Corp. v. Inviro Medical Devices, Ltd., 695 F.3d 1247, 103 USPQ2d 1753, 1759 (Fed. Cir. 2012) (finding SNAP SIMPLY SAFER merely descriptive for "medical devices, namely, cannulae; medical, hypodermic, aspiration and injection needles; medical, hypodermic, aspiration and injection syringes"); In re Nett Designs Inc., 236 F.3d 1339, 57 USPQ2d 1564 (Fed. Cir. 2001) (finding THE ULTIMATE BIKE RACK to be merely descriptive and, therefore, subject to disclaimer); In re Boston Beer Co. L.P., 198 F.3d 1370, 53 USPQ2d 1056 (Fed. Cir. 1999) (finding THE BEST BEER IN AMERICA so highly laudatory and descriptive as applied to beer and ale that it is incapable of acquiring distinctiveness); In re Positec Group Ltd., 108 USPQ2d 1161, 1172 (TTAB 2013) (applying the guidance set forth in In re Phillips-
TMEP 1209.03(l) Telephone Numbers
If an applicant applies to register a designation that consists of a merely descriptive term with numerals in the form of an alphanumeric telephone number (e.g., 800, 888, or 900 followed by a word), the examining attorney must refuse registration under §2(e)(1). See In re Page, 51 USPQ2d 1660 (TTAB 1999) (888 PATENTS merely descriptive of patent-
If the relevant term is merely descriptive, but not generic, the mark may be registered on the Principal Register with a proper showing of acquired distinctiveness under §2(f), or on the Supplemental Register, if appropriate. See Express Mortg. Brokers Inc. v. Simpson Mortg. Inc., 31 USPQ2d 1371, 1374 (E.D. Mich. 1994) (369-
If the proposed mark is generic, the designation is unregistrable on either the Principal or the Supplemental Register. However, to support a refusal of registration on the ground that a telephone number is generic, the Court of Appeals for the Federal Circuit has held that it is not enough to show that the telephone number consists of a non-
TMEP 1209.03(m) Domain Names
A mark comprised of an Internet domain name is registrable as a trademark or service mark only if it functions as an identifier of the source of goods or services. Portions of the uniform resource locator ("URL"), including the beginning, ("http://www.") and the top-
If a TLD has three or more characters, it is known as a "generic top-
Because gTLDs generally indicate the type of entity using a given domain name, and therefore serve no source-
However, there is no bright-
Example: The addition of the TLD ".PETER" to CLOTHES to form the mark CLOTHES.PETER would create a registrable mark.
Cf. TMEP §1215.02(d). Additionally, the Federal Circuit has cautioned that in rare, exceptional circumstances, a term that is not distinctive by itself may acquire some additional meaning from the addition of a non-
Thus, when examining domain-
See TMEP §§1215.04 and 1215.05 for further discussion of gTLDs combined with descriptive or generic terminology.
TMEP 1209.03(n) "America" or "American"
If "AMERICA" or "AMERICAN" appears in a phrase or slogan, the examining attorney must evaluate the entire mark to determine whether it is merely descriptive as laudatory or even incapable. In re Boston Beer Co. L.P., 198 F.3d 1370, 53 USPQ2d 1056 (Fed. Cir. 1999) (THE BEST BEER IN AMERICA so highly laudatory and descriptive as applied to beer and ale that it is incapable of acquiring distinctiveness); In re Carvel Corp., 223 USPQ 65 (TTAB 1984) (AMERICA’S FRESHEST ICE CREAM held incapable for ice cream); In re Wileswood, Inc., 201 USPQ 400 (TTAB 1978) (AMERICA’S BEST POPCORN! and AMERICA’S FAVORITE POPCORN! merely descriptive of unpopped popcorn). Typically, these marks primarily extol the quality or popularity of the goods or services and secondarily denote geographic origin. The examining attorney must look at each mark to determine whether it is capable, considering all relevant circumstances and case law.
See TMEP §1210.02(b)(iv) and cases cited therein regarding use of terms such as "AMERICA," "AMERICAN," and "USA" in a way that is primarily geographically descriptive under 15 U.S.C. §1052(e)(2), primarily geographically deceptively misdescriptive under 15 U.S.C. §1052(e)(3), or deceptive under 15 U.S.C. §1052(a).
TMEP 1209.03(o) "National," "International," "Global," and "Worldwide"
The terms "NATIONAL" and "INTERNATIONAL" have been held to be merely descriptive of services that are nationwide or international in scope. See In re Chamber of Commerce of the U.S., 675 F.3d 1297, 102 USPQ2d 1217 (Fed. Cir. 2012) (NATIONAL CHAMBER merely descriptive of nationwide online directory services featuring information regarding local and state chambers of commerce and business and regulatory data analysis services for nationally promoting the interests of businesspersons or industry); In re Institutional Investor, Inc., 229 USPQ 614 (TTAB 1986) (INTERNATIONAL BANKING INSTITUTE for organizing seminars for bank leaders of major countries held incapable); In re Billfish Int’l Corp., 229 USPQ 152 (TTAB 1986) (BILLFISH INTERNATIONAL CORPORATION merely descriptive of corporation involved with billfish on an international scale); In re Nat’l Rent A Fence, Inc., 220 USPQ 479 (TTAB 1983) (NATIONAL RENT A FENCE merely descriptive of nationwide fence rental services); BankAmerica Corp. v. Int’l Travelers Cheque Co., 205 USPQ 1233 (TTAB 1979) (INTERNATIONAL TRAVELERS CHEQUE merely descriptive of financial consulting services that are international in scope); Nat’l Fid. Life Ins. v. Nat’l Ins. Trust, 199 USPQ 691 (TTAB 1978) (NATIONAL INSURANCE TRUST merely descriptive of services of handling administrative matters in locating suitable insurance coverage for attorneys); Jefferson Bankshares Inc. v. Jefferson Sav. Bank, 14 USPQ2d 1443, 1447 (W.D. Va. 1989) (NATIONAL BANK merely descriptive of banking services); Nat’l Auto. Club v. Nat’l Auto Club, Inc., 365 F. Supp. 879, 180 USPQ 777 (S.D.N.Y. 1973) , aff’d, 502 F.2d 1162 (2d Cir. 1974) (NATIONAL merely descriptive of auto club services).
The terms "GLOBAL" and "WORLDWIDE" are also considered to be merely descriptive of services that are global or worldwide in scope.
Note: A map of the world or a depiction of a globe generally is not considered the pictorial equivalent of the terms "INTERNATIONAL," "GLOBAL," or "WORLDWIDE."
TMEP 1209.03(p) Function or Purpose
Terms that identify the function or purpose of a product or service may be merely descriptive under 15 U.S.C. §1052(e)(1) or generic. See, e.g., In re Gould Paper Corp., 834 F.2d 1017, 5 USPQ2d 1110 (Fed. Cir. 1987) (SCREENWIPE held generic for an anti-
TMEP 1209.03(q) Source or Provider of Goods or Services
Terms that identify the source or provider of a product or service may be merely descriptive under 15 U.S.C. §1052(e)(1) or generic. See, e.g., In re Wm. B. Coleman Co., Inc., 93 USPQ2d 2019, 2027 (TTAB 2010) (ELECTRIC CANDLE COMPANY for lighting fixtures "incapable of identifying source for electric candles because it is a term a purchaser would understand and could use to refer to the type of company that sells electric candles, and must be left available for use by other such companies selling electric candles"); In re Major League Umpires, 60 USPQ2d 1059 (TTAB 2001) (MAJOR LEAGUE UMPIRE merely descriptive of clothing, face masks, chest protectors, and shin guards); In re Taylor & Francis [Publishers] Inc., 55 USPQ2d 1213 (TTAB 2000) (PSYCHOLOGY PRESS merely descriptive of books in the field of psychology); In re The Paint Products Co., 8 USPQ2d 1863 (TTAB 1988) (PAINT PRODUCTS COMPANY incapable for paint); In re The Phone Co., Inc., 218 USPQ 1027 (TTAB 1983) (THE PHONE COMPANY merely descriptive of telephones). See also In re Omaha Nat’l Bank, 819 F.2d 1117, 1119, 2 USPQ2d 1859, 1861 (Fed. Cir. 1987) (rejecting argument that descriptiveness should be limited to a quality or characteristic of the good or service itself and holding that it includes a designation descriptive of the service provider); cf. In re Chamber of Commerce of the U.S., 675 F.3d 1297, 1301-
TMEP 1209.03(r) Retail Store and Distributorship Services
A term that is generic for goods is descriptive of retail store services featuring those goods, when the goods are not a significant item typically sold in the type of store in question. In re Pencils Inc., 9 USPQ2d 1410 (TTAB 1988) (PENCILS held merely descriptive of office supply store services). However, where the matter sought to be registered identifies the primary articles of a store or distributorship service, the term is considered generic. See, e.g., In re Tires, Tires, Tires, Inc., 94 USPQ2d 1153, (TTAB 2009) (TIRES TIRES TIRES generic for retail tire store services); In re Lens.com, Inc., 83 USPQ2d 1444 (TTAB 2007) (LENS generic for "retail store services featuring contact eyewear products rendered via a global computer network"); In re Eddie Z’s Blinds & Drapery, Inc., 74 USPQ2d 1037 (TTAB 2005) (BLINDSANDDRAPERY.COM generic for retail store services featuring blinds, draperies, and other wall coverings, conducted via the Internet); In re Candy Bouquet Int’l, Inc., 73 USPQ2d 1883 (TTAB 2004) (CANDY BOUQUET generic for "retail, mail, and computer order services in the field of gift packages of candy"); In re A La Vieille Russie, Inc., 60 USPQ2d 1895 (TTAB 2001) (RUSSIANART generic for dealership services in the field of fine art, antiques, furniture, and jewelry); In re Log Cabin Homes Ltd., 52 USPQ2d 1206 (TTAB 1999) (LOG CABIN HOMES generic for retail outlets selling kits for building log homes); In re Bonni Keller Collections Ltd., 6 USPQ2d 1224 (TTAB 1987) (LA LINGERIE generic for retail stores specializing in the sale of lingerie); In re Wickerware, Inc., 227 USPQ 970 (TTAB 1985) (WICKERWARE generic for mail order and distributorship services in the field of products made of wicker); In re Half Price Books, Records, Magazines, Inc., 225 USPQ 219 (TTAB 1984) (HALF PRICE BOOKS RECORDS MAGAZINES generic for retail book and record store services).
The examining attorney, therefore, must "analyze the term in relation to the services recited in the application, the context in which it is used and the possible significance it would have to the recipient of the services." Pencils, 9 USPQ2d at 1411.
TMEP 1209.03(s) Slogans
Slogans that are considered to be merely informational in nature, or to be common laudatory phrases or statements that would ordinarily be used in business or in the particular trade or industry, are not registrable. See In re Boston Beer Co. L.P., 198 F.3d 1370, 53 USPQ2d 1056 (Fed. Cir. 1999) (THE BEST BEER IN AMERICA so highly laudatory and descriptive as applied to beer and ale that it is incapable of acquiring distinctiveness). See also TMEP §1202.04 and cases cited therein.
TMEP 1209.03(t) Repetition of Descriptive or Generic Term
The mere repetition of a merely descriptive term does not negate the mere descriptiveness of the mark as a whole, unless the combination is such as to create a new and different commercial impression from that which is engendered by the separate components. See In re Litehouse, Inc., 82 USPQ2d 1471 (TTAB 2007) (CAESAR! CAESAR! merely descriptive of salad dressing); In re Disc Jockeys, Inc., 23 USPQ2d 1715 (TTAB 1992) (DJDJ merely descriptive of disc jockey services).
Likewise, a generic term may not be rendered non-
TMEP 1209.03(u) Punctuation
The use of a common punctuation mark is not sufficient to negate the mere descriptiveness of a term. See Duopross Meditech Corp. v. Inviro Medical Devices, Ltd., 695 F.3d 1247, 103 USPQ2d 1753, 1757-
TMEP 1209.03(v) Key Aspect of Goods or Services
A term may be generic for a genus of goods or services if the relevant public understands the term to refer to a key aspect of that genus, such as a key product that characterizes a particular genus of retail services or identifies a category of goods or services within the genus. See Royal Crown Co. v. Coca-
TMEP 1209.03(w) Stylization
Adding stylization to descriptive or generic wording does not render the resulting mark registrable on the Principal Register unless the stylization creates a commercial impression separate and apart from the impression made by the wording itself, or the applicant can otherwise show by evidence that the particular stylized display has acquired distinctiveness. See In re Cordua Rests., Inc., 823 F.3d 594, 606, 118 USPQ2d 1632, 1639-
If descriptive or generic wording is in fact presented in a distinctive display or design, the mark as a whole may be registered with a disclaimer of the unregistrable component. See In re Sadoru Grp., Ltd., 105 USPQ2d 1484, 1486-
If generic wording is stylized to create a display or design that is not inherently distinctive, but is nonetheless capable of functioning as a mark, the mark may be registered on the Supplemental Register with a disclaimer of the generic wording. See In re Wella Corp., 565 F.2d 143, 144, 196 USPQ 7, 8 (C.C.P.A. 1977); In re Sadoru Grp., Ltd., 105 USPQ2d at 1486-
TMEP 1209.03(x) Historical Figure Names and Fictional Character Names
The determination of whether a mark comprising the name of an historical figure or a fictional character serves as a source identifier or is merely descriptive turns on whether consumers link the mark to a particular commercial entity or whether others have a competitive need to use the name to describe their products. See In re United Trademark Holdings, Inc., 122 USPQ2d 1796, 1799-
The Board has held that consumers reasonably expect goods and services bearing the name or image of a fictional character that is a proprietary creation of a business entity to emanate from, or be produced or marketed under license from, the entity that created the character and owns the right to profit from commercialization of it. In re Carlson Dolls, 31 USPQ2d at 1320.
However, a mark that identifies an historical figure was found to be merely descriptive because consumers do not necessarily link such a name or image to particular commercial entities as they do a fictional character. Id. (finding "[t]he likely reaction of ordinary consumers presented with ‘MARTHA WASHINGTON’ on tags attached to ‘historical dolls’ made to look like women in colonial clothing would be that the name indicates not the commercial source of the dolls, but rather is used as a description of the historical figure the dolls are supposed to represent").
Likewise, prospective purchasers expect goods, such as dolls, labeled with the name of a fictional public-
TMEP 1209.04 Deceptively Misdescriptive Marks
Section 2(e)(1) of the Trademark Act, 15 U.S.C. §1052(e)(1), also prohibits registration of designations that are deceptively misdescriptive of the goods or services to which they are applied. The examining attorney must consider the mark in relation to the applicant’s goods or services to determine whether a mark is deceptively misdescriptive.
The examining attorney must first determine whether a term is misdescriptive as applied to the goods or services. A term that conveys an immediate idea of an ingredient, quality, characteristic, function, or feature of the goods or services with which it is used is merely descriptive. See TMEP §1209.01(b). If a term immediately conveys such an idea but the idea is false, although plausible, then the term is deceptively misdescriptive and is unregistrable under §2(e)(1). See In re AOP LLC, 107 USPQ2d 1644 (TTAB 2013) (AOP deceptive, deceptively misdescriptive, or, alternatively, merely descriptive for wine, after the applicant failed to fully respond to the examining attorney’s inquiries regarding the origin and certification of applicant’s goods); In re Woodward & Lothrop Inc., 4 USPQ2d 1412 (TTAB 1987) (CAMEO deceptively misdescriptive of jewelry); In re Ox-
The Trademark Act does not prohibit the registration of misdescriptive terms unless they are deceptively misdescriptive, that is, unless persons who encounter the mark, as used on or in connection with the goods or services in question, are likely to believe the misrepresentation. See Binney & Smith Inc. v. Magic Marker Indus., Inc., 222 USPQ 1003 (TTAB 1984) (LIQUID CRAYON held neither common descriptive name, nor merely descriptive, nor deceptively misdescriptive of coloring kits or markers).
As explained in the case of In re Quady Winery Inc., 221 USPQ 1213, 1214 (TTAB 1984) :
The test for deceptive misdescriptiveness has two parts. First we must determine if the matter sought to be registered misdescribes the goods. If so, then we must ask if it is also deceptive, that is, if anyone is likely to believe the misrepresentation. Gold Seal Co. v. Weeks, 129 F. Supp. 928 (D.D.C. 1955), aff’d sub nom. S.C. Johnson & Son v. Gold Seal Co., 230 F.2d 832 (D.C. Cir.) (per curiam), cert. denied, 352 U.S. 829 (1956), superseded by statute on other grounds as stated in Aktieselskabet AF 21. November 2001 v. Fame Jeans Inc., 525 F.3d 8, 86 USPQ2d 1527, 1532 (D.C. Cir. 2008). A third question, used to distinguish between marks that are deceptive under Section 2(a) and marks that are deceptively misdescriptive under Section 2(e)(1), is whether the misrepresentation would materially affect the decision to purchase the goods. Cf. In re House of Windsor, Inc., 221 USPQ 53 (TTAB 1983).
Thus, if the identification of goods/services does not include the wording in the mark, the examining attorney must make of record evidence demonstrating why the mark is misdescriptive. Specifically, the record must show the meaning of the wording at issue and that the identification indicates that the applicant’s goods/services lack the feature or characteristic. Examples of such evidence are dictionary definitions, LexisNexis® articles, Internet websites, advertising material, product information sheets, hang tags, point-
The examining attorney must then prove that the description conveyed by the mark is plausible by demonstrating that consumers regularly encounter goods or services that contain the features or characteristics in the mark. For example, to support the believability element as to the mark LOVEE LAMB for seat covers that were not made of lambskin, the examining attorney provided evidence that seat covers can be and are made from lambskin. See In re Budge Mfg. Co. Inc., 857 F.2d 773, 775, 8 USPQ2d 1259, 1260 (Fed. Cir. 1988). Excerpts from a LexisNexis® search for the phrases "organic clothing," "organic fabric," "organically grown cotton," and "organic cotton" were used to prove that consumers were familiar with clothing and textiles from organically grown plants or plants free of chemical processing or treatment. See In re Organik Techs., Inc., 41 USPQ2d 1690, 1693–94 (TTAB 1997) . Applicant’s own hang tags, labels, advertising, and product information may also provide evidence of the believability of the misdescription. See In re Shapely, Inc., 231 USPQ 72, 75 (TTAB 1986) (concluding that statements on hangtags can be used to show the materiality of the mispresentation in the purchasing decision); Evans Products Co. v. Boise Cascade Corp., 218 USPQ 160, 164–5 (TTAB 1983) (finding that applicant’s advertising materials and affidavit indicated that it did attempt to "adopt a mark [CEDAR RIDGE] which conveyed the impression of authentic cedar").
If the misdescription represented by the mark is material to the decision to purchase the goods or use the services, then the mark must be refused registration under §2(a) of the Trademark Act, 15 U.S.C. §1052(a). See TMEP §1203.02 regarding deceptive marks, TMEP §1203.02(c) regarding the distinction between deceptive marks and deceptively misdescriptive marks, and TMEP §§1203.02(d)–1203.02(d)(ii) regarding determining materiality.
The examining attorney should consider and make of record, or require the applicant to make of record, all available information that shows the presence or absence, and the materiality, of a misrepresentation. See Glendale Int’l Corp. v. United States Patent & Trademark Office, 374 F. Supp. 2d 479, 486, 75 USPQ2d 1139, 1144 (E.D. VA 2005) (TITANIUM deceptively misdescriptive of recreational vehicles that do not contain titanium, where the examining attorney made of record articles which showed that titanium is a lightweight metal, and discussed the use or potential use of titanium in the automotive industry).
The mere fact that the true nature of the goods or services is revealed by other matter on the labels, advertisements, or other materials to which the mark is applied does not preclude a determination that a mark is deceptively misdescriptive. See R. Neumann & Co. v. Overseas Shipments, Inc., 326 F.2d 786, 790, 140 USPQ 276, 279 (C.C.P.A. 1964) (DURA-
See also In re ALP of South Beach Inc., 79 USPQ2d 1009 (TTAB 2006) (holding that pre-
Marks that have been refused registration pursuant to §2(e)(1) on the ground of deceptive misdescriptiveness may be registrable under §2(f) upon a showing of acquired distinctiveness, or on the Supplemental Register if appropriate. 15 U.S.C. §§1052(f) and 1091. Similarly, marks that contain registrable matter in addition to deceptively misdescriptive components can be registered with a disclaimer of the deceptively misdescriptive matter, when appropriate. See TMEP §1213.03(a). Marks that are deceptive under §2(a) are not registrable on either the Principal Register or the Supplemental Register under any circumstances.
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