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Beware If A Term Becomes A Term Of Art In Your Industry

A recent decision from the Trademark Trial and Appeal Board (“TTAB” or the “Board”), reminds trademark applicants that if there is a term that has taken on significance or meaning in a particular industry and this term immediately conveys information about the goods or services identified in your trademark application, your application could be refused. The ground for refusal would be that the trademark is merely descriptive of the Applicant’s goods and services. See In re Bitvoyant, Serial No. 86693221 (February 9, 2017) [not precedential]. For more details on this subject matter, see our web page entitled, Factors To Be Considered When Determining If A Mark Is Descriptive. Some of the factors discussed on our web page are dictionary meanings, is the term an acronym that would be perceived to mean the same as the wording it represents, and does the term describe the intended user. Another factor to now consider is whether the mark is a term of art in your industry.

In Bitvoyant, the Applicant filed to register the mark HONEYFILE. The goods identified were computer software platforms for use in the field of computer network security that assist in the tracking of data exfiltration and network intelligence. The services included 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, along with other computer security services.

The application was refused on the ground that the mark was merely descriptive of the goods and services. The Applicant filed a request for reconsideration that was denied. An appeal followed. The Court of Appeals for the Federal Circuit set forth the following standard: ” [A] term is merely descriptive if it immediately conveys knowledge of a quality, feature, function, or characteristic of the goods or services with which it is used.” See In re Chamber of Commerce of the U.S.A., 675 F.3d 1297, 102 USPQ2d 1217, 1219 (Fed. Cir. 2012). Evidence to prove this proposition can be taken from any competent source, such as dictionaries, newspapers or surveys.

In the case here, the cybersecurity industry uses the term “honeyfile” to denote a bait file used to lure hackers. The objective is to have the hacker open the file and set off an alarm. This will alert the user that there has been unauthorized access. The Examining Attorney presented evidence from a workshop that stated, “The honeyfile system monitors all file access on the server and alerts users when honeyfiles have been accessed.” Moreover, the Applicant’s own specimen supported this finding. The Board found that when considering the mark in relation to the goods and services identified in the application, the mark informs prospective consumers of a quality, feature or function of the goods and services.

It should be noted that even if the dictionary has a different meaning for the term or multiple meanings for a term, if the industry has attached significance to a particular term and that meaning conveys information about the goods or services then the mark is likely to be refused as merely descriptive under Section 2(e)(1) of the Trademark Act, 15 U.S.C. § 1052(e)(1). The question to be asked is whether someone who knows what the goods and services are will understand the mark to convey information about them. An Examining Attorney often proves that a mark describes a feature of the goods or services by showing use of the term by third parties in the particular industry.

Once a term has a meaning in a particular industry and that meaning provides information about the goods or services, it will be incredibly difficult to overcome a merely descriptive refusal. The rationale for the refusal is that competitors in the industry should be able to use the descriptive term for its goods and services as well. In addition, public policy seeks to discourage harassing lawsuits against competitors who use descriptive terms in advertising or promotion of similar goods and services. If you are considering a proposed mark, but are having hesitations about the term because it is popular in your industry or you fear it may be descriptive of your goods or services, call us for a courtesy consultation and avoid a refusal by the Trademark Office.