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Mistakes To Avoid If A Descriptiveness Refusal under Section 2(e)(1) is issued

A recent decision from the Trademark Trial and Appeal Board (the “Board”) highlighted several mistakes made by the Applicant when appealing a descriptiveness refusal. See In re Olawale Mafolasire, Serial Nos. 85895010, 85895067, 85895083 and 85895103 (January 12, 2016), where the Board affirmed the Examining Attorney’s refusal to register several applications based on the marks being merely descriptive of the goods. There are several lessons to learn from the Applicant’s arguments to the Board in this case.

The Applicant’s marks included: 1-TAP GIVE1 • 1-TAP GIVE NOW2 • 1-TAP DONATE3 and • 1-TAP DONATE NOW for computer application software for mobile phones and portable mobile devices allowing a user to donate money to a recipient. The four applications were consolidated into one appeal because despite the variations in marks they presented similar questions of law and fact. The general rule that guides every Section 2(e)1 refusal is that a trademark will be considered merely descriptive if it immediately conveys knowledge or information of a quality, purpose, feature, function, or characteristic of the goods or services. This analysis must be conducted in relationship to the goods and services. The Applicant argued that a consumer would not know what the goods were from simply viewing the trademark. This is a common mistake and the Board replied that a determination of descriptiveness is not made in the abstract. The test is whether a consumer who knows what the goods or services are will understand the mark to immediately convey information about a quality, purpose, feature, function, or characteristic of the goods or services.

The Board pointed out that the terms “give”, “donate”, and “now” are descriptive in relationship to the goods and that the single ordinary meaning of these terms will be understood by consumers. In addition, the Examiner produced evidence to show that the term “tap” when used in association with computers and mobile devices means moving a stylus or a finger on a screen of a device equivalent to a mouse click. Therefore, “1-TAP” means to touch a screen one time. The Applicant tried to argue that the term “1-TAP” could have other meanings unrelated to goods and therefore one of the other meanings could apply. However, it is well settled law that as long as one of the meanings of the term is descriptive in relationship to the goods, the term will be held merely descriptive.

Another mistake made by the Applicant is that he included a list of registrations without including the certificates of registrations or proof of use. The submission of a list of registrations does not make the registrations of record. Moreover, one of the marks cited in the list is a mark using the term “ONE TAP” for software for authenticating personal and card identification information relating to electronic payment and financial transactions. However, this mark is registered on the Supplemental Register. If anything this mark would support the Examiner’s argument that the term is descriptive because by virtue of being registered on the Supplemental Register, a mark is presumed to be merely descriptive of the goods or services.

See our web page entitled Disadvantages of Descriptive Trademarks for all of the reasons why an Applicant should strive to register a mark on the Principal Register and not the Supplemental Register. Lastly, the Applicant also erred when attempting to argue that the Board had allowed the term ONE TAP to be registered on the Principal Register under other circumstances and therefore it should also allow it here. This is another flawed argument because the Board is not bound by allowance of prior registrations because each case must be decided on its own merits.

It should be pointed out that there are other circumstances where an applicant may encounter a merely descriptive refusal. A term may be deemed descriptive if it describes the types of purchasers or the uses of the goods. Under another circumstance, if a term has common recognition and is understood as a particular designation that too can be refused as descriptive. An example is the prefix “E” which is now commonly understood as a designation for the Internet. See In re eCash Technologies, Inc., Serial No. 74605417 (November 29, 2000), where it was held that E-CASH was merely descriptive of computer software and hardware that electronically transfers funds.

An applicant should raise the rule that if there is doubt regarding a Section 2(e)(1) refusal it must be resolved in the Applicant’s favor. Lastly, the best strategy for overcoming a descriptiveness refusal, besides from arguing that the mark has acquired distinctiveness is to argue that the mark is suggestive. In this case, the mark would suggest a quality, feature or purpose but you would need to use your imagination, some thought or perception to reach a conclusion as to the nature of the goods or services. If you need assistance with a descriptiveness refusal or another trademark matter, please contact our office for a courtesy consultation.