Articles Posted in Merely Descriptive Or Generic

A recent decision from the U.S. Court of Appeals from the Federal Circuit (“CAFC”) reminds trademark owners that adopting marks that are merely descriptive may require a high level of proof to register on the Principal Register. See In re JC Hospitality LLC, Appeal Nos, 2018-2048 and 2018-2049 (Fed. Cir. February 28, 2020) [nonprecedential], where the CAFC agreed with the Trademark Trial and Appeal Board’s (the “Board”) decision finding the mark THE JOINT (in standard character format) merely descriptive of “restaurant, bar, and catering services” and “entertainment services, namely live musical performances, shows and concerts, and nightclub services.” The CAFC determined that substantial evidence supported the Board’s conclusions, on the grounds of merely descriptiveness and not acquiring distinctiveness, but did not address the Board’s finding of genericness.

The Board relied on several dictionary definitions and news articles, and determined that the mark immediately conveys the concept of a business establishment offering restaurant, bar, and entertainment services. The applicant raised the argument that the mark should register since it is a double entendre. Applicant insisted that THE JOINT was a reference to prison. However, there wasn’t enough evidence to show a relationship between a prison and bar and restaurant services.

The amount of evidence required to prove acquired distinctiveness (secondary meaning) is directly correlated with the degree of descriptiveness. To determine how much evidence is required for showing acquired distinctiveness, the Court or Board must assess the degree of descriptiveness in relationship to the goods or services. Here, the Board held THE JOINT in relationship to the services (bar and restaurant services) was highly descriptive. See our web page entitled, What Is Acquired Distinctiveness & Secondary Meaning, for general information on this topic. Many factors will be considered when evaluating if secondary meaning exists. Some of these factors include: (1) the market share held by the applicant; (2) consumer surveys or studies; (3) the length, degree and exclusivity of use; (4) the amount of applicant’s sales compared to competitors’ sales in the same industry; (5) the amount the applicant spent on advertising compared to its competitors’ advertising expenditures in the same industry; (6) intentional copying; and (7) unsolicited media coverage and the extent the press information was circulated to the general public.

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The Trademark Trial and Appeal Board (the “Board” or “TTAB”) recently reversed a refusal to register a mark on the grounds of likelihood of confusion. See In re Marathon Tours, Inc., Serial No. 86086458 (January 23, 2020) [not precedential]. In this case, it was a bit surprising that the Board justified its decision based solely on the marks being sufficiently different while finding the other relevant factors weighing in favor of finding a likelihood of confusion. The decision underscores a point that cannot be emphasized enough in trademark practice; descriptive marks severely restrict the scope of protection for those terms. The Board focused on the descriptive and generic terms in the registered mark.

The applicant was seeking registration on the Principal Register for the mark ANTARTICA MARATHON, in standard characters for “travel services, namely, organizing and arranging travel, travel tours, excursions, and sightseeing travel tours; providing travel guide and travel information services; and making transport reservation.” The applicant claimed acquired distinctiveness under 2(f) of the Trademark Act. The Examining Attorney accepted the 2(f) claim. However, the Examining Attorney cited the mark ANTARCTIC ICE MARATHON & 100K and Design for “Athletic and sports event services, namely, arranging, organizing, operating and conducting marathon races,” as likely to cause confusion with the applicant’s mark. The cited registration had a disclaimer for the term “ANTARCTIC ICE MARATHON & 100K” and for the design of the geographic representation of Antarctica. Upon issuance of a final refusal, the applicant appealed the refusal to register.

In its decision, the Board focused first on the marks. The shared terms in the parties’ marks were variations of “Antarctica” and “Marathon”. These terms are weak in relationship to the services. Registrant had to disclaim the terms since one describes the geographic location of the services and the other the type of race. Determining the strength of the terms is an important part of the analysis. See our recent blog post entitled, How To Overcome A 2(d) Likelihood Of Confusion Refusal, wherein it was emphasized, if shared terms are descriptive, additions to a mark may suffice to avoid likelihood of confusion. See also, the Trademark Manual Of Examining Procedure §1207.01(b)iii which discusses this point.

This rule emphasizes that if the terms common to both marks are generic or descriptive, it is unlikely that the terms will be perceived by consumers as source indicators, and that other differences between the marks may be adequate to obviate confusion. In other words, if consumers will not rely on the shared terms to distinguish source, additional terms in the mark may be able to differentiate the sources. Since the registrant’s mark contains generic and highly descriptive terms, the mark will receive a narrow scope of protection. The board concluded that applicant’s mark did not fall within the narrow scope of protection and therefore, the first du Pont factor weighed against finding confusion.

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The US Court of Appeals for the Federal Circuit (the “CAFC”) affirmed the Trademark Trial and Appeal Board’s (the “Board”) decision refusing to register the marks CORN THINS and RICE THINS for snack foods, and vacated the Board’s decision dismissing a claim that these same marks were generic. See Real Foods Pty Ltd. v. Frito-Lay North Am., Inc., Case Nos. 17-1959-2009 (Fed. Cir. Oct. 4, 2018). The Board not only held that the marks CORN THINS and RICE THINS were merely descriptive, but that the marks also failed to acquire distinctiveness.  See also the matter finding PRETZEL CRISPS to be generic for pretzel crackers. It is time for the snack industry to pay attention to the past, and consider adopting inherently distinctive marks.

The evidence showed the sales figures were not high, and a relatively small amount of funds were spent on advertising and marketing. Frito-Lay opposed the marks CORN THINS and RICE THINS, arguing that the marks should either be held generic or merely descriptive without a finding of secondary meaning (acquired distinctiveness). As part of the evidence submitted into the record, Frito-Lay produced a survey showing only ten percent of consumers associated the marks with a particular source. The CAFC determined that CORN THINS and RICE THINS were not only merely descriptive of snack foods, but in fact the marks were highly descriptive. In certain cases, five years of substantial and continuous use can allow a mark to acquire distinctiveness when the mark is not inherently distinctive, but this is not the case where the mark is found to be highly descriptive of the goods. The Court stated that an applicant’s burden increases when the mark is highly descriptive. In other words, a more descriptive mark requires more evidence of secondary meaning.

Real Foods argued that the marks were suggestive. Suggestive marks are inherently distinctive trademarks requiring imagination, thought and perception to determine the nature of the goods. Real Foods was hoping for a reversal of the descriptiveness finding, as was made in In re Panasonic Avionics Corp., Serial No. 86499954 (January 5, 2017) [not precedential]. The snack company attempted to convince the CAFC that there was a double entendre associated with the marks. Real Foods argued that the marks CORN THINS and RICE THINS not only conveyed that the snack food was of a physically thin nature, but it was a diet friendly and low calorie snack. The evidence below explains why this argument failed.

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In a recent case decided by the Trademark Trial and Appeal Board (the “Board” or the “TTAB”), the applicant argued that its proposed mark, ATHLETE INTELLIGENCE was suggestive of the goods requiring the consumer to use a multistep reasoning process. See In re i1 Sensortech, Inc., Serial No. 87249539 (November 9, 2018), where the Board determined that the mark ATHLETE INTELLIGENCE in standard characters for a monitoring device worn by a person to measure the effects of physical impacts, biometric data, physiological data etc., was merely descriptive of the identified goods, and not suggestive. The refusal to register was thus affirmed on appeal. Descriptiveness is a ground often cited for refusal by Examining Attorneys, to view other common grounds asserted by the USPTO for refusing registration see the firm’s web page entitled, Common Grounds For Refusal Of A Trademark.

There were a couple of interesting evidentiary issues to address in this appeal. In its reply brief, the applicant requested that the Board take judicial notice of its registration that was issued by the European Union Intellectual Property Office for the same mark and the identical goods. The Board pointed out that it has a practice of not taking judicial notice of third party registrations. This is done to encourage applicants to raise these matters during prosecution where it can be more readily resolved, and to avoid unnecessary appeals. The Board referred to the Trademark Trial and Appeal Board Manual of Procedure §1208.04, and denied the request for judicial notice.

The Examining Attorney also objected to the applicant submitting hyperlinks to news articles in its reply brief. The Examiner stated that this evidence should have been submitted in the prosecution’s record, and applicant could not at this late date bolster and expand the record with hyperlinks to additional evidence. The Board agreed, and did not consider the news articles. Also, merely providing hyperlinks is not an acceptable method for making the information or “linked material” part of the record.

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In a recently issued Trademark Trial and Appeal Board (“TTAB” or the “Board”) decision, we are reminded that using a geographically descriptive term in a trademark may risk a refusal by the Examining Attorney and the Board could affirm the refusal. See In re National Association of Veterinary Technicians in America, Inc.Serial No. 87228944 (September 14, 2018) [not precedential], where the applicant in an effort to reverse the Examining Attorney’s refusal put forth several losing arguments to the Board. A mark is merely descriptive under Section 2(e)(2) of the Trademark Act, 15 U.S.C. §1052(e)(2) when it immediately conveys information concerning a feature, purpose, function, characteristic, quality or ingredient of the goods or services. In re Engineering Systems Corp., 2 USPQ2d 1075 (TTAB 1986). The test is once a consumer knows what the product or service is, will the trademark convey information about the goods or services. A mark will also be considered merely descriptive if it describes the types of consumers or the uses of the goods or services.

The Examining Attorney must establish the following elements:

(1) the primary significance of the term in the mark is the name of a place generally known to the public;

(2) the source of the goods and/or services is the place named in the mark; and

(3) the public would make an association between the goods or services and the place named in the mark by believing that the goods or services originate in that place.

A public association will be presumed if there is no dispute about the geographic significance being the primary significance and the goods or services originate from the geographic place named in the mark, and if the geographic location is neither obscure nor remote. To learn more about descriptive marks, see our web page entitled, Trademark Application Refusal Based On Descriptiveness or Deceptiveness. The test for geographically misdescriptive marks is similar to the test above. The primary significance of the mark must be a known geographic location, the goods or services do not originate from the place named in the mark, but purchasers are likely to believe they would, and this fact is a material consideration when deciding to buy the goods or services. See the Trademark Manual of Examining Procedure Section 1210.01(b).

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The Trademark Trial and Appeal Board (the “Board or the “TTAB”) issued this precedential decision at the end of March 2018, and it was a partial win for the Applicant. The Applicant, Serial Podcast LLC, filed three applications at the United States Patent & Trademark Office {“USPTO”), one word mark (standard characters) for SERIAL, and two similar special format marks containing the word “SERIAL” with each letter being placed in a black rectangle with rounded corners. The design marks were identical except one did not claim color as a feature of the mark, while the other featured yellow letters outlined in red. The services were identified as “entertainment in the nature of an ongoing audio program featuring investigative reporting, interviews, and documentary storytelling”, in all three applications. The Examining Attorney refused all three marks on the grounds that each mark is generic for the services identified, and if not generic, then merely descriptive and that applicant’s acquired distinctiveness claim was insufficient to overcome the refusal. See In re Serial Podcast, LLC, Serial Nos. 86454420, 86454424, 86464485 (March 26, 2018) [precedential].

To support the generic refusal the Examining Attorney submitted definitions for the term SERIAL. The meanings for the term SERIAL can be summarized as a story or other subject matter that is published or broadcasted in a series in separate parts. Applicant’s services include producing an ongoing audio program (a podcast) appearing in regular weekly installments. The first season of the podcast included 12 episodes, and ran for approximately two months. Examples of use of the term SERIAL were submitted into the record.

Applicant argued that there were numerous examples where SERIAL is used as an adjective, and therefore the use cannot be generic. However, the Board found this argument not to be persuasive. The Board held that use of a mark as an adjective can be generic as well. See Sheetz of Delaware, Inc. v. Doctor’s Associates Inc., 108 USPQ2d 1341 (TTAB 2013) [precedential]. In fact, the TMEP specifically states: “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.”

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Disclaimers seem simple on the surface, but there are important issues to consider when determining whether or not to disclaim certain terms in a proposed trademark. See our webpage entitled, Trademark Disclaimers for the fundamentals on what a disclaimer is and why it might be required under trademark law for registration purposes. Examining Attorneys have discretion as to whether they require a disclaimer or not. The purpose of a disclaimer is to document that the Applicant does not have exclusive rights to a certain element of the composite mark apart from the composite. The disclaimer is recorded in the trademark prosecution history, and included on the certificate of registration, but the owner of the mark does not have to include a disclaimer on a label, in the packaging or in the advertising of the goods or services. A consumer will not be aware of a disclaimer.

Applicants should consult trademark counsel when evaluating the issue of whether a disclaimer should be included for the record of a trademark prosecution. At times, it may be in the best interests of the Applicant to argue against a disclaimer requirement suggested by the Examiner, and in the alternative consent to entry of a disclaimer if the proposed argument is not found persuasive. This type of alternative arguing is common practice at the United States Patent & Trademark Office (“USPTO”), and would not be viewed as a concession that the term is not inherently distinctive. Section 1213.01(d) of the Trademark Manual of Examining Procedures states that under this scenario, if the Examining Attorney determines the response of the Applicant is not persuasive, the Applicant must be given the option of asserting the disclaimer or appealing the underlying issue of whether the subject term is merely descriptive. However, if the Applicant opts to enter the disclaimer into the record, then it will be viewed as an admission that the term is not inherently distinctive.

Another issue to consider is how a disclaimer will impact a likelihood of confusion analysis. The disclaimed matter will be included in the analysis for purposes of likelihood of confusion. The mark must be regarded as a whole because consumers are not going to know that a part of the mark has been disclaimed. Consumers will view the mark in its entirety, and therefore when evaluating marks for likelihood of confusion, the disclaimed matter is considered as part of the entire trademark. See In re McI Communications Corp., 21 U.S.P.Q.2d 1534, 1991 WL 332552 (Comm’r Pat. & Trademarks 1991).

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In this recent Trademark Trial and Appeal Board decision, In re Fowles Wine Pty Ltd., Serial No. 79157017 (September 15, 2017) [not precedential], the Board affirmed the refusal of the Examining Attorney. The interesting aspect to this decision is one of the grounds for refusal was failure to function as a trademark (the other ground was the mark was merely descriptive of the goods). The Applicant was seeking to register the mark FARM TO TABLE for wines in standard characters. After the refusal was made final, the Applicant appealed to the Board.

To support the refusal, the Examining Attorney submitted printouts from numerous commercial websites, illustrating how third parties in the industry use the term “Farm to Table”. These web pages included excerpts and references such as: (1) “Farm to Table Wine Dinners…”; (2) “Farm to Table Wine and Cooking Adventure”; (3) “Farm to Table Wines…”; (4) “Freas Farm Winery is focused on serving high quality farm to table wines”; (5) “Farm to Table Wine Tasting featuring local farmers and organic wines from Bonterra Vineyards…”; and (6) “Farm to Table Wine and Food”. In addition, the Examining Attorney introduced into evidence articles from major newspapers discussing the phase, Farm to Table in connection with wine.

In an attempt to counter this evidence, the Applicant submitted third-party registrations for FARM TO TABLE formative marks for food products and related services. The Board held that the multiple third-party registrations were of little probative value because the printouts did not show if such registrations were allowed to register under a claim of acquired distinctiveness under Section 2(f) of the Trademark Act. In addition, the printouts did not show if the registrations required a disclaimer or if the registrations registered on the Supplemental Register.

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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.

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On first glance, this decision appears to be an unexpected result especially in light of the prior registration owned by the Appellant for the word mark CHURRASCOS for the same restaurant services. However, when viewing general principles of trademark law, maybe the outcome is not so unexpected. Regardless of your opinion, perhaps the easiest way to understand this ruling is to conclude that the mark has become generic over time. The Appellant in this matter, Cordua Restaurants, Inc. (“Cordua”) owns five restaurants marketed under CHURRASCOS. The restaurants feature South American dishes, including chargrilled Churrasco Steak. Years earlier, Cordua applied to the United States Patent & Trademark Office (“USPTO”) for the mark CHURRASCOS in standard character format for restaurant and bar services and catering. CHURRASCOS, the word mark registered on the Principal Register on June 3, 2008 under Section 2(f) after showing the mark acquired distinctiveness.

A few years later, Cordua attempted to register CHURRASCOS for the same restaurant services, but in a stylized format and it was refused. Cordua appealed to the Trademark Trial and Appeal Board (the “Board”) and it affirmed the Examiner’s refusal on the grounds that the mark was generic for restaurant services. See In re Cordua Restaurants LP, 110 USPQ2d 1227 (TTAB 2014) [precedential]. Cordua argued that its prior registration should be prima facie evidence of the mark acquiring distinctiveness. However, the Board responded by stating that if the mark is highly descriptive, additional evidence is required to prove distinctiveness. Cordua appealed to the U.S. Court of Appeals for the Federal Circuit (“CAFC”). See In re Cordua Restaurants, Inc.118 USPQ2d 1632 (Fed. Cir. 2016).

The CAFC affirmed the finding of the Board, holding there was substantial evidence to find the mark CHURRASCOS was generic for restaurant services. A generic term is a common descriptive name for a class of goods or services. The critical issue is whether the relevant consumer base primarily understands the subject term to refer to the class of goods or services in question. Proof of the public’s understanding of the subject term should be submitted into evidence from reliable sources such as dictionaries, online sites, publications, and newspapers. The USPTO bears the burden of proving that the mark is generic by clear and convincing evidence.

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