Articles Posted in Merely Descriptive Or Generic

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.

The U.S. Court of Appeals for the Fifth Circuit recently reminded trademark owners that secondary meaning may not necessarily develop over time for a merely descriptive trademark. A merely descriptive mark is one that describes a feature, function, purpose, ingredient, quality, or use of an applicant’s goods or services. This principal is discussed in the Trademark Manual of Examining Procedure §1209.01 (b) and on our web page entitled Disadvantages of Descriptive Trademarks. A merely descriptive mark cannot be registered on the Principal Register because it lacks distinctiveness.

Marks on the Supplemental Register are weak marks that are difficult to enforce and will only receive a narrow scope of protection. Significant effort and resources must be invested over time to strengthen the merely descriptive mark through use, promotion, marketing, and advertising the mark in commerce. A significant budget must exist for marketing and advertising.

If an owner of a merely descriptive mark wants to sue for infringement, he must prove that he owns a proprietary right in the mark by showing the mark has acquired distinctiveness. Often, the end result will be that the mark owner is unable to prevent competitors from using a similar mark on a related good or service and this was the outcome in the Fifth Circuit in Test Masters Educ. Servs., Inc. v. Robin Singh Educ. Servs., Inc. Case No. 20250 (5th Cir., August 21, 2015).

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In a recent precedential decision of the Trademark Trial and Appeal Board (the Board) issued on April 21, 2015 the Board affirmed the Examiner’s refusal to register the mark BUYAUTOPARTS.COM with a disclaimer for “.com”. Meridian Rack & Pinion (the “Applicant”) sought registration on the Supplemental Register for the mark BUYAUTOPARTS.COM for online retail store services featuring auto parts. The Examining Attorney refused registration on the basis that the mark was generic for the services indicated and incapable of distinguishing the Applicant’s services. See In re Meridian Rack & Pinion DBA BUYAUTOPARTS.COM.

Generic terms are common names understood by the relevant consuming public to be the principal category of the goods or services. The Court of Appeals for the Federal Circuit has held that the most significant issue in a generic trademark case is whether the relevant public primarily understands that the proposed mark refers to the genus of the goods or services. See H. Marvin Ginn v. International Association of Fire Chiefs, 782 F.2d 987, 228 USPQ 528, 530 (Fed. Cir. 1985). There is a two-part analysis when determining if a mark is generic. The first inquiry is what is the genus of the goods or services (what is the class of goods or services or the principal category) and the second inquiry is does the relevant group of consumers understand that by use of the subject mark it refers to a principal category of goods or services.

To determine the principal class of goods or services one can typically look to the Applicant’s identification of goods or services. See Magic Wand Inc. v. RDB Inc., 940 F.2d 638, 19 USPQ2d 1551, 1552 (Fed. Cir. 1991). Here, the Applicant’s identification of goods is “on-line retail store services featuring auto parts”. To better understand the identification utilized by the Applicant one should look to the dictionary definition (which was submitted into the record by the Examining Attorney). The dictionary defines “retailing” as selling of merchandise directly to the consumer.

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At the end of 2014, the Trademark Trial and Appeal Board (the “Board” or “TTAB”) issued a surprising decision (albeit non-precedential), finally questioning the rule that bars all titles of single creative works from receiving federal trademark registration. See In re King Productions, Inc. Serial No. 76703458 (November 19, 2014) [not precedential]. King Productions, Inc. (“Applicant”) was seeking registration of the phrase, ROCK YOUR BODY on the principal register for DVDS and books in the fields of dance, exercise and fitness. The Examining Attorney refused registration on the basis that the term did not function as a trademark under Sections 1, 2, & 45 of the Trademark Act. The Examiner stated that the specimens of record showed that the proposed mark was merely the title of a single creative work (the title of a book and a DVD). When the refusal was made final the Applicant appealed to the TTAB.

For decades, the USPTO has held that the title of a single work such as a book, DVD, movie or play is not considered a trademark and is not capable of registration. See Herbko Int’l Inc. v. Kappa Books, Inc., 308 F.3d 1156, 64 USPQ2d 1375 (Fed. Cir. 2002). Although, titles of a series of works can be registered. The reasoning for this is because a series provides a trademark function in that the series indicates that each work comes from the same source. Keep in mind that each work in the series may have its own title separate from the trademark for the series. The name of the series is not descriptive of any one work.

The Board noted that titles of single works have been refused under sections 1, 2, & 45 of the Trademark Act for some time now. However, the Board declared that the proper basis for refusal of titles of single works should be based on Section 2(e)(1) of the Trademark Act. This basis is appropriate because the title describes the work. The Board’s assertion and change of the basis for refusal of a title of a single work is significant because an applicant can now overcome the refusal by showing the mark has acquired distinctiveness under Section 2(f) of the Trademark Act. An applicant would have to show that the relevant public understands that the primary significance of the mark is to indicate or identify the source of the product or service rather than the product itself. If the public views the mark merely as a title of a single work, then it has not acquired distinctiveness or secondary meaning. Although, the Board opened the door to overcome a potential refusal under Section 2(e)(1), the applicant will have a difficult challenge to produce evidence of secondary meaning.

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One of the most frequently asked questions in our trademark practice is, can my last name be used as a trademark? The answer is that it depends on the nature of the surname. In this blog post we will examine an example of when a surname can be used as a trademark and an example of when it would be considered primarily merely a surname. See In re G R  Lane Health Products Limited, Serial No. 85115445 (July 10, 2013) [not precedential]. In this case, the Applicant filed for the mark JAKEMANS for throat lozenges and similar goods in International Class 5 and hard candies in International Class 30. The Examining attorney refused the registration under section 2(e)(4) of the Trademark Act (15 U.S.C. §1052(e)(4)) on the grounds that JAKEMANS is primarily merely a surname.

The first question to ask is when viewing the trademark in relationship to the goods or services, will the purchasing public perceive the term’s primary significance as that of a surname. The Trademark Trial and Appeal Board (the “Board”) has identified five factors to be considered in making this determination:

(1)   Is the surname rare;

(2)   Is the term the surname of anyone connected with the applicant;

(3)   Does the term have recognized meaning other than as a surname;

(4)   Does the term have the look and feel of a surname; and

(5)   Whether the stylization of the lettering is distinctive enough to make a separate commercial impression.

If there is any doubt as to whether a term is primarily merely a surname, the Board will resolve the doubt in favor of the applicant. See In re Benthin Management GmbH, 37 USPQ2d 1332, 1334 (TTAB 1995). During the prosecution, the Examining Attorney presented evidence to show that the surname was not rare. The Examiner produced evidence showing 87 names in a telephone directory for the term Jakeman. The Board held that 87 names is NOT substantial evidence that Jakemans is a common surname. In fact, the Board determined that Jakemans is a very rare surname in the U.S. See also, In re United Distillers plc, 56 USPQ2d 1220 (TTAB 2000), where HACKLER was held to be a rare surname despite the 1,295 listings in the telephone directory.

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One week ago in a precedential opinion, the TTAB affirmed the Examining Attorney’s refusal of the mark TOURBILLON & Design filed by The Swatch Group Management Services AG (hereinafter either “Applicant” or “Swatch”). The proposed trademark TOURBILLON & Design was seeking registration for  “jewellery, horological and chronometric instruments” in International Class 14. See In re The Swatch Group Management Services AG, Serial No. 85485359, April 18, 2014 [precedential]. The basis for the refusal was Section 2(e)(1) of the Trademark Act on the ground that the trademark was merely descriptive of its goods. A term is merely descriptive of goods or services if it communicates to consumers an immediate idea of a quality, ingredient, characteristic, feature, purpose, function, or use of the goods or services. See In re Chamber of Commerce of the U.S., Serial No. 675 F.3d 1297, 102 USPQ2d 1217, 1219 (Fed. Cir. 2012). See also our blog post entitled Limited Abandons Its Federal Trademark Application For Candy, where we discuss how merely descriptive marks may be registered on the Supplemental Register.

Whether a mark is merely descriptive is determined in relation to the goods and services as identified in the trademark application. A finding that a trademark is merely descriptive is a factual finding. This determination must be based on substantial evidence. See In re Bayer Aktiengesellschaft, 488 F.3d 960, 82 USPQ2d 1828, 1831 (Fed. Cir. 2007). It is important to keep in mind that the question to ask when evaluating a term for descriptiveness is whether someone who knows what the goods and services are will understand the mark to convey information about the goods and services. See DuoProSS Meditech Corp. v. Inviro Medical Devices, Ltd., 695 F.3d 1247, 103 USPQ2d 1753, 1757 (Fed. Cir. 2012). Often, applicants believe that the central inquiry is whether someone presented with the mark could guess what the goods and services are; however this is incorrect.

Swatch’s trademark consisted of the word “Tourbillon” and a design of a tourbillon. The Examining Attorney submitted into evidence an excerpt from that essentially stated that a “Tourbillon” was an addition to the mechanics of a watch escapement. The Applicant admitted that the term Tourbillon described a mechanism that is part of the escapement found in highly specialized watches. There were also several other descriptions admitted into the record by the Examining Attorney, all consistent with the definition cited in Moreover, Applicant voluntarily entered a disclaimer of the exclusive right to use Tourbillon apart from the mark as shown (then later tried to restrict it to only certain goods). This evidence is incredibly persuasive because the applicant by admission acknowledged that the term lacked distinctive value for the goods identified in the trademark application.

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In a precedential decision released on February 28, 2014, the TTAB (Trademark Trial and Appeal Board) granted the petition for cancellation of Frito-Lay Inc. (“Frito-Lay”) and the Board declared the term “Pretzel Crisps” was generic for pretzel crackers. In turn, the Supplemental Registration for Pretzel Crisps owned by Princeton Vanguard, LLC (“Princeton”) was cancelled. Frito-Lay North America Inc., v. Princeton Vanguard, LLC, 109 USPQ2d 1949 (TTAB 2014) [precedential]. Princeton filed an application for Pretzel Crisps for pretzel crackers on the Supplemental Register. The registration was issued on July 26, 2005 with a disclaimer of the exclusive right to use the term “pretzel” apart from the mark as shown. The United States Patent & Trademark Office (USPTO) allows trademarks to be registered on both the Principal and the Supplemental Register. The Principal Register is reserved for marks that are inherently distinctive and unique indicators of a single source of goods and/or services. The Supplemental Register maintains marks that are descriptive and at the time of registration are unable to indicate a single source of goods and/or services. Trademarks on the Principal Register are afforded the full benefits of the trademark laws, in contrast to marks on the Supplemental Register that receive partial advantages. See our webpage entitled Filing Your Mark On the Principal Register And Supplemental Register for more details on the two registers.

Trademarks on the Supplemental Register do receive certain key benefits. These benefits include being able to use the ® symbol in conjunction with the mark once it is registered, USPTO Examiners protecting it against potential registrations of confusingly similar marks under the Trademark Act Section 2(d), filing an infringement action in federal court, and lastly the Supplemental Registration can act as the basis for a foreign filing. In addition, if the mark acquires secondary meaning, the registrant can file a new application to register on the Principal Register. The registrant can demonstrate secondary meaning in various different manners, however continuous use of the trademark in commerce with the goods or services identified in the application for approximately five years is generally sufficient.

Several years after the Supplemental Registration for Pretzel Crisps issued, Princeton filed a trademark application for Pretzel Crisps on the Principal Register claiming acquired distinctiveness for the term as a whole. Frito Lay filed an opposition to this application in July 2010. Then in September 2010, Frito Lay filed a cancellation petition against the Supplemental Registration for Pretzel Crisps. The TTAB consolidated the cases.

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On February 6, 2013, Limited (“King”), the social game publisher of the popular Candy Crush Saga, filed a trademark application for the mark CANDY  in international classes 9, 25, & 41. Among other goods and services, King was looking to protect the term CANDY for computer games, downloadable software, clothing, and a variety of services in the entertainment and sports arena. The filing of the trademark application brought controversy to the gaming world once the media reported on it. Many gaming software developers thought this was an effort to gain control over a common word and exclude other smaller competitors from use it in broad categories of goods and services. King spoke out on its motives  for filing a trademark application for CANDY.

I can understand the point of view from King’s competitors. I also think King has a valid concern in protecting its intellectual property and in preventing consumer confusion in the marketplace. Those who understand trademark law would point out that a common word, can most certainly function as a trademark, as long as it is not used to describe a function, characteristic, quality, feature, purpose, use or ingredient of the goods or services. See TMEP §1209.01(b).

If a mark is merely descriptive of the goods and services, it will be be refused on the Principal Register, but may be able to register on the Supplemental Register.  In other words, if the mark is not inherently distinctive, it may register on the Principal Register, only upon a showing of acquired distinctiveness. See our blog post entitled Can A Flavor Or A Scent Receive Federal Trademark Protection? for a detailed discussion of acquired distinctiveness. Whether a mark is merely descriptive must be made after considering the goods and services in relationship to the proposed mark. Also, if only part of a multiword trademark is descriptive, then it may be appropriate to disclaim any exclusive right in the descriptive portion of the mark. However, the mark should be allowed to proceed to registration with the disclaimer.

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