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Merely Descriptive Or Suggestive?

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.

A term is descriptive if it immediately conveys knowledge regarding a characteristic, feature, function or quality of the goods or services. See In re Trivita, Inc., 783 F.3d 872, 114 USPQ2d 1574 (Fed Cir. 2015). The Applicant argues that the mark does not immediately convey information, and in fact the consumer must use their imagination and thought to arrive at the qualities of the goods. The Examining Attorney set out to prove that the mark was descriptive of the goods. To prove this fact, any competent source may be utilized such as dictionaries, newspapers, surveys, publications, websites, marketing materials, or packaging of the goods. The Examining Attorney pointed to the dictionary definition of ATHLETE and focused on the fact that one definition for INTELLIGENCE is information. In the athletic device field, intelligence is gathered and monitored while the athlete performs certain physical activities. In addition, the Examining Attorney submitted excerpts from the applicant’s website where it is clearly stated that the product’s purpose is to be worn by an athlete and to collect data from the athlete during the physical activity to enhance such performance.

The applicant argues that there are alternative meanings to the words ATHLETE INTELLIGENCE. However, just because other meanings exist for the terms, does not mean the consumer will conjure up the perception of the alternate meaning. The test for descriptiveness requires the consumer to know the nature of the goods and services, and based on the specific goods, one meaning of the term will typically come to mind over another. The Examining Attorney argued that since the goods contain electronic sensors to collect biometric data, the collection of information will come to the minds of consumers when encountering the term ATHLETE INTELLIGENCE. However, the applicant argued that consumers would understand the mark to be a double entendre, and not merely descriptive. The definition of a double entendre is where there is ambiguity of meaning rising from language lending itself to more than one interpretation. The Board concluded that the mark did not have a second non-descriptive meaning, thus there was not a double entendre. The Board affirmed the refusal. If you have questions or concerns about your mark possibly being descriptive, please contact the firm for a courtesy consultation.