Articles Tagged with Term Of Art Or Trademark?

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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 See In re Bitvoyant, Serial No. 86693221 (February 9, 2017) [not precedential].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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