Articles Tagged with Why It Is Difficult To Overcome A Descriptiveness Refusal

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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.