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Descriptive Trademarks

The Lanham Act, specifically 15 U.S.C. § 1052(e)(1), sets forth the following condition for trademark registration as to marks that are “merely descriptive”:

No trademark by which the goods of the applicant may be distinguished from the goods of others shall be refused registration on the principal register on account of its nature unless it ... Consists of a mark which (1) when used on or in connection with the goods of the applicant is merely descriptive or deceptively misdescriptive of them, (2) when used on or in connection with the goods of the applicant is primarily geographically descriptive of them, except as indications of regional origin may be registrable under section 4 [15 USC 1054], (3) when used on or in connection with the goods of the applicant is primarily geographically deceptively misdescriptive of them, (4) is primarily merely a surname, or (5) comprises any matter that, as a whole, is functional.

But what exactly does “merely descriptive” mean? Fortunately,the USPTO has articulated, based upon case law, the following criteria as to whether a trademark or service mark is merely descriptive (emphasis added):

A mark is considered merely descriptive if it describes an ingredient, quality, characteristic, function, feature, purpose, or use of the specified goods or services. See In re Gyulay, 820 F.2d 1216, 3 USPQ2d 1009 (Fed. Cir. 1987) (APPLE PIE held merely descriptive of potpourri); In re Bed & Breakfast Registry, 791 F.2d 157, 229 USPQ 818 (Fed. Cir. 1986) (BED & BREAKFAST REGISTRY held merely descriptive of lodging reservations services); In re MetPath Inc., 223 USPQ 88 (TTAB 1984) (MALE-P.A.P. TEST held merely descriptive of clinical pathological immunoassay testing services for detecting and monitoring prostatic cancer); In re Bright-Crest, Ltd., 204 USPQ 591 (TTAB 1979) (COASTER-CARDS held merely descriptive of a coaster suitable for direct mailing). Similarly, a mark is considered merely descriptive if it immediately conveys knowledge of a quality, feature, function, or characteristic of an applicant’s goods or services. In re Chamber of Commerce of the U.S., 675 F.3d 1297, 1300, 102 USPQ2d 1217, 1219 (Fed. Cir. 2012); In re Bayer Aktiengesellschaft, 488 F.3d 960, 963-64, 82 USPQ2d 1828, 1831 (Fed. Cir. 2007).

The determination of whether a mark is merely descriptive must be made in relation to the goods or services for which registration is sought, not in the abstract. In re Chamber of Commerce, 675 F.3d at 1300, 102 USPQ2d at 1219; In re Bayer, 488 F.3d at 964, 82 USPQ2d at 1831. This requires consideration of the context in which the mark is used or intended to be used in connection with those goods/services, and the possible significance that the mark would have to the average purchaser of the goods or services in the marketplace. See In re Chamber of Commerce, 675 F.3d at 1300, 102 USPQ2d at 1219; In re Bayer, 488 F.3d at 964, 82 USPQ2d at 1831; In re Omaha Nat’l Corp., 819 F.2d 1117, 2 USPQ2d 1859 (Fed. Cir. 1987); In re Abcor Dev. Corp., 588 F.2d 811, 200 USPQ 215 (C.C.P.A. 1978); In re Venture Lending Assocs., 226 USPQ 285 (TTAB 1985). The mark need not describe all the goods and services identified, as long as it merely describes one of them. See In re Stereotaxis Inc., 429 F.3d 1039, 1041, 77 USPQ2d 1087, 1089 (Fed. Cir. 2005) (“[T]he Trademark Office may require a disclaimer as a condition of registration if the mark is merely descriptive for at least one of the products or services involved.”)

It is not necessary that a term describe all of the purposes, functions, characteristics, or features of a product to be considered merely descriptive; it is enough if the term describes one significant function, attribute, or property. In re Chamber of Commerce, 675 F.3d at 1300, 102 USPQ2d at 1219; In re Oppedahl & Larson LLP, 373 F.3d 1171, 1173, 71 USPQ2d 1370, 1371 (Fed. Cir. 2004) (“A mark may be merely descriptive even if it does not describe the ‘full scope and extent’ of the applicant’s goods or services,” citing In re Dial-A-Mattress Operating Corp., 240 F.3d 1341, 1346, 57 USPQ2d 1807, 1812 (Fed. Cir. 2001)); Gyulay, 820 F.2d at 1218, 3 USPQ2d at 1010; In re Positec Group Ltd., 108 USPQ2d 1161, 1171 (TTAB 2013) (“[I]f the mark is descriptive of some identified items – or even just one – the whole class of goods still may be refused by the examiner.”); In re Cox Enters. Inc., 82 USPQ2d 1040 (TTAB 2007) see also In re Omaha Nat’l Corp.,819 F.2d 1117, 1119, 2 USPQ2d 1859, 1861 (Fed. Cir. 1987) (rejecting argument that descriptiveness should be limited to a quality or characteristic of the service itself and holding that it includes a designation descriptive of the service provider).

A term also may be considered merely descriptive if the identified services fall within a subset of services indicated by the term. See In re Amer. Soc’y of Clinical Pathologists, Inc., 442 F.2d 1404, 1406-07, 169 USPQ 800, 801 (C.C.P.A. 1971) (holding that REGISTRY OF MEDICAL PATHOLOGISTS was descriptive of certain claimed services that were implicitly subsumed within service of providing a registry of medical pathologists and of additional claimed services that were “supporting, ancillary or auxiliary to the primary function” of applicant’s registry services). See also In re Chamber of Commerce of the U.S., 675 F.3d 1297, 1301-02, 102 USPQ2d 1217, 1220 (Fed. Cir. 2012) (NATIONAL CHAMBER held descriptive because “substantial evidence supports the TTAB's determination that the designated business and regulatory data analysis services are within the scope of traditional chambers of commerce activities” of “promoting the interests of businessmen and businesswomen”).

Although a mark that is merely descriptive cannot be registered on the Principal Register, such a mark can possibly be registered on the Supplemental Register. Unlike placement on the Principal Register, placement on the Supplemental Register, does not:

  • Provide constructive notice of ownership or even a legal presumption of ownership as to infringement litigation;
  • Permit the mark owner to file the mark with U.S. Customs to prohibit importation of infringing goods;
  • Create a presumption as to the mark owner's exclusive right to use the mark nationwide

Although this restriction may seem unfair at first glance, it reflects one of the principal objectives of the Lanham Act: to allow businesses to protect their distinctive marks associated with the sales of goods or the provision of services. If a business were to receive a trademark for a merely descriptive term, which hasn't become synonymous with the business, that would likely have the effect of giving that business a perpetual monopoly as to an entire category or type of goods or services.

This brief overview of some important considerations associated with trademark registration is by no means comprehensive. Always seek the advice of a competent professional when making important financial and legal decisions.

Steve Cook is an attorney at Cook & Cook. Although his office is located in Mesa, Arizona, he represents clients throughout the Phoenix, Arizona Metropolitan area including the following east valley cities: Scottsdale, Paradise Valley, Tempe, Chandler, & Gilbert.

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