TTAB Mere Descriptiveness Case

In a 2020 non-precedential decision, the Trademark Trial and Appeal Board affirmed the mere descriptiveness refusal for THE CARDIO GROUP for “retail store services featuring medical devices,” along with medical training, teaching and non-downloadable instructional videos.  The TTAB agreed with the examining attorney’s findings and ultimately found that the Applicant’s mark was merely descriptive of the provided services as it described the features of all listed services.

Given that the mark was a composite mark, the examining attorney examined each portion of the mark separately to determine whether or not the mark as a whole was merely descriptive. First examining the portion CARDIO, the examining attorney found that the term, in connection with the Applicant’s services, was descriptive in both meaning and connotation. Turning to the term GROUP, the examining attorney argued that the term “group,” when used in a mark, is “commonly considered generic for a provider of services.” That statement aside, the next task was to figure out whether the commonly generic term was descriptive of the Applicant’s services. The examining attorney found that not only did the term refer to a cardio medical group as the source of the applicant’s services, but also described features of the services themselves. Finally, the examining attorney looked at the term THE and argued that the term had no independent meaning and was simply a definite article preceding the nouns “CARDIO” and “GROUP.”  In light of CARDIO’s descriptiveness, and GROUP’s genericness, the portion THE added no extra source-indicating significance to the Applicant’s mark.

In defense of the mark, the Applicant argued that the proposed mark did not retain the meaning of each of the words that comprise the mark. Moreover, the Applicant argued that there was no dictionary definition listed for “the cardio group,” and therefore, “consumers could have latitude to interpret its meaning.” The Court dismissed the latter argument quickly in reiterating that a mark does not have to appear in a dictionary in order for it to be merely descriptive of the Applicant’s services. In a final argument, the applicant reasoned that consumers would need to “undergo a multi-stage research and reasoning process” in order to understand what goods were provided under the mark and claimed the mark should be suggestive for the provided services. Turning to excerpts from the Applicant’s website, the Court found that the term CARDIO, in reference to heart-related services, immediately conveyed information about the Applicant’s services.

Ultimately, the Court found that the proposed mark, in connection with the specified services, conveyed information immediately about the services, and the wording, THE CARDIO GROUP, did not signify anything more than the plain meaning of each separate term. The mark was deemed to be merely descriptive under §2 (e)(1) and therefore unregistrable.

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