In a 2021 non-precedential case, the Trademark Trial and Appeal Board affirmed a refusal of registration for the mark MALIBU SUPPER CLUB (SUPPER CLUB disclaimed) for restaurant and bar services and found the mark to be geographically descriptive under §2(e)(2).

To establish that a mark is geographically descriptive, the must satisfy three elements: (1) The primary significance of the term in the mark sought to be registered is the name of a place generally known to the public, (2) The services originate in the place named in the mark and (3) The public would make an association between the goods or services and the place named in the mark by believing that the goods or services originate in that place. See In re Newbridge Cutlery Co., 776 F.3d 854, 113 USPQ2d 1445, 1448 (Fed. Cir. 2015). Moreover, geographic descriptiveness “‘must be evaluated in relation to the particular goods [or services] for which registration is sought, the context in which [the mark] is being used, and the possible significance that the term would have to the average purchaser of the goods [or services] because of the manner of its use or intended use.’” In re Chamber of Commerce of the U.S.A., 675 F.3d 1297, 102 USPQ2d 1217, 1219 (Fed. Cir. 2012).

The Board began its analysis by stating the facts that were set forth in the recorded evidence: (1) The term MALIBU in the applied-for mark is a generally known geographic location, (2) The phrase “supper club” is commonly used by restaurants and bars to identify a type of restaurant, (3) Applicant’s services will originate in Malibu and (4) Relevant consumers will immediately make a connection between the place located in the mark, i.e., Malibu, California, and the services offered by Applicant, namely, restaurant and bar services.

However, the Applicant argued that the term MALIBU would not be seen primarily as a place by consumers, but rather as a common reference to luxury or relaxation. The Applicant’s argument relied on the definition a “[glitzy] area that Hollywood movie stars flock to,” which was taken from a “Pop Culture Dictionary” excerpt from Dictionary.com. The Board negated the argument as the full “Pop Culture Dictionary” passage made it clear that the primary significance of MALIBU was the geographic location, and the passage even began with “Malibu variously refers to a wealthy beach city near Los Angeles….” So, the Board found that consumers would immediately perceive the mark MALIBU SUPPER CLUB, in connection with the Applicants listed services, as designating the location of Applicant’s restaurant.

The Board then looked at the third-party registrations submitted by the Applicant that contained the term MALIBU. It found that the applications were not relevant to the issue at hand as one group of registrations involved goods or services that were unrelated to restaurant or bar services, and the second group of applications contained additional or distinctive wording and the Applicant’s additional wording, SUPPER CLUB, had already been disclaimed. Ultimately the Board stated, “As none of the marks featured in the above-referenced registrations is analogous to the applied-for mark, the third-party registrations submitted by Applicant do not change the result in this case.” See, e.g., In re Cordua Rests., Inc., 823 F.3d 594, 118 USPQ2d 1632, 1635 (Fed. Cir. 2016).  

In conclusion, the mark MALIBU SUPPER CLUB satisfied each of the three elements under the §2(e)(2) geographically descriptive test. The mark primary significance of the mark, not including the disclaimed terms, MALIBU SUPPER CLUB is the name of a place generally known to the public, the applied-for services originated in Malibu and as the Board previously stated, relevant consumers will immediately make a connection between the place located in the mark, i.e., Malibu, California, and the services offered by Applicant, namely, restaurant and bar services.  So, in light of the information at hand, the Board affirmed the §2(e)(2) refusal of registration.

As discussed on the post regarding merely descriptive marks, when determining whether a mark is merely descriptive or not, the decision must be made in direct relation to the goods or services with which it is being used. An examining attorney at the USPTO must look at the possible significance that the mark would have to the general consumers of the goods or services in the marketplace. Often, marks are considered merely descriptive under §2(e)(1) of the Lanham Act because they are terms that could be used to describe an entire category of goods or services. If a mark has been deemed merely descriptive and therefore unregistrable with the USPTO, an applicant may go before the Trademark Trial and Appeal Board on appeal. The Trademark Trial and Appeal Board will either affirm the refusal for registration or reverse the decision in favor of the applicant. Below are some of the most recent 2019 Trademark Trial and Appeal Board decisions affirming refusal for registration under §2(e)(1) of the Lanham Act:

In a 2019 non-precedential opinion, the Trademark Trial and Appeal Board affirmed the refusal for registration of the merely descriptive mark 19 CRIMES, for video and audio works and production, distribution and rental of recorded entertainment. The Board agreed with the Examining Attorney that the mark conveys an immediate knowledge of a feature of the goods or services, “namely, that the information and entertainment provided relates to the 19 crimes of 18^thand 19^th Century Britain that led to involuntary colonization in Australia.” The applicant argued that the mark was more suggestive than descriptive because the term 19 CRIMES does not directly provide any information about the goods or services for which it is being used. He explained that though his intended goods and services may revolve around that period of time, the material will be centered on unique stories of a few “incorrigible rogues” and their lives. The Board then stated that the mark could not be looked at in such a specific light, but in the context of the applicant’s goods and services. Continuing, the Board said that mark was broadly worded and encapsulated the 19 crimes wholly. In turn, the applicant argued that the mark was suggestive because his goods and services related to the individuals who were transported to Australia, not the crimes themselves; therefore, the mark does not “immediately or directly describe any feature, characteristic or quality of those goods or services.” The applicant said it would take the consuming public some stretch of the imagination to relate the mark to the goods and services for which it is being used. The Board disagreed but still gave an observation on the mark: “…merely describe[s] the nineteen crimes themselves under the broadly stated subject matter of Applicant’s goods and services.” In this fashion, the Board held the mark to be merely descriptive.

In a 2019 non-precedential opinion, the Trademark Trial and Appeal Board affirmed the refusal for registration of the merely descriptive mark SKEETER BAND, in connection with “mosquito repellent bracelets.”  In the first step of examination, the Examining Attorney submitted dictionary definitions for each term, “skeeter” and “band.” In doing so, the Examining Attorney found “skeeter” to mean a mosquito and “band” to mean “a flat, narrow band of material that you put around something.” Not only did the Attorney submit dictionary definitions, but multiple third-party registrations where either the word “skeeter” or “band” was disclaimed. The Board concurred that the terms SKEETER and BAND were merely descriptive when used in connection with the product. Furthermore, the Board also found that the two words taken together did not create a new or incongruous meaning, they held their original meaning and merely conveyed knowledge of a quality, feature, function or characteristic of the good. The applicant argued that SKEETER had more than one meaning in the dictionary, but the Board pointed out that the meaning of the term must be determined in direct relation to the goods, not in the abstract. Following, the applicant argued that SKEETER is an informal term meaning “mosquito,” however, the dictionary recognizes SKEETER as a common synonym for mosquito and, “is not so informal or obscure as to defy consumer understanding.” In a final argument, the applicant argued that SKEETER BAND did not instantly translate to “mosquito repellent band,” but the Board dismissed this argument in saying, “it is well settled that consumers have a habit of shortening names.” In light of this, the Board held that the mark was merely descriptive.

In another 2019 non-precedential opinion, the Trademark Trial and Appeal Board affirmed the refusal for registration of the merely descriptive mark BIKESTYLE, in connection with cycling apparel ranging from gloves to cycling jerseys and rainwear. The Examining Attorney found that the mark’s “wording merely describes a characteristic of applicant’s goods, specifically, a type of fashion made for riding a bicycle.” To support this statement, the Attorney provided dictionary definitions for the terms “cycling,” “bike” and “style.” In response, the applicant said that the mark did not refer directly to “fashion made for riding a bicycle…” rather it referred to the cyclists’ “way of life.” The applicant went on to argue that the mark was suggestive because it did not immediately convey the idea of clothing, and it would take the consuming public a moment to connect the mark with the goods. In consensus with the Examining Attorney, the Board maintained that the terms together, as a composite, were merely descriptive and did not evoke a “new or unique commercial impression.” As a result, the applicant argued that the term “style” had multiple meanings. Again, the Board rejected this argument saying, “That a term may have other meanings in different contexts is not controlling.” Simply, the mark is to be examined in direct relation with the goods or services for which it is used, not in the abstract. In a final argument, the applicant reasoned that no other third-party used the terms “bikestyle,” “bike style” or “bicycle style.” However, the Board reiterated that it is not necessary for the USPTO to show that others have used the mark or term in a similar fashion. The Board stated, “it is well established that even if an applicant is the only user of a merely descriptive term, this does not justify registration of that term.” In sum, the Board concluded that the mark was merely descriptive in accordance with the three reasons above.

When it comes to determining whether or not a mark is merely descriptive, each case is determined based upon its own set of facts. The three cases above were all deemed merely descriptive and therefore the marks were not afforded protection under §2(e)(1) of the Lanham Act. In order for a merely descriptive mark to be afforded protection, it must acquire a secondary meaning. However, even if a mark acquires a secondary meaning, it is not a guarantee that it will be eligible for registration with the USPTO.

Under the Trademark law, merely descriptive marks are not entitled to registration on the Principal Register. Merely descriptive marks are marks that describe an ingredient, quality, characteristic, function, feature, purpose or use of the specified goods or services. Unlike suggestive marks that take a certain amount of thought to associate the mark with a good or service, merely descriptive marks convey an immediate idea of an ingredient, quality, characteristic, feature, function, purpose or use of the goods or services in question. Both types of marks (Descriptive and Suggestive) are discussed at length in the post on the Spectrum of Distinctiveness.

As discussed in the post on Secondary Meaning, a merely descriptive mark may not be afforded the protections afforded under the Lanham Act without having acquired distinctiveness. Simply because an owner may be the first and only user of a mark that may be descriptive does not mean the mark is entitled to registration by the U.S. Trademark Office or even protection by the courts.

When determining whether a mark is merely descriptive or not, the decision must be made in direct relation to the goods and services with which the mark is used. An Examining Attorney at the Trademark Office must look at the possible significance that the mark would have to the general consumers of the goods or services in the marketplace. When searching for the context in which a mark may be used, sources include websites, publications, labels, packages, advertising material, explanatory text on specimens for the goods or services and consumer surveys.  Marks that are merely descriptive, are often terms that could be used to describe an entire category of goods or services; therefore, they are not inherently associated with one specific brand of goods or services. For example:

In 2016, the Trademark Trial and Appeal Board affirmed an examining attorney’s decision in finding the mark “BEST PROTEIN,” merely descriptive of the owner’s dietary and nutritional supplements. In addition to other elements, the examining attorney pointed out that protein is a common and heavily promoted element in dietary and nutritional supplements, he furthered his argument documenting several products that included the term protein not only in the marks themselves but listed on the ingredients label as well.

Furthermore, a term does not have to describe all of the purposes, functions, characteristics or features of a good or service to be considered merely descriptive. It can be classified as such if the term describes one important function, attribute or property. In a similar fashion, the term does not need to describe all of the goods or services identified on the application, so long as it describes one of them. An example of this can be seen in this decision:

In 2018, the Trademark Trial and Appeal Board affirmed a trademark examining attorney’s decision that the mark “BUYER ENGINE” was merely descriptive in reference to the owner’s real estate marketing services. Along with numerous other reasons, the Board stated that the mark refers “to a significant feature of the services themselves…”

A mark may also be considered merely descriptive if the listed goods or services fall within a subset of the of their respective class identified by the term.

Assessing whether a mark is merely descriptive depends upon the facts in each case.

Our Office can help you determine whether your mark is merely descriptive or suggestive for the goods and services with which it is connected.

When it comes to choosing a trademark, it is important to understand that trademarks are categorized on the Spectrum of Distinctiveness. There are five categories of marks from weakest to strongest: generic, descriptive, suggestive, arbitrary and fanciful. Generic terms may not be trademarked.

Descriptive marks, which are the second weakest, may become eligible for trademark protection under the Lanham Act if they acquire a secondary meaning (i.e. acquires distinctiveness). A secondary meaning is when a descriptive term having a common meaning, takes on a different meaning so that, over time, in the minds of the public, the term becomes synonymous with an owner’s specific goods or services. An owner is required to prove that the term’s secondary meaning is associated with the owner and not the goods or services in general. An example of a descriptive mark that has acquired a secondary meaning is SHARP for the brand of televisions. While the general public knows the meaning of the term “sharp” as a general descriptor, that is descriptive of the picture on the television, it has acquired a secondary meaning, and is now associated with the specific brand of televisions, not just televisions in general.

When determining whether or not a mark has acquired distinctiveness the courts consider four factors: (1) the length and nature of a mark’s use, (2) the nature and extent of advertising and promotion of the name, (3) the efforts of the owner to promote a conscious connection between the name and the business and (4) the degree of actual recognition by the public that the name designates the owner’s product or service.

Regarding the length and nature of a mark’s use, the mark must be used for a minimum period of five years exclusively and continuously in order to be considered eligible for protection. However, even if the owner has met the five-year minimum period of exclusive and continuous use, it is not a guarantee that the Trademark Office and courts will accept that the mark has acquired distinctiveness.

In terms of the second factor, the Trademark Office and courts consider the extent to which the owner advertised and promoted the name in connection with his/her goods or services. Examples of what courts consider when assessing this factor include the geographical extent of the advertisements and promotional efforts, advertising expenditure reports and the number of sales or consumers in correlation with the advertisements and promotions.

The third factor, the owner’s efforts to promote a conscious connection between the name and the business, relates to what steps the owner has taken to make his/her mark synonymous with his/her goods or services. Promotional films highlighting the product or service’s unique strengths and qualities in connection to the mark are an example of this.

Finally, the fourth and often most telling factor is the degree of actual recognition by the public that the name designates the owner’s product or service. Actual recognition can be proven through direct evidence such as consumer testimonies and market surveys. Testimonies or signed statements by other providers in the industry are powerful indicators of actual recognition as well.

Though these are the four criteria that the Trademark Office and courts assess when considering if a mark has acquired secondary meaning, there are no absolutes. Meaning, an owner who can provide minimal evidence to support each of the four components may be denied protection, while an owner who can provide strong evidence for three of the four components may be deemed eligible for protection. If the Trademark Office or a court fails to find secondary meaning strong enough for federal protection, an owner can continue to use his/her mark under common law use.