In a 2021 nonprecedential case, the Trademark Trial and Appeal Board reversed the §2(e)(1) refusal to register the mark FAST DRINK for “Nutritional meal replacement drinks adapted for medical use; herbal teas for medical treatments,” and found that the mark was not merely descriptive of its cited goods.

To begin, a mark is merely descriptive if it “consist[s] merely of words descriptive of the qualities, ingredients or characteristics of the goods or services related to the mark.” In re Oppedahl & Larson LLP, 373 F.3d 1171, 71 USPQ2d 1370, 1371 (Fed. Cir. 2004). Further, when a mark consists of multiple terms, it does not automatically create a nondescriptive word or phrase. In re Associated Theater Clubs Co., 9 USPQ2d 1660, 1662 (TTAB 1988). If each term retains its merely descriptive significance, in relation to the cited goods or services, the combination of the terms results in a mark that is still overall merely descriptive. Oppedahl, 71 USPQ2d at 1371. However, a mark that is comprised of merely descriptive components, which ultimately create a nondescriptive meaning, or a meaning insignificant to the cited goods or services, the mark may still be registrable. Further, a mark may be considered suggestive, as opposed to merely descriptive, if when encountered with the cited goods, requires a certain degree of reasoning, imagination, thought or perception in order to determine the attributes of the cited goods. See, e.g., In re Abcor Dev. Corp., 588 F.2d 811, 200 USPQ 215, 218 (CCPA 1978).

The Examining Attorney argued that the mark FAST DRINK was merely descriptive of a significant feature of the cited goods, specifically that the goods were “for use during periods when a consumer either completely abstains from food, instead consuming herbal teas or meal replacement drinks such as those described in applicant’s application or when a consumer greatly reduces the food for a certain period, instead consuming herbal teas or meal replacement drinks.” The Examining Attorney used dictionary definitions of the terms “fast” and “drink” to support the argument and pointed specifically to the following definitions: fast – “[t]he act or practice of abstaining from or eating very little food” and “drink” – “liquid suitable for swallowing especially to quench thirst or to provide nourishment or refreshment.”

The Board agreed that the terms retained their individual meaning, but it maintained that there was a lack of evidence to support that the term FAST DRINK, as a unitary mark, referred to a drink that was “consumed during, or in preparation for, a fast.” However, the Board stated that even if consumers were to perceive the mark in that manner, there were other ways to perceive it as well, given that the term “fast” is also defined as “acting, moving, or capable of acting or moving quickly; swift,” and “accomplished in relatively little time.” Because of these other viable definitions, the Board believed that consumers could also perceive FAST DRINK as a product that could be quickly prepared, used as quick snack or an on-the-go meal replacement, which could be used during fasting. The Board noted that precedent ruled that “marks which create a double entendre or double meaning are not merely descriptive.” See., e.g., In re Tea and Sympathy Inc., 88 USPQ2d 1062, 1064 (TTAB 2008).

Ultimately, the Board stated that since it found FAST DRINK equally as likely to be perceived as indicating a drink that could be used while fasting, a drink that could be made quickly or a drink that could be consumed quickly or as an on-the-go meal replacement, the mark was “at most, suggestive of the identified goods.” As such, the Board concluded that the mark FAST DRINK was a double entendre in connection with the listed goods and reversed the §2(e)(1) refusal to register.

In a 2020 nonprecedential case, the Trademark Trial and Appeal Board reversed a §2(e)(1) mere descriptiveness registration refusal for ONE TEAM CARE, for “providing temporary use of online non-downloadable cloud computing software for coordinating the provision of healthcare among caregivers and patients.”

The Applicant, TriarQ Health, LLC, argued that its proposed mark was not merely, descriptive, because it did not describe a feature or attribute of the identified goods or services, instead, it was suggestive of a function, feature or characteristic of its services. In support of its argument, the Applicant identified nine third-party registrations for the marks “ONE TEAM” and “ONE TEAM” formative marks issued for separate entities and different goods and services. Three of which related closely to the Applicant’s services: (1) “ONE TEAM. ONE FOCUS. LIFE,” for “medical diagnosis and treatment of cancer,” (2) “ONE CENTER. ONE FOCUS. ONE TEAM.” for “medical services, namely, medical imaging, surgery and treatment services” and (3) “ONETEAM.BUILD,” for “providing temporary use of on-line, non-downloadable software for use…in the field of residential and commercial design and construction,” and related activities. However, the Examining Attorney argued that the Applicant’s mark was simply a “combination of descriptive terms that immediately conveys a feature of applicant’s services, namely, software services that coordinate a “one team” method or strategy of care for patients.”

In beginning its analysis of the mark, the Board stated, that it’s not just about whether a consumer would be able to inference the nature of the goods or services from the mark alone, but, “rather, we evaluate whether someone who knows what the goods or services are will understand the mark to convey information about them.” See DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd., 695 F.3d 1247, 103 USPQ2d 1753, 1757 (Fed. Cir. 2012).

The Board then reviewed the evidence submitted by the Examining Attorney starting with the seven submitted screenshots of different websites from healthcare providers and medical trade journals that used the term “one team,” in the context of various aspects of health care. The Board ultimately decided that the evidence showed only limited use of the term “one team” in connection with various services related to providing a “multidisciplinary approach to medical and health-related services and training.” In regard to this particular evidence, the Board found that the Applicant’s services may be used, among other things, to coordinate healthcare services among a “team” of caregivers to patients. The Board stated, “‘One team’ is a nebulous or, at worst, suggestive term in all of the articles in which it appears.”

The Board then moved to the dictionary definitions submitted by the Examining Attorney of the words comprising the mark. (1) ONE – “being a single unit or thing; constituting a unified entity of two or more components,” (2) TEAM – “a number of persons associated together in work or activity” and (3) CARE – “charge; supervision (under a doctor’s care); to give care (care for the sick.)” It found that the definitions provided fell short of demonstrating that ONE TEAM was merely descriptive of a function or characteristic of the Applicant’s software services for in the field of healthcare, to a degree of particularity. “To be merely descriptive, a term must forthwith convey an immediate idea of a quality, feature, function, or characteristic of the relevant goods or services with a ‘degree of particularity.’” See The Goodyear Tire & Rubber Co. v. Cont’l Gen. Tire, Inc., 70 USPQ2d 1067, 1069 (TTAB 2008) (internal citations omitted.)

In regard to all of the submitted evidence, the Board found that it was impossible to determine whether or not the use of “one team” or “one team care” merely represented the use of the term in the particular context, or if it indicated the use of the term to describe a particular aspect of the Applicant’s medical software services. In terms of the Applicant’s software services could be used, among other things, to facilitate a “one-team” approach to medical care, the Board found that “imagination or additional thought [would be] required to reach that conclusion.” See, e.g., In re George Weston Ltd., 228 USPQ 57 (TTAB 1985).

In conclusion, the Board ultimately decided that the Applicant’s mark ONE TEAM CARE was not merely descriptive under §2(e)(1) and reversed the refusal to register.

In a 2020 non-precedential opinion, the Trademark Trial and Appeal Board affirmed a §2(e)(1) refusal of registration for the mark “ORIGINAL FOLDED PIZZA,” (PIZZA disclaimed) for pizza and pizza-related goods.

A Pizza LLC. (Applicant) argued that “a mark comprising a combination of merely descriptive components is registrable if the combination of terms creates a unitary mark with a non-descriptive meaning, or if the composite has an incongruous meaning as applied to the goods or services.” The Applicant then cited an online slang dictionary and claimed that the term “folded” referred to “being drunk,” and cited third-party registrations such as the “Drunk Oyster,” and further attempted to argue that the mark’s alternative meaning suggested a “drunk slice of pizza.”

The Board began its analysis by studying each element of the mark and stated that if each word in the mark retained its mere descriptiveness in relation to the goods in question, then as a result, the mark as a whole would be deemed merely descriptive. “[We] are required to examine the meaning of each component individually, and then determine whether the mark as a whole is merely descriptive.” Citing DuoProSS, 103 USPQ2d at 1758.

Starting with the term “original,” the Board agreed with the Examining Attorney’s argument that the word “original” is simply a laudatory term, and merely descriptive because it simply boasts the “first-of-its-kind” of the Applicant’s folded pizza. It concluded that in this context, “There is no doubt that the word ORIGINAL in Applicant’s proposed mark is merely descriptive of the goods…”

The Board then turned to the term  “folded,” which the Applicant based its entire argument upon. The Board first referenced the dictionary definition of the term “folded,” which was, “to lay one part over another part of…” After analyzing the Applicant’s website, it was clear that the term was used in that exact manner, as it touted the Applicant’s “folded” pizza was conveniently folded in half. In a brief response to the Applicant’s sole argument, the Board found that nothing in the Applicant’s use of the term “folded” conveyed an alternative meaning, such as a “drunk slice of pizza.” “That a term may have other meanings in different contexts is not controlling,” See In re Canine Caviar Prods., Inc., 126 USPQ2d 1590, 1598 (TTAB 2018)

 Finally, the Board turned to the disclaimed term “pizza.” The Board stated that it was a generic term and merely an identification of the Applicant’s goods. It stated that “As a generic term, PIZZA is ‘the ultimate in descriptiveness.’”

In conclusion, the Board found that the Applicant’s proposed mark was no more than a sum of its descriptive parts. Citing N.C. Lottery, 123 USPQ2d at 1710 the Board stated that the “commercial context here demonstrates that a consumer would immediately understand the intended meaning of” ORIGINAL FOLDED PIZZA, id., namely, that it describes the first pizza to be ‘conveniently folded in half’ for dine-in or take-out consumption.” Therefore, the Board affirmed the §2(e)(1) merely descriptive refusal of registration for the proposed mark ORIGINAL FOLDED PIZZA.

In a 2020 non-precedential opinion, the Trademark Trial and Appeal Board affirmed the refusal of registration for the proposed mark SPIDER WOOD for “Decorative ornaments in the nature of natural sculptures of wood for use in terrariums, animal habitats, bird cages, floral arrangements, and interiorscape installations.” The TTAB found the mark to be merely descriptive under §2(e)(1).

When determining whether a mark is merely descriptive or suggestive, the Examining Attorney must look at the mark in its entirety, and if the mark “immediately conveys information concerning a feature, quality, or characteristic of the goods or services for which registration is sought,” then it is considered merely descriptive under §2(e)(1). Further, when determining whether a mark is merely descriptive, the Examining Attorney must consider the mark as a whole, and “do so in the context of the goods or services at issue.” See Real Foods Pty Ltd. v. Frito-Lay N. Am., Inc., 906 F.3d 965, 128 USPQ2d 1370, 1373 (Fed. Cir. 2018) and DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd., 695 F.3d 1247, 103 USPQ2d 1753, 1757 (Fed. Cir. 2012).

 The applicant, Petglobe, first argued that the mark was suggestive, and not descriptive because the product “is a tangled mass of wood roots used in animal habitats,” that “does not have any other clear connection to spiders.” The Examining Attorney submitted a slew of evidence in the form of website excerpts that referred to, and offered, the sale of “spider wood” for terrariums and aquariums. The Board found that the applicant’s argument that the mark was suggestive because there was no clear connection to spiders was invalid. It concluded that the term, SPIDER WOOD, in connection with the goods listed in the application, did indeed have a distinct and commercial impression. It stated that the owners of terrariums, animal habitats and birdcages looking to buy “decorative ornaments in the nature of natural sculptures of wood,” would encounter the term SPIDER WOOD and “[would] immediately know that it is a type of driftwood without having to resort to a multi-step reasoning process, thought, or cogitation.” Therefore, the applicant’s argument that the addition of the word SPIDER before WOOD was negated by the evidence provided. It is important to note that in order for a mark to be found merely descriptive it 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.

The applicant then argued that it was the first to “develop” the mark and the first to use it. Therefore, it claimed that any other industry usage of the mark, for the same goods, was an infringement against its established unregistered trademark. This argument was quickly dismissed as the Board stated that simply because an applicant was the first user or “developer” of merely descriptive mark did not justify its registration if the only significance conveyed by the term was merely descriptive. “Trademark law does not countenance someone obtaining “a complete monopoly on use of a descriptive term simply by grabbing it first.” See KP Permanent Make-Up, Inc. v. Lasting Impression I, Inc., 543 U.S. 111, 122, 72 USPQ2d 1833, 1838 (2004)

In conclusion, the Board affirmed the refusal of registration for the mark SPIDER WOOD as it was found to be merely descriptive under § 2(e)(1).

Under §2(e)(1) of the Lanham Act, there are several types of marks that may not be registered with the USPTO: merely descriptive marks, deceptively misdescriptive marks, primarily geographically descriptive marks, geographically deceptively misdescriptive marks, marks that are primarily a surname and marks that compromise any matter, used wholly, is functional. This article will explore marks that are deceptively misdescriptive. A mark is deceptively misdescriptive if it immediately conveys a certain idea, but the idea is false, although plausible. Simply, a mark may not be registered, if people who encounter the mark, in connection with the goods or services for which it is being used, are likely to believe the misrepresentation. Deceptively misdescriptive marks fall somewhere between marks that consist of (or) comprise immoral, deceptive or scandalous matter, which may not be registered under §2(a), and arbitrary marks which may be registered on the Principal Register.

The Federal Circuit devised a two-prong test to determine whether a mark is deceptively misdescriptive or merely deceptive.

The trademark examining attorney must first decide if the term is misdescriptive of the character, quality, function, composition or use of the goods or services for which it is being used.  It is the examining attorney’s job to record evidence demonstrating why the mark is misdescriptive. Specifically, the record must show the meaning of the term in question, and that the identification indicates that the applicant’s goods or services do not have the feature or characteristic. Several examples of evidence are dictionary definitions, Internet websites, point-of-purchase displays, advertising materials, product information sheets, hang tags and trade journals. An applicant’s statement in reference to his/her goods or services may also satisfy the first component of the test. An example of a misdescriptive term is APPLE for computer products. However, the consuming public is unlikely to believe the misrepresentation conveyed through the mark. This would make the misdescriptive term an arbitrary mark.

The second component of the test examines whether the idea conveyed is plausible, and how likely the consuming public would be to believe the misrepresentation of the mark in connection with goods or services for which it is being used. In order to prove this prong of the test, an examining attorney must provide evidence that the description conveyed by the mark is plausible by demonstrating that potential consumers regularly encounter goods or services that contain the features or services in the mark. For example, in a 1988 Federal Circuit case, an applicant attempted to register the mark LOVEE LAMB for seat covers that were not made of the lamb. In order to demonstrate the believability of the idea conveyed in the mark, the examining attorney provided evidence that seat covers can be made of lambskin and sometimes are made of lambskin, therein proving that the consuming public would be likely to believe the misrepresentation conveyed by the mark. Much like the first prong, an applicant’s hangtags, labels, advertising and product information may also provide evidence of the believability of the misdescription.

Furthermore, the fact that the true nature of the goods or services is revealed by other elements on the labels, advertisements or other materials with which the mark is connected does not preclude a determination that a mark is deceptively misdescriptive.

Following is an example of a mark that was refused registration because it was deceptively misdescriptive under §2(e)(1) of the Lanham Act.

In a 2006 precedential opinion by the Trademark Trial and Appeal Board, the Board affirmed refusal for registration of the deceptively misdescriptive mark SEPTEMBER 11, 2001, for books and media services. The examining attorney provided evidence that established that the date of Sept. 11, 2001, “acquired special significance in America.” The examining attorney went on to clarify that the date was used as a common reference to the terrorist attacks that occurred on that date. In satisfying the first prong of the two-prong test, the Board determined that the term was misdescriptive in connection to the applicant’s goods which did not in any way cover the events that took place on Sept. 11, 2001. In a similar fashion, the second prong was satisfied when the Board ruled that in light of the many books, articles and shows about the events that took place on that date, it would be likely for consumers to believe the misdescription of the mark. The Board concluded, “While the nature of the misdescription would become known after consumers studied applicant’s books and entertainment services, that does not prevent the mark from being deceptively misdescriptive.”

Marks that have been refused registration under §2(e)(1) of the Lanham Act on the ground of deceptive misdescriptiveness may be registerable under §2(f) of the Act if they have acquired distinctiveness, or on the Supplemental Register if appropriate. Marks that have been found deceptive under §2(a) of the Act may not be registered on either the Principal Register or the Supplemental Register in any case.

Distinguishing a merely descriptive mark and a suggestive mark is crucial to determining whether protection is afforded under the Lanham Act. Since the categorization is a question of fact, each case must be analyzed based on its own merit. If a trademark examining attorney deems a mark merely descriptive an applicant may respond and argue that the mark is suggestive. If the Examiner maintains the refusal, the applicant may appeal to the Trademark Trial and Appeal Board. The TTAB will either affirm the original decision or reverse it in favor of the applicant. Two types of cases with similar considerations and different outcomes are presented below:

The first set of examples pertain to considerations relating to terms in the dictionary. Simply because a term is not found in the dictionary, does not control whether or not it is eligible for registration. If an examining attorney can show that the term has a well understood and recognized meaning, it may be merely descriptive. Moreover, if the term is found in the dictionary, the matter at hand is establishing what the term means to consumers and its current usage, which may hold more weight than an older definition.

In a 2017 precedential opinion by the Trademark Trial and Appeal Board, the decision by an examining attorney that the mark WELL LIVING LAB was merely descriptive was affirmed. Starting with “lab,” defined as a “room or building equipped for scientific experiments, research…” the Board agreed that the term simply referred to the location where the applicant’s research services were held. Regarding the phrase “well living,” its meanings in the Oxford Dictionary are all similar, for example, “the action or fact of leading a good life, especially with respect to moral virtue.” Though the definitions included remarks referring to the outdatedness of that meaning, the Board turned to evidence provided by the examining attorney that the term “well living” was essentially synonymous with the descriptive phrase “health and wellness” in the mind of the consumer. The Board held that the mark WELL LIVING LAB constituted “no more than the sum of its parts.”

By way of contrast, in a 2020  non-precedential opinion, the Trademark Trial and Appeal Board found the mark ORIGINAL GRAIN suggestive. The Board analyzed both terms in the mark that was being used to distinguish an applicant’s restaurant service, separately. First looking at the noun, “grain,” the Board in concurrence with the examining attorney found that the term in itself was merely descriptive because the average consumer would find the term to mean a type of food in the context for which it was being used, both in a commercial light and as listed on the applicant’s menu. In regard to the word “original,” the examining attorney argued that the term, understood by others in the food and beverage industry and by consumers, referred to whole grains or unrefined grains. However, the Board found that there was insufficient evidence to show that the consuming public would automatically associate the mark ORIGINAL GRAIN with whole grains or unrefined grains. Conclusively, the Board found that taken as a whole, the term may be suggestive of “wholesome grain-based menu items” or “healthy eating” based on the grains served at the applicant’s restaurant.

The second set of examples relate to the consideration of terms with more than one meaning. When determining descriptiveness, the trademark examining attorney must look at the mark in relation to the goods or services for which registration is sought. If the term’s primary significance is descriptive in relation to at least one of the owner’s goods or services and does not create either a double entendre or an incongruity, then the mark is merely descriptive.

In a 2019 non-precedential opinion, the Trademark Trial and Appeal Board affirmed the refusal for registration of the merely descriptive mark ARKIVE, for a data sharing and cloud computing backup service. Unlike the previous cases which involved dictionary meanings, the applicant, in this case, did not try to dispute that ARKIVE was simply a misspelling of the defined term “archive.” The applicant argued that the term was a unique combination of the two terms “ark” and “archive” which together, created a double entendre. The applicant reasoned that the term “ark” in reference to the Ark of the Covenant and Noah’s Ark, would convey a sense of security and stability in the minds of the consuming public. However, the Board concurred with the examining attorney that the meaning of the mark, referencing the Ark of the Covenant or Noah’s Ark,  suggested by the applicant, would not be apparent to the consuming public in connection with the services for which the mark was used. ARKIVE was held merely descriptive.

In a 2008 precedential opinion, the Trademark Trial and Appeal Board reversed the refusal to register the merely descriptive mark THE FARMACY, in connection organic herbs and products sold in the equivalent of a pharmacy. The examining attorney argued that the mark was simply a phonetic misspelling and merely descriptive of the location where the goods were sold. The applicant contended that the mark was intended to be a “whimsical term” playing on the two words “pharmacy” and “farm.” The mark was meant to convey the idea that the applicant sold “…natural, pure and completely unprocessed products.” The Board agreed with the applicant that mark held a dual meaning in regard to the nature of the goods and the combination of the two separate terms “pharmacy” and “farm” thereby creating the double entendre FARMACY. In this fashion, the Board held that the mark was suggestive.

The four cases detailed above highlight the thin line between marks that are merely descriptive and those that are suggestive. The considerations to mere descriptiveness determine whether a mark is eligible for registration on the Principal Register or the Supplemental Register. A merely descriptive mark may still be eligible for registration if it acquires secondary meaning. A suggestive mark is afforded greater protection under the Act because it is eligible for registration on the Principal Register without acquiring a secondary meaning.