Posts Tagged ‘Precedential’

Precedential Decision in CO-OP Bikes Case

Wednesday, February 10th, 2021

In a 2020 precedential case, the Trademark Trial and Appeal Board reversed a refusal for registration for the mark CO-OP for “Bicycles, bicycle seats, bicycle wheels, bicycle tires, bicycle handlebars, bicycle forks and bicycle handlebar stems,” which the USPTO deemed merely descriptive under §2(e)(1).

Under §2(e)(1), marks that are merely descriptive are barred from registration on the Principal Registration. These are marks that immediately convey information about a quality, characteristic, function, feature, purpose or use of the goods with which it is used. In this case, the Applicant, Recreation Equipment, Inc. (REI), argued that the word “co-op” does not describe the goods cited on the application, which are bikes and bike parts. Moreover, the Applicant argued that other registrants successfully registered marks that included the term “co-op.” The Applicant then cited multiple registrations from the Principal Register, which showed that an entity identifier, i.e., “co-op,” is not technically merely descriptive. The Examining Attorney held firm that the term “co-op” was indeed merely descriptive as it conveyed something about the Applicant, specifically that the Applicant was a cooperative business. The Examining Attorney furthered her argument by citing the Meriam Webster’s definition of the term and pulling evidence from the Applicant’s website that shows the Applicant advertising the fact that it was the “nation’s largest consumer cooperative.” Aside from this evidence, there was no other specific finding to show that the term “co-op” otherwise described the goods.

After reviewing the arguments, the TTAB first explained that there was no per se rule of law that a term descriptive of the source of the goods was necessarily descriptive of the goods themselves. The Board determined that the Examining Attorney had relied on the on broad language in In re Major League Umpires, 60 USPQ2d 1059 and used it as a per serule that a mark merely descriptive of the source of goods, was merely descriptive of the goods themselves. She relied on the Board’s citation in that case that, “[i]t is well-established that a term which describes the provider of goods or services is also merely descriptive of those goods and services.” Id. at 1060 (citing In re E. I. Kane Inc., 221 USPQ 1203 (TTAB 1984) and cases cited therein). In doing so, she refused the registration. However, as the Board stated, that The Trademark Manual of Examining Procedure (TMEP) does not have a per se rule equating descriptiveness of the source with descriptiveness of the goods provided. TMEP § 1209.03(q) (Oct. 2018) Since much of this appeal relied on In re Major League Umpires the Board found it imperative to review it. The Board found that in that case specifically, the facts were unusual and did not correlate to the case at hand. In the Umpires case, the Board found that the mark went beyond simply describing something about the source of the goods, but also described characteristics of the goods as well. Specifically, the Board stated that the mark, “also immediately conveys to purchasers’ information about a designer of at least some of the goods.” Major League Umpires, 60 USPQ2d at 1061. Moreover, the Board found that umpires were among a class of purchasers, so the mark was merely descriptive of the goods and the type of purchasers, not simply the general public. Finally, the Board found that, “Consumers will therefore understand the mark MAJOR LEAGUE UMPIRE, if used on the identified goods, to describe goods which are used by major league umpires.” Ultimately, this case had nothing to do with the source of goods specifically, but three different ways in which the mark was merely descriptive of the goods at hand. The Board found that even though the Applicant conceded to the fact that the mark CO-OP described the provider of the product, the evidence was insufficient to support a §2(e)(1) refusal and that there was no evidence to suggest that consumers would perceive the mark as merely descriptive of a quality, feature or characteristic of the applied-for goods.

Second, the Board looked at the term CO-OP in connection with the applied-for goods, which were bikes and bike parts. It found that the record lacked evidence showing what consumers would think when they saw the term in connection with bikes or bike parts. There was no recorded evidence of third-party use of CO-OP or “cooperative” in connection with the type of goods the Applicant was applying for. Had there been, it would have been evidence that potentially signaled mere descriptiveness. Further, the record did not contain any advertising with any descriptive use of the mark in connection with the goods, as existed in Major League Umpires. (In that case, the Applicant was a group of umpires advertising goods made by, and for, umpires.) Finally, there was no evidence that consumers used the term CO-OP in connection with the goods, or that any trade publication referenced the term in connection with bikes or bike parts. The Board cited Dan Robbins & Assocs., Inc. v. Questor Corp., 599 F.2d 1009, 202 USPQ 100, 105 (CCPA 1979) in concluding, “Many types of evidence can shed light on what a term means within a particular context, but no such evidence is of record here.”

In summation, the Board concluded that while some consumers may have been aware that the Applicant was a co-op, the evidence did not support a finding that the mark CO-OP immediately conveyed, to the average consumer, information about a quality, feature or characteristic of bikes and bike parts. It found that the term merely described the Applicant’s business structure and that alone was insufficient for the Board to affirm a §2(e)(1) refusal to register. Therefore, the Board reversed the refusal to register.

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