In a 2021 precedential case, the Trademark Trial and Appeal Board affirmed two §2(e)(1) registration refusals for the mark CLEAR finding it deceptively misdescriptive for footwear, lingerie, and other clothing items, and for handbags, purses, wallets and related items, all “excluding transparent goods.”

Under §2(e)(1) a mark is considered deceptively misdescriptive if: (1) The mark misdescribes a quality, feature, function or characteristic of the goods or services with which it is used, and (2) consumers would be likely to believe the misrepresentation. “[T]he reasonably prudent consumer test is applied in assessing whether consumers are likely to believe the misrepresentation.” See In re Hinton, 116 USPQ2d at 1052 (citing R. J. Reynolds Tobacco Co. v. Brown & Williamson Tobacco Corp., 226 USPQ 169, 179 (TTAB 1985)).

The Board began its analysis of the proposed mark by determining whether or not the mark was misdescriptive of the goods with which it was used. After reviewing the evidence submitted by the Examining Attorney, which included the dictionary definition of the term “clear” and third-party website submissions, it considered Applicant’s argument that “it is only seeking to register it for non-transparent footwear.” (Emphasis added.) Further, the Applicant argued that its proposed mark did not describe a plausible feature of its goods because the goods recited in the application did not include transparent clothing, footwear or accessories. However, the Board found that argument ineffective and stated, “We cannot assume that consumers of Applicant’s goods will be aware that its identification is so restricted, and the restriction is not controlling of public perception.” See In re Aquitaine Wine USA, LLC, 126 USPQ2d 1181, 1187-88 (TTAB 2018).  The Board was similarly unpersuaded by Applicant’s argument that the term “clear” had other meanings when used in connection with its goods.  Accordingly, the Board found the first prong of the test was satisfied and concluded that the Applicant “cannot avoid a finding of deceptive misdescriptiveness by excluding from its identification the very characteristic that its mark is misdescribing.” Cf. In re ALP of South Beach, Inc., 79 USPQ2d 1009, 1010 (TTAB 2006).

The Board then considered the second prong of the test: whether or not consumers were likely to believe the misrepresentation. The evidence submitted by the Examining Attorney showed that Applicant’s goods could indeed be transparent, “clear” or include “clear” elements. Moreover, the record indicated that “clear shoes were one of the big breakout trends on the spring/summer runways.” The Board found that as a result of the evidence submitted, consumers would likely believe that the items under the proposed mark CLEAR were clear or transparent even when they were not. The Applicant contended that consumers were unlikely to believe the misrepresentation because they would be “visually inspecting” the items prior to the purchase. This argument did not sway the Board and it found that just because consumers would understand that the goods were not made of, and/or did not contain, clear or transparent elements it did not negate their understanding of the misdescription prior to visual inspection. The Board stated, “If Applicant’s goods were to be promoted by word-of-mouth or on social media or in print (e.g., in fashion blogs, magazine articles, or even Applicant’s future advertising) without an image of the goods, a reasonable consumer seeking what the record shows to be a fashion trend would believe that Applicant’s goods, promoted under the proposed CLEAR mark, would feature transparent or clear attributes.” See, e.g., In re Woodward & Lothrop Inc., 4 USPQ2d 1412, 1414 (TTAB 1987). So, the Board found that the second prong of the test was satisfied.

In conclusion, the Board found that both prongs of the deceptively misdescriptive test were satisfied, and therefore affirmed both of the §2(e)(1) refusals of registration for the Applicant’s proposed mark CLEAR.

In a 2021 non-precedential case, the Trademark Trial and Appeal Board reversed the §2(e)(4) refusal to register the mark BARSKI for or beverage glassware, pitchers, ice buckets and various other items in Class 21 and found that the mark was not primarily merely a surname.

Under §2(e)(4)  a term is primarily merely a surname “if, when viewed in relation to the goods or services for which registration is sought, its primary significance to the purchasing public is that of a surname.” See Earnhardt v. Kerry Earnhardt, Inc., 864 F.3d 1374, 123 USPQ2d 1411, 1413 (Fed. Cir. 2017). If the mark is primarily merely a surname, and absent acquired distinctiveness, it cannot be registered on the Principal Register. When determining whether or not a term is primarily merely a surname there is no specific rule or  amount of evidence necessary to show that the mark would be perceived as primarily merely a surname – the Board must base its decision on the facts at hand in each case. See In re Pohang Iron & Steel Co., 230 USPQ 79, 79 (TTAB 1986). Though there is no test, there are certain circumstances that are taken into consideration when examining the mark to decide if the public would perceive the mark as primarily merely a surname. Following are the circumstances applicable in the case at hand: (1) The frequency and extent of public exposure to the term as a surname, (2) Whether the term is the surname of anyone connected with Applicant, (3) Whether the term has any recognized meaning other than as a surname (4) And whether the term has the structure and pronunciation of a surname. See Darty, 225 USPQ at 653-54; In re Eximius Coffee, LLC, 120 USPQ2d 1276, 1278 n.4 (TTAB 2016).

The Board began its examination of the proposed mark BARSKI by first determining whether or not the term was indeed a surname. It found that though the BARSKI was not associated with the Applicant, the evidence of record showed that multiple people in the United States did have the surname BARSKI. Moreover, the name, which is of Polish origin, had no “ordinary language meaning,” and “ surnames of Polish origin often end with the letters ‘SKI.’”

The Applicant argued that the proposed mark BARSKI is not primarily merely a surname, and the public would perceive it as a fanciful term. The Board dismissed the Applicant’s evidence from UrbanDictionary.com that showed multiple definitions for the terms “BARSKY” and “BARSKIES,” as neither of which were the actual proposed mark BARSKI. The Applicant then argued that BARSKI was a coined term that was a combination of the Applicant’s founders’ names (“BaumgARten and ZablotSKY [pronounced ‘ski’]”). However, the Board stated, “Applicant’s argument concerning the origin of ‘Barski’ as a combination of Applicant’s founders’ surnames, neither of which includes the three-letter strings ‘bar’ or ‘ski,’ is unconvincing.”

Finally, the Board turned back to the question at hand: When applied to Applicant’s goods, would the purchasing public be more likely to perceive the mark BARSKI, in standard characters, as a surname rather than as anything else? “[I]t is that impact or impression which should be evaluated in determining whether or not the primary significance of a word when applied to a product is a surname significance. If it is, and it is only that, then it is primarily merely a surname.” See Ex parte Rivera Watch Corp., 106 USPQ 145, 149 (Comm’r Pat. 1955). Ultimately, the Board stated, “The evidence in this case does not show sufficient public exposure to the uncommon surname BARSKI from which we can conclude that consumers likely would perceive BARSKI as a surname.” Further it found that when the proposed mark was associated with the identified goods, consumers would likely perceive BARSKI as a coined term, and “particularly as a clever bar-related play on the noun ‘brewski’ (a U.S. slang term for ‘beer’), and that this meaning would be the primary perception of BARSKI to the public.” So, the Board reversed the §2(e)(4)  refusal to register the mark BARSKI.

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.

In a 2021 non-precedential case, the Trademark Trial and Appeal Board reversed a §2(d) likelihood of confusion refusal of registration for the mark VALLKREE for “electric bicycles, electric go-karts, electric tricycles and various parts, ‘all of the foregoing not for use with motorcycles and their parts…’” It found that the applied-for mark was not likely to be confused with the registered mark VALKYRIE for “land motor vehicles, namely, motorcycles and structural parts therefor.”

Using the relevant DuPont factors, the Board began its analysis starting with the strength of the marks. “A mark’s strength is measured both by its conceptual strength (distinctiveness) and its marketplace strength (secondary meaning).” In re Chippendales USA Inc., 622 F.3d 1346, 96 USPQ2d 1681, 1686 (Fed. Cir. 2010). Beginning with the inherent strength of the registered mark VALKYRIE, which is defined as “any of the beautiful maidens attendant upon Odin who bring the souls of slain warriors chosen by Odin or Tyr to Valhalla and there wait upon them.”  The Board found the term, in relation to the cited goods, “at most evokes beauty, divinity or fortitude and thus mildly suggests a quality of the recited goods or the experience of riding them.” Therefore, in terms of inherent strength, it found VALKYRIE inherently distinctive in relation to the identified goods. Moreover, as the mark VALKYRIE is on the Principal Register, and did not require a claim of acquired distinctiveness under §2(f), the Board stated that it must presume that the mark was inherently distinctive, with no need to acquire a secondary meaning.

Turning to the first DuPont factor, the Board looked at the marks in their entirety in regard to their similarities and dissimilarities. “It is sufficient if the similarity in either form, spelling or sound alone is likely to cause confusion.” In re Inn at St. John’s, LLC, 126 USPQ2d 1742, 1746 (TTAB 2018).  Comparing the Applicant’s mark VALLKREE to the registered mark VALKYRIE, the Board first pointed out the obvious similarities: (1) Both marks have eight letters, (2) Six of the eight letters are the same and (3) the six identical letters are in the same sequence. So, the marks were found to be visually similar. In terms of the sound of the marks, the Board found that they sounded phonetically similar as the two letters in the marks that are not the same sound similar and are in similar spots. And, while the Board maintained that there is no correct pronunciation of trademarks, it held that “it stands to reason that the two marks will be verbalized in a very similar manner by consumers.” In addition, the Applicant indicated that the term VALLKREE had no meaning in a foreign language, nor was it recognized in the English language. So, the Board concluded that VALLKREE could likely be perceived by consumers as a clever or fanciful take on the known term VALKYRIE. Given these conditions, the first DuPont factor weighed in favor of finding a likelihood of confusion.

Finally, the Board examined the second DuPont factor, the similarity or dissimilarity of the goods, channels of trade and class of consumer. The Examining Attorney argued that the goods cited in the registrations for both VALLKREE and VALKYRIE were related, “because the same entities frequently provide both applicants’ and registrant’s goods and market the goods in the same channels of trade. As the evidence of record shows, it is common for entities to offer both applicant[’s] and registrant’s goods.” The Board found that the Examining Attorney submitted insufficient evidence to establish that the goods in the cited registration were related to the Applicant’s goods or that consumers were likely to believe the Applicant’s goods came from the same source as those in the cited registration. Thus, the second DuPont factor weighed in favor of finding confusion unlikely.

In conclusion, while the Board found that the marks VALKREE and VALKYRIE were highly similar in their appearance, sound and connotation, the Applicant’s goods were not related to those under the cited mark. So, the refusal to register the Applicant’s mark VALLKREE under §2(d) was reversed.

In a 2020 non-precedential case, the Trademark Trial and Appeal Board dismissed a §2(d) claim of likelihood of confusion for the Applicants’, Grant Toland, Alexander Prenta and Russ Bennett,  mark EIDOLON for “spirits, excluding distilled blue agave liquor and mezcal; wine,” in International Class 33 and “beer” in International Class 32 and found it not likely to be confused with the Opposer’s, Campari Mexico, S.A. de C.V., mark ESPOLON for “alcoholic beverages except beer,” in International Class 33.

The Board began its likelihood of confusion analysis of the marks in regard to the goods in both Int. Class 33 and Int. Class 32 by stating that two key factors of any §2(d) case are the similarities between the marks and the similarities between the goods or services offered under the marks. “The fundamental inquiry mandated by § 2(d) goes to the cumulative effect of differences in the essential characteristics of the goods and differences in the marks.” See Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976).

Starting with the first du Pont factor, the similarity or dissimilarity  of the marks in their entireties in terms of appearance, sound, connotation, and commercial impression, the Board looked at the Opposer’s mark ESPOLON and the Applicants’ mark EIDOLON in standard characters and found the following: (1) both marks consist of seven letters, (2) both marks begin with the letter “E” and (3) both marks end with the letters “OLON.” Aside from the first three letters, “ESP” and “EID,” of each mark, it decided that the marks were similar in structure, as both were three syllables, started with the same letter and the last four letters were identical. As to sound, the Board found that while the final syllable was almost identical in sound when spoken, the first two were somewhat different. However, in citing In re Teradata Corp., 223 USPQ 361, 362 (TTAB 1984), the Board stated that there was no “correct” pronunciation for a trademark, and that “consumers may not pronounce either mark as intended, even if they recognize it as a known word.” Moving its attention to the meaning of the marks, the Opposer’s mark ESPOLON is a Spanish word that is not available in English-language dictionaries and translates to “spur,” which is defined as a “pointed, rigid growth on the inner leg of a rooster.” The Applicants’ mark EIDOLON is a word of Greek origin that does appear in English-language dictionaries and means, “an image or representation of an idea; an idealized person or thing; a specter, phantom, ghost, or elusive entity.” The Applicants and the Opposer were in agreeance that the “marks are not English word[s] and are therefore not immediately likely to be translated in the minds of English speakers.” The Board was also in agreement and found that there was no certainty as to whether relevant consumers would recognize the terms comprising the marks as words or coined terms. Ultimately, the Board concluded that the marks were “more similar than dissimilar in appearance and sound, somewhat different in connotation and, overall, convey commercial impressions that are more similar than dissimilar.” Therefore, the first du Pont factor favored a finding of likelihood of confusion.

The Board then looked at the second and third du Pont factors, the nature and similarity or dissimilarity of the goods, the likely-to-continue trade channels and the class of purchasers. Turning first to the second du Pont factor, it looked at the Applicants’ applied for goods in Int. Class 33, which were “spirits, excluding distilled blue agave liquor and mezcal; wine,” and found the goods to be legally identical to the Opposer’s listed goods which were “alcoholic beverages except beer,” in the same Class. With regard to the Applicant’s goods listed under Int. Class 32, specifically “beer,” the Board was not concerned that Opposer’s goods explicitly excluded beer. It stated that in order to support a finding of likelihood of confusion, it was not necessary that the goods were identical or even competitive. Further, it said, “the goods need only be ‘related in some manner or … the circumstances surrounding their marketing are such that they could give rise to the mistaken belief that they emanate from the same source.’” Citing Coach Servs., 101 USPQ2d at 1722 (quoting 7-Eleven Inc. v. Wechsler, 83 USPQ2d 1715, 1724 (TTAB 2007)); See Anheuser-Busch, LLC, 115 USPQ2d at 1827. In its argument, the Opposer submitted evidence showing multiple retailers that offered the distribution and delivery of both beer and liquor, moreover, posts on the Applicants’ discussed the creation of various alcoholic beverages and explained that the same ingredients could be used to make wine, spirits and beer. Further evidence was submitted showing several beverages which included both spirits and beer. However, the Board was not convinced of relatedness of the goods and concluded: “The evidentiary showing in this case falls somewhat short of establishing that consumers are likely to believe that beer and other alcoholic beverages emanate from a common source.” In a similar manner, the Board found the Opposer failed to establish that the Applicants’ Class 32 goods were similar to its applied-for goods, given that both parties’ Class 33 goods were legally identical. Briefly looking at the third du Pont factor, the Board concluded that since the parties Class 33 goods were legally identical, it was fair to presume that the channels of trade would be the same as well. “Where there are legally identical goods, the channels of trade and classes of purchasers are considered to be the same.” See In re Yawata Iron & Steel Co., 403 F.2d 752, 159 USPQ 721, 723 (CCPA 1968).  Therefore, in terms of the Int. Class 33 goods, the above du Pont factors supported a finding of likelihood of confusion yet did not support a finding of likelihood of confusion for the Int. Class 32 goods.

Finally, the Board look at the strength of the Opposer’s mark and found it to be arbitrary and inherently distinctive. Looking at the fifth du Pont factor, the commercial strength of the mark, the Board found that the Opposer had found, “some commercial success and media recognition for its goods under the ESPOLON mark.” It concluded that ESPOLON was a strong mark for alcoholic beverages and therefore was entitled to a broad scope of protection on the spectrum of “very strong to very weak.” In citing Joseph Phelps, 122 USPQ2d at 1734. So, the fifth du Pont factor favored a finding of likelihood of confusion.

The Board then came to its decision in regard to the likelihood of confusion of the Opposer’s mark ESPOLON and the Applicants’ mark EIDOLON for the goods in both Int. Class 33 and Int. Class 32. Starting with Class 33, it concluded that given the similarity of the two marks, and the goods’ presumed identical trade channels and relevant purchasers, the Applicants’ applied-for mark, in connection with the Applicants’ recited Class 33 goods, was likely to cause confusion with the Opposer’s previously used and registered mark ESPOLON, which was entitled to a broad scope of protection, given its inherent and commercial strength. So, the Board sustained the §2(d) opposition against the Applicants’ registration in regard to its’ goods in Int. Class 33. Quoting Century 21 Real Estate Corp. v. Century Life of Am., 970 F.2d 874, 23 USPQ2d 1698 (Fed. Cir. 1992) the Board said, “[w]hen marks would appear on virtually identical … [goods or] services, the degree of similarity [of the marks] necessary to support a conclusion of likely confusion declines.”

However, since the Board had previously stated that the evidence fell short in showing a relation between the Opposer’s goods and the Applicants’ goods under Int. Class 32, it concluded that “consumers are not likely to experience confusion as to the source of those goods, notwithstanding the similarities between the marks.” See, e.g., Kellog Co. v. Pack’ em Enters., Inc., 14 USPQ2d 1545 (TTAB 1990). Therefore, the Board dismissed the opposition of likelihood of confusion under §2(d) for the Applicants’ goods in Int. Class 32.

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 case, the Trademark Trial and Appeal Board affirmed a §2(d) likelihood of confusion refusal of registration for the mark CITRUS CLUB (CLUB disclaimed). The Board found that Applicant’s mark, CITRUS CLUB, for “cocktail lounge services” would be confusable with the registered mark, CITRUS KITCHEN (KITCHEN disclaimed), for “restaurant services.”

The Applicant argued that its mark CITRUS CLUB was used for a “reservation-only rooftop cocktail lounge atop a five-star hotel in Charleston, South Carolina,” and it “operates exclusively in the evenings, employs a dress code and prohibits children under the age of 21 from entering.” Whereas the registered mark, CITRUS KITCHEN, was used for a “sole store-front physical location in Rancho Cucamonga, California…” and it was focused on “hand-crafted, healthy meal options.” Moreover, it is “open during the day, closes at 8 p.m. on Monday through Saturday, does not feature a dress code and allows children.” The Board used the relevant DuPont factors to determine whether or not the two marks were confusable. “[L]ikelihood of confusion can be found ‘if the respective [services] are related in some manner and/or if the circumstances surrounding their marketing are such that they could give rise to the mistaken belief that they emanate from the same source.”’ See Coach Servs. v. Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1722 (Fed. Cir. 2012)

Starting with the second DuPont Factor, the Board analyzed the services cited in both the registrations and applications of the marks. The Applicant argued that its mark CITRUS CLUB was different than the registered mark CITRUS KITCHEN because it was a cocktail lounge and not a restaurant, however, the Examining Attorney submitted evidence which defined “cocktail lounge” as a bar, and as “a public room (as in a hotel, club or restaurant) where cocktails and other drinks are served.” This shows that the two services are closely related and that a cocktail lounge may even be within a restaurant. The Examining Attorney further submitted evidence which cited six separate entities that advertised as both a restaurant and cocktail lounge, furthering the argument that the two services are fairly intertwined. Aside from the evidence showing that cocktail lounges may be found in restaurants, the Examining Attorney also cited third-party registrations which showed restaurants that offered high-end cocktails much like a cocktail lounge would. In sum, not only can restaurants and cocktail lounges coexist in one place, but they can offer similar services as well. Therefore, the Board determined that the second DuPont factor weighed in favor of finding confusion likely.

Turning briefly to the third DuPont factor, the similarity of the trade channels and classes of consumers, the Board dismissed the Applicant’s argument that the two marks were used in separate states. As it previously found, cocktail lounges and restaurants can exist in the same place, therefore, that is already one similar trade channel. Further, it deemed that the services cited for the two marks could be offered to the same class of consumers, same type of patron and similar times of the evening. The Applicant further argued that the consumer classes were not the same since there were restrictions in place to enter its establishment, such as a dress code and prohibition of children under 21. However, the Board nullified the argument by stating that those specific restrictions were not reflected in the identification of the services in the registration or application. A likelihood of confusion analysis is based solely on the goods and services listed in the registration and application, not upon restrictions later set forth. “[We] “have no authority to read any restrictions or limitation into the registrant’s description.” Further, an applicant cannot “restrict [their] scope . . . by argument or extrinsic evidence.” See In re I-Coat Co., 126 USPQ2d 1730, 1739 (TTAB 2018) (quoting In re Thor Tech, Inc., 90 USPQ2d 1634, 1638 (TTAB 2009)) Again, the Board found that the third DuPont factor weighed in favor of finding confusion likely.

The Board then focused its attention on the first DuPont factor, the similarity of the marks. Looking at the two marks side by side, the Board deemed the Applicant’s mark CITRUS CLUB similar to the registered mark CITRUS KITCHEN since CITRUS is the first term in each and is followed by a highly descriptive or generic term in each (both CLUB and KITCHEN were previously disclaimed). Further, the marks were visually and aurally similar, and the Board decided that as the initial element, the term CITRUS would be more likely to be noticed or remembered by consumers. See Palm Bay, 73 USPQ2d at 1692 “Veuve” is the most prominent part of the mark VEUVE CLICQUOT because “veuve” is the first word in the mark and the first word to appear on the label.  Further, see Presto Prods. Inc. v. Nice-Pak Prods., Inc., 9 USPQ2d 1895, 1897 (TTAB 1988) in stating, “[I]t is often the first part of a mark which is most likely to be impressed upon the mind of a purchaser and remembered.” Looking then at the connotation of the two marks, the Board found that the term CITRUS, to the extent it suggested the use of citrus being used in food or drinks, would convey the same meaning to consumers in both marks. Ultimately, given the similarity of the marks’ sound, appearance and similar connotation and commercial impression of the shared term “citrus,” the Board found that the first DuPont factor weighed heavily in finding confusion likely.

In a final argument, the Applicant attempted to argue that CITRUS and KITCHEN are both common and frequently used terms, and therefore, the registered mark should be afforded only a limited scope of protection. The Applicant submitted third-party evidence that demonstrated the term CITRUS in connection with food, however, the Board found the evidence to be wholly inadequate due to the fact that while the submissions linked the term CITRUS to food, none of them linked the term to restaurant services. The Board ended the argument by saying that it did not find the mark CITRUS KITCHEN inherently weak or commercially weak to a point that it would allow registration of the Applicant’s mark CITRUS CLUB.

In conclusion, the Board found the marks to be similar in trade channels, consumer classes, sound, appearance and commercial impression. The relevant DuPont factors, in this case, the first, second and third, all weighed in favor of finding confusion likely, therefore, the Board affirmed the refusal to register the mark CITRUS CLUB under §2(d) likelihood of confusion.

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.

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).