In a 2021 nonprecedential case, the Trademark Trial and Appeal Board reversed the §2(e)(1) refusal to register the mark FAST DRINK for “Nutritional meal replacement drinks adapted for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 2021 non-precedential case, the Trademark Trial and Appeal Board affirmed two §2(e)(1) refusals of registration for the proposed marks HOSTIING and HOSTIING GROUP (GROUP disclaimed) and found them to be merely descriptive of mobile apps for reserving lodging, management of short-term rentals, and booking services for temporary lodging.

Before delving into its analysis, the Board made it clear that the established evidence left no doubt that both HOSTIING and HOSTIING GROUP were merely descriptive because the terms “immediately conve[y] knowledge of a quality, feature, function, or characteristic” of the Applicant’s goods and services. See In re Chamber of Commerce of the U.S., 675 F.3d 1297, 102 USPQ2d 1217, 1219 (Fed. Cir. 2012).

Turning first to the Applicant’s use of the term HOSTIING in connection with its cited goods, the Applicant argued that “hosting” has multiple meanings unrelated to lodging rentals or home-sharing, and that the term is “most frequently” associated with website hosting. However, ample evidence showed that third parties used the terms “host” and “hosting” in connection with “offering, reserving and managing temporary lodging, including rental and other home-sharing arrangements.” Further, the Applicant used the terms exact same way, “for its identified rental property management and reservations/booking services, as well as its identified reservation and booking mobile app for short term rentals.” The Board gave no weight to the disclaimed term GROUP and found that HOSTIING GROUP simply conveyed “a group involved in hosting.”

Moving on to the misspelling of the term HOSTIING, the Applicant argued that the misspelling of the term “hosting” was purposeful, and the implementation of the double “ii” could lend itself multiple pronunciations and evoke a distinctive commercial impression. The Board was not impressed. It found that the Applicant’s “minor misspelling” did not change the meaning or look of the term. “In fact, ‘HOSTIING’ with two ‘II’s differs from ‘HOSTING’ with one by only one letter in the middle of the term. It thus looks almost the same and would be pronounced similarly or identically to ‘hosting,’ a term commonly used and with a well-recognized meaning in connection with Applicant’s identified goods and services.” The Board then cited In re Ginc UK Ltd., 90 USPQ2d 1472, 1475 (TTAB 2007), “The generic meaning of ‘togs’ is not overcome by the misspelling of the term as TOGGS in applicant’s mark. A slight misspelling is not sufficient to change a descriptive or generic word into a suggestive word.”

Ultimately, the Board found the Applicant’s marks HOSTIING and HOSTIING GROUP merely descriptive of its applied-for goods and services. It stated, “each component retains its merely descriptive significance in relation to the goods and services, and Applicant does not suggest any alternative commercial impression resulting from the combination of these immediately descriptive terms.” So, the refusals to register the marks under §2(e)(1) were affirmed.

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 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).

In a 2020 non-precedential opinion, the Trademark Trial and Appeal Board dismissed the §2(d) opposition against Lawson’s Finest Liquids, LLC’s (applicant), mark CHINOOKER’D IPA (IPA disclaimed) for beer, and found it unlikely to be confused with W. Clay Mackey’s (opposer), CHINOOK for “table wine and sparkling wine,” and his presumed common law rights in the same mark for beer.

Turning first to the opposer’s alleged common law rights to the mark CHINOOK for beer, the Board deemed the term generic, and therefore not protected by common law rights. At the core of any genericness case, is the issue of whether relevant members of the public use or understand the term in question in connection with the genus of the good being used under the mark. See Royal Crown, 127 USPQ2d at 1046. In this specific case, of CHINOOK for beer, the U.S. Department of Agriculture identified Chinook as a variety of hops, which is used in brewing beer. Moreover, the applicant’s expert witness testified a similar statement, and a slew of articles, unrelated to the opposer’s product,  supported the testimony. The Board found that the evidence clearly showed that “the relevant purchaser perceives Chinook as indicating a type of beer by referring to a key aspect of that product.” Ultimately, the Board concluded the opposer had no proprietary rights in the term, as it is generic when used in connection with beer, since the relevant public already perceived that the beer was brewed with Chinook hops.

The Board then turned its attention to the main issue: Whether or not the applicant’s mark CHINOOKER’D IPA, for beer, was likely to cause confusion with the opposer’s registered mark CHINOOK for “table wine and sparkling wine,” under §2(d) likelihood of confusion. It used the relevant Dupont Factors to come to its ultimate finding. Starting with the second Factor, the similarity or dissimilarity and nature of the goods in connection with the mark, the Board found the mark to be arbitrary for wine, as the opposer testified that the mark was meant to reference positive attributes of the Pacific Northwest. Therefore, the mark was considered inherently strong. Moving to the seventh Factor, the nature and extent of any actual confusion between the marks, the Board deemed this factor neutral as there was no reasonable opportunity for confusion to occur, which is what gives this factor any probative value. See Barbara’s Bakery Inc. v. Landesman, 82 USPQ2d 1283, 1287 (TTAB 2007). In examining the third and fourth Factors, similarity of trade channels and impulsive vs. careful buyers, the Board found that beer and wine are most often offered in the same trade channels to some of the same types of consumers. Since the two marks are for goods offered in the same trade channels, and neither appeal to any specific type of consumer, it was to be presumed that the purchasers of either sides’ goods would include both impulsive and careful consumers. Finally, the Board looked at the first Factor, the similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation, and commercial impression. It found that since the applicant’s mark encompasses a portion of the opposer’s mark, the two are similar in sound and appearance. However, the connotations of the marks are very dissimilar. The opposer’s mark was meant to suggest the Pacific Northwest, while the applicant’s mark “engenders the commercial impression of getting snockered (i.e., drunk) on beer made from Chinook hops.” In this fashion, the two marks do not have the same connotation or give off the same commercial impression.

In conclusion, the Board found confusion unlikely under §2(d) for CHINOOKER’D IPA for beer and CHINOOK for table and sparkling wines. Its ultimate decision was that the dissimilarity in the marks’ connotation and commercial impression heavily outweighed the similarity in sound and appearance. “Each of the evidentiary factors set out in DuPont, may, from case to case, play a dominant role.” As stated in Kellogg Co. v. Pack’em Enters., Inc., 951 F.2d 330, 21 USPQ2d 1142, 1145 (Fed. Cir. 1991). The commercial impression, in this case, was particularly important as Chinook is generic for beer, and that ultimately made the applicant’s mark arbitrary, and inherently strong, as used in connection with the applicant’s goods.

In the past two posts, two examples of likelihood of confusion were examined. In both cases, the Trademark Trial and Appeal Board affirmed the decision for refusal to register under §2(d) of the Lanham Act. In the first case, and in the second case, the first two Dupont Factors weighed heavily against the applicant and weighed in favor of finding a likelihood of confusion refusal. However, in the case below, the Trademark Trial and Appeal Board dismissed the opposition and found that the two marks were not confusingly similar.

The Trademark Trial and Appeal Board dismissed a §2(d) opposition against the mark FULL OF FLAVOR FREE OF GUILT for “vegetable based food products, namely, vegetable based snack foods; meat substitutes.” Prior to the case the applicant, Outstanding Foods, disclaimed FULL OF FLAVOR. The Board found that the opposer, Yarnell Ice Cream, failed to prove likelihood of confusion with their registered mark GUILT FREE for frozen confections. Turning first to the fifth Dupont Factor, the number and nature of similar marks in use on similar goods, the opposer submitted 15 additional registrations for GUILT FREE in correlation with an array of other products to show that their mark was licensed for use on a diverse array of products. However, not only did the applicant object to the consideration of any products aside from Yarnell’s frozen confections, the Board refused to consider them because the opposition had not informed the applicant that they intended to rely on the additional registrations. Moving onto the third Dupont Factor, the similarity of established likely-to-continue trade channels, the opposer submitted evidence of a single website depicting vegetable-based snacks and frozen confections being sold under the same mark. But the Board found there was “no testimony or evidence showing what sort of commercial impact these products have made.” The opposer relied solely on the fact that parties’ goods were “snacks,” but it did not convince the Board that the involved goods were related.

In looking at the channels of trade, the Board presumed that “both parties offer vegetable based snacks or frozen confections in all channels of trade normal for those products and they are available to all classes of consumers for those products.” However, the Board found that this factor weighed very little in favor of the opposer because there was no evidence to show that the same consumers would encounter the products in close proximity, given that they are entirely different products. In this case, although the products are sold in similar trade channels, it does not mean that they would be near each other in the market. Therefore, it would be hard to find them confusingly similar. In a quick glance at the fourth Dupont Factor, the conditions under which and buyers to whom sales are made, i.e., “impulse” vs. careful, sophisticated purchasing, the Board agreed with the opposer that both parties’ goods were low-cost items and purchased with less care than expensive products. The Board then turned to the strength of the opposer’s mark, which encompasses the seventh Dupont Factor, the fame of the prior mark. The Board found that when the opposer used GUILT FREE in relation to “frozen confections or frozen dairy confections, it suggests that a person may enjoy the frozen treat [without] remorse, shame or guilt due to the calories in the frozen treat.” The applicant submitted 25 third-party registrations incorporating the word “Guilt” used in connection with food, and 13 websites using marks that invoked the “Guilt Free” commercial impression. As mentioned previously, the opposer licensed others to use the GUILT FREE mark, however, the uses were such that the Board found them “unlikely to point to Applicant as the source of the products.” Ultimately, given the commercial impression of the mark GUILT FREE, on the spectrum of distinctiveness, it would be suggestive. In considering the marks commercial strength, through the opposer’s evidence of sales of GUILT FREE frozen confections and its advertising and marketing efforts, the mark made “little, if any, commercial impact.” This commercial impact circles back to the seventh Dupont Factor. When looking at the fame of the prior (or registered) mark, it was found that there was hardly any. In many cases, the first Dupont Factor, the similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation and commercial impression, weighs heavily in a finding of likelihood of confusion. However, not all of the factors must be considered and there is no order in which the factors must be examined. In this case, the Board found that the marks created similar commercial impression but there were obvious differences between the two that weighed against this factor. When compared in their entireties, the Board ultimately found that the Applicant’s mark was distinguishable from the opposer’s mark. In conclusion, given the narrow scope of protection afforded to suggestive marks, including the opposer’s mark GUILT FREE, the Board dismissed the opposition and found the marks different enough to avoid being confusingly similar.

The previous post discussed generic marks, which are the weakest type of mark on the Spectrum of Distinctiveness. Generic marks are not registrable on either the Principal Register or the Supplemental Register. A mark is considered generic if the mark is comprised wholly, or partially of a term(s) that the public primarily associates with a genus of goods or services.

Below, are two recent Trademark Trial and Appeal Board decisions affirming refusal for registration under §§ 2(e)(1) and 2(f) of the Lanham Act:

In a 2019 precedential opinion, the Trademark Trial and Appeal Board affirmed the refusal for registration of the generic mark MALAI, for ice cream. The Board ultimately found that the relevant public would understand the term MALAI to refer to a critical part of “ice cream, gelato, dairy-free ice cream, frozen yogurt, frozen desserts, ice cream sandwiches, sorbet, freezer pops and ice cream sundaes.” The Board applied the two-part inquiry set forth in H. Marvin Ginn Corp. v. Int’l Ass’n of Fire Chiefs, Inc., 782 F .2d at 990, 228 USPQ at 530 (Fed. Cir. 1986) to determine whether or not a mark is generic. For the first part of the inquiry, asking what the genus of the goods or service at hand is, there was no argument that the applicant’s identification of his goods satisfied this prong. In this case, the relevant consuming public consists of ordinary consumers who eat and purchase ice cream and equivalent products. The Board then looked at the second prong of the inquiry that asks how the relevant public perceives the term MALAI in the context of the applicant’s goods. Supporting evidence for genericness, included a dictionary definition of the term and a Wikipedia entry for “Ras Malai” as a kind of dessert as well as several articles, recipes and internet materials that identified the term as a cream.  Both pieces of evidence showed that the word MALAI “is commonly used in the English language as a genus of rich, high-fat creams commonly used in Indian and South Asian culinary dishes, especially dishes with a sweet taste.” The Board agreed with the examining attorney that the evidence showed that “malai” has its own English meaning for cream as a cooking ingredient. The Board agreed that there is no hard-and-fast rule the name of any ingredient in a product would be considered generic, but in this specific case, the public comprehends the ingredient name “to refer to a key aspect or sub-category of the genus of the goods, it is generic for those goods;” see Royal Crown, 127 USPQ2d at 1046; see also In re Empire Tech. Dev. LLC, 123 USPQ2d 1544 (TTAB 2017). In light of this, the Board affirmed the refusal to register on the Supplemental Register under §23 of the Lanham Act.

In a 2020 non-precedential opinion, the Trademark Trial and Appeal Board affirmed the refusal for registration of the generic mark FIDGET CUBE on the Supplemental Register, for “stress relief exercise toys.” (Note that FIDGET was previously disclaimed.) The Board found that the term was a “generic name of the subgenus or subcategory of Applicant’s identified goods.” As a main defense, the applicant argued that he was the first user of the term FIDGET CUBE. However, the fact that no third-party registrant had used the term, does not negate a finding of genericness. The examining attorney submitted dictionary definitions of equivalent words, third-party registrations disclaiming “fidget,” and Internet product reviews, online retailer advertisements and online articles referring to “fidget cubes.” The Board remarked that there was no ban on evidence taken from Internet forums or blogs. The Board then turned to evidence that showed the term FIDGET CUBE generic for a type of stress-relieving toy. In a final, and unconvincing, argument, the applicant attempted to argue that there were other names for the type of product, including terms such as “fidget dice, infinity cube, fidget box, stress cube, stress block and dodecahedron.” In light of these alternative names, the applicant rationalized that there was no need for competitors to use the term FIDGET CUBE to describe their products. The Board was quick to remind the applicant that there can be more than one generic term for a particular genus of goods or services. In summation, the Trademark Trial and Appeal Board affirmed the refusal to register under §23 and §45 of the Lanham Act.

Generic marks may not be registered on the Principal Register or the Supplemental Register in any case. If the mark is comprised wholly, or in part, by generic material, where the generic term(s) retain significance to the relevant public, the mark is generic. When conducting the two-part inquiry, an examining attorney must look at the mark as a whole. Unlike other marks on the Spectrum of Distinctiveness, generic marks cannot acquire distinctiveness, nor can an applicant argue first use as an immunization against genericness.

As discussed in an earlier article, under the Spectrum of Distinctiveness, there are five distinct types of marks. The weakest type of mark is a generic mark. These are terms that the relevant purchasing public understands foremost as the common identification for goods or services. Under §§1,2 and §45 of the Lanham Act a generic term may never be registered on the Principal Register, nor may it be registered on the Supplemental Register under §§23(c) and 45. Generic words are incapable of functioning as source identifiers.  The purchasing public will never come to associate the generic term for just one source of goods or services.

A mark may be deemed as generic if its primary connotation to the relevant public is the class or category of goods or services on or in connection with which it is used. In determining genericness, the relevant public refers to the consuming public for the identified goods or services. H. Marvin Ginn Corp. v. Int’l Ass’n of Fire Chiefs, Inc., 782 F .2d at 990, 228 USPQ at 530 (Fed. Cir. 1986) sets forth a two-part inquiry to determine whether a mark is generic: (1) What is the genus of goods or services at issue? (2) Does the relevant public understand the designation primarily to refer to that genus of goods or services? When looking at the second portion of the test, the inquiry is not asking whether or not the relevant public uses the term to refer to the genus, but whether or not the relevant public would understand the term to be generic.

In applying the two-part inquiry, the examining attorney bears the burden of proving that the term is generic. This evidence may be gathered from including dictionary definitions, research databases, newspapers and other publications. When determining whether or not a term is generic, it is not relevant that there may be more than one generic term for a particular category of goods or services. Any term that the relevant public understands to refer to the category is considered generic.

A generic mark is not limited to one-word designations, the two-part inquiry is the same for compound terms and phrases. If possible, the examining attorney should include evidence showing the use of the mark as a whole. Yet, if there is no evidence of third-party use of the exact compound term or phrase, that does not, alone, negate a finding of genericness for a particular mark.  An examining attorney may find that a mark comprised of a compound or shortened term is generic by showing evidence that each portion of the mark is generic and that when joined, each portion of the mark retains its generic meaning. In re WM. B. Coleman Co., Inc. 93 USPQ2d 2019 (TTAB 2010) the Trademark Trial and Appeal Board affirmed the finding that ELECTRIC CANDLE COMPANY was merely the combination of two generic terms put together to create a compound mark. As stated above, if both portions of the term retain their generic significance, then the mark may be deemed generic.

Aside from compound and telescoped words, mnemonic telephones numbers and Internet domain names are studied as well. In regard to mnemonic telephone numbers, an examining attorney must show that the relevant public would perceive the mark as a whole to have a generic significance. In reference to Internet domain names, an examining attorney must determine whether or not all parts of the name, including the Internet domain name, are generic, and if in sum, the mark itself is generic. In certain isolated instances, the addition of a top-level domain indicator (“TLD”) may make an otherwise generic mark, distinct. An example of this is In re Steelbuilding.com, 415 F .3d 1293, 1299, 75 USPQ2d 1420, 1423 (Fed. Cir. 2005). In this case, the Federal Circuit reversed the Trademark Trial and Appeal Board’s decision that STEELBUILDING.COM was generic for “computerized on-line retail services in the field of pre-engineered metal buildings and roofing systems.” In this rarified instance, the Court chastised the Board for looking at each piece of the mark individually, but not as a whole. When adding the “TLD” it expanded the meaning of the mark beyond that of just selling steel buildings. With the addition of the “TLD,” the mark took on the meaning of internet services as well, including beforehand modeling’s of the buildings and price calculations. This again reinforces the notion that the relevant public must take the entire mark to have generic significance, therefore an examining attorney must focus on the mark as a whole, rather than multiple generic components.

As stated by the Trademark Manual of Examining Procedure (TMEP), the expression “generic name for the goods or services,” is not contained to noun forms, but also captures “generic adjectives” as well; see Sheetz of Del., Inc. v. Doctor’s Assocs. Inc., 108 USPQ2d 1341 (TTAB 2013) which held FOOTLONG generic for sandwiches, excluding hotdogs. In a comparable manner, evidence that shows a singular form of a term to be generic can suffice to demonstrate that the plural is also generic.

In conclusion, generic marks are the weakest types of mark and may not be registered with the USPTO either on the Principal Register or the Supplemental Register. A mark may be deemed generic whether it is comprised of a phonetically spelled term, multiple generic terms, mnemonic telephone numbers, Internet domain names or generic adjectives. An examining attorney must use the two-part inquiry to determine whether a mark is generic, and the mark must be examined as a whole. If, as a whole, the mark retains its generic significance to the public, it may be considered generic, and therefore unregistrable on either the Principal Register under §§1,2 and §45 of the Lanham Act or the Supplemental Register under §§23(c) and 45 of the Lanham Act.