In a 2021 nonprecedential case, the Trademark Trial and Appeal Board reversed the §2(e)(1) refusal to register the mark FAST DRINK for “Nutritional meal replacement drinks adapted for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 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.

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

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

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

By way of contrast, in a 2020  non-precedential opinion, the Trademark Trial and Appeal Board found the mark ORIGINAL GRAIN suggestive.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

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

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

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

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